Can supplemental responses be filed in ex parte reexamination proceedings?
Supplemental responses in ex parte reexamination proceedings are addressed in 37 CFR 1.111(a)(2). While they are not entered as a matter of right, the Office may enter a supplemental response if it is clearly limited to specific circumstances: Cancellation of claims Adoption of examiner suggestions Placing the proceeding in condition for Notice of Intent to…
Read MoreWhat is supplemental examination and how does it relate to ex parte reexamination?
Supplemental examination is a proceeding introduced by the America Invents Act (AIA) that allows patent owners to request the USPTO to consider, reconsider, or correct information relevant to their patent. If a substantial new question of patentability is raised, an ex parte reexamination will be ordered. The MPEP explains: “Section 12 of the AIA added…
Read MoreWhat is required for a showing of sufficient cause in an extension request?
A showing of sufficient cause for an extension request in ex parte reexamination proceedings requires: A full statement of the reasons for the extension. An explanation of what action the patent owner has taken to provide a response as of the date of the request. A justification for why the requested additional time is needed.…
Read MoreWhat is the significance of “substantially identical” claims in intervening rights?
The concept of “substantially identical” claims is crucial in determining whether intervening rights apply in patent reexamination or reissue cases: Intervening rights only apply to claims that are not substantially identical to the original claims. If a claim is substantially identical to the original, it is treated as if it was in the original patent,…
Read MoreWhat is the difference between a “substantial new question of patentability” and a “prima facie case of unpatentability”?
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242: It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new…
Read MoreWhat is a “substantial new question of patentability” in patent reexamination?
A “substantial new question of patentability” (SNQ) is the key criterion for deciding whether to order reexamination of a patent under 35 U.S.C. 302. According to the MPEP 2242, an SNQ exists when: Prior art patents or printed publications raise a substantial question of patentability for at least one claim, and The same question has…
Read MoreWhat is a substantial new question of patentability in ex parte reexamination?
A substantial new question of patentability (SNQ) is a key factor in determining whether an ex parte reexamination will be ordered. According to MPEP 2246, the examiner must identify at least one SNQ and explain how the prior art raises such a question. The decision should point out: The prior art that adds new teaching…
Read MoreWhat is a substantial new question of patentability (SNQ) in patent reexamination?
A substantial new question of patentability (SNQ) is a crucial concept in patent reexamination. According to MPEP 2242: “If the prior art patents and/or printed publications raise a substantial new question of patentability as to at least one claim of the patent, then a substantial new question of patentability as to the patent is present,…
Read MoreWhat is a “substantial new question of patentability” in ex parte reexamination?
A “substantial new question of patentability” is a key requirement for initiating an ex parte reexamination. As stated in MPEP 2209: “The Office initially determines if ‘a substantial new question of patentability’ (35 U.S.C. 303(a)) is presented. If such a new question has been presented, reexamination will be ordered.“ This requirement ensures that the USPTO…
Read MoreWhat are the requirements for submitting copies of prior art in ex parte reexamination?
In ex parte reexamination, there are specific requirements for submitting copies of prior art. According to MPEP 2256: “37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the…
Read More