Why did the USPTO set a time limit for requesting ex parte reexamination?
The USPTO set a time limit for requesting ex parte reexamination to align with the period of enforceability of a patent. As explained in MPEP 2211, “the Office considered that Congress could not have intended expending Office resources on deciding patent validity questions in patents which cannot be enforced.” This rationale was supported in the…
Read MoreWho processes reexamination requests in the USPTO?
Reexamination requests are processed by designated personnel in the Central Reexamination Unit (CRU) or Technology Centers (TCs). According to MPEP 2233: “The working groups in the Central Reexamination Unit (CRU) or Technology Centers (TCs) have designated the legal instrument examiners and paralegals to act as reexamination clerks, as part of their assigned duties, and thus…
Read MoreWho needs to file a Certificate of Service for patent reexamination?
A Certificate of Service for patent reexamination must be filed by a third-party requester when submitting a request for ex parte reexamination. This is required when the requester is not the patent owner. MPEP 2220 states: “If the requester of a request filed under 35 U.S.C. 302 is a person other than the patent owner,…
Read MoreWho conducts reexamination reviews at the USPTO?
Reexamination reviews at the USPTO are conducted by several entities: Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) Technology Center (TC) Quality Assurance Specialist (QAS) Paralegals Other assigned technical support staff As stated in MPEP § 2289: “All reexamination cases are monitored and reviewed in the Central Reexamination Unit (CRU) or Technology Center (TC)…
Read MoreWho typically conducts ex parte reexaminations?
Typically, the same patent examiner who made the decision on whether the reexamination request should be granted conducts the examination. As stated in MPEP § 2255: “The examination will ordinarily be conducted by the same patent examiner who made the decision on whether the reexamination request should be granted.” This ensures continuity in the examination…
Read MoreWho can submit prior art or written statements to the USPTO for a patent?
According to MPEP 2203, any person can submit prior art or written statements to the USPTO for a patent. The MPEP states: “Any person” may be a corporate or governmental entity as well as an individual. “Any person” includes patentees, licensees, reexamination requesters, real parties in interest to the patent owner or requester, persons without…
Read MoreWho can submit prior art during a pending reexamination proceeding?
While there are general limitations on prior art submissions during reexamination proceedings, certain parties are allowed to submit prior art. According to MPEP 2204, the following exceptions apply: “[S]ubmissions filed after the date of any order to reexamine will not be entered into the patent file until the pending reexamination proceeding has been concluded (37…
Read MoreWho can request an ex parte reexamination?
According to MPEP 2209, an ex parte reexamination can be requested by various parties: The patent owner: At any time during the enforceability of a patent. Any third party: During the period of enforceability of the patent. The Director of the USPTO: The Director can order a reexamination on their own initiative. The MPEP states,…
Read MoreWho can file a request for ex parte reexamination?
According to MPEP 2212, “any person” may file a request for ex parte reexamination of a patent, as stated in 35 U.S.C. 302 and 37 CFR 1.510(a). The MPEP specifically notes that: “Corporations and/or governmental entities are included within the scope of the term ‘any person.’“ This broad definition includes patentees, licensees, potential licensees, attorneys,…
Read MoreWhere should the copy of the reexamination request be served to the patent owner?
The copy of the reexamination request must be served to the patent owner’s official correspondence address. MPEP 2220 specifies: “The service must be made on the patent owner’s correspondence address as indicated in 37 CFR 1.33(c).“ This means that the third-party requester must send the copy of the request to the address that the USPTO…
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