Can new prior art be submitted during the reexamination process under 35 U.S.C. 302?
The submission of new prior art during the reexamination process under 35 U.S.C. 302 is subject to specific rules. According to MPEP 2244: “After reexamination is ordered based on the request, any later submitted patents and/or printed publications must be accompanied by a submission under 37 CFR 1.501(c) and may be utilized in the continuing…
Read MoreWhat is the process for submitting new or amended drawings in a reexamination proceeding?
The process for submitting new or amended drawings in a reexamination proceeding involves several steps: Submit a sketch in permanent ink showing proposed changes/amendments on a separate paper labeled as “Annotated Sheet.” Wait for examiner approval of the proposed changes. Upon approval, submit new sheets of drawings for each drawing sheet that is to be…
Read MoreHow should patent owners submit amendments in a Reexamination of a Reexamination?
When submitting amendments in a Reexamination of a Reexamination, patent owners must present changes as if the modifications from the previous reexamination certificate are part of the original patent. MPEP 2295 states: “Any amendment to the claims (or specification) of the reexamination proceeding must be presented as if the changes made to the patent text…
Read MoreCan I submit prior art to the USPTO anonymously?
Yes, you can submit prior art to the USPTO anonymously. MPEP 2203 explicitly states: If a person citing prior art or written statements desires his or her identity to be kept confidential, such a person need not identify himself or herself. However, there are some important considerations: If you’re submitting anonymously, you should not identify…
Read MoreWhat are the differences between “streamlined” and “non-streamlined” ex parte reexamination requests?
The main differences between “streamlined” and “non-streamlined” ex parte reexamination requests are: Filing Fee: Streamlined requests: Lower fee under 37 CFR 1.20(c)(1) Non-streamlined requests: Higher fee under 37 CFR 1.20(c)(2) Page Limit: Streamlined requests: 40 or fewer pages Non-streamlined requests: More than 40 pages Formatting Requirements: Streamlined requests: Must meet specific formatting requirements (e.g., line…
Read MoreWhat is the ‘streamlined’ request option for ex parte reexamination?
The ‘streamlined’ request option for ex parte reexamination, introduced on January 16, 2018, allows for a reduced filing fee under certain conditions. According to the MPEP: “Requests for ex parte reexamination under 35 U.S.C. 302 filed on or after January 16, 2018 may be filed with a reduced filing fee set forth in 37 CFR…
Read MoreWhat are the requirements for a “streamlined” ex parte reexamination request?
A “streamlined” ex parte reexamination request under 37 CFR 1.20(c)(1) must meet the following requirements: Have forty (40) or fewer pages Use double-spaced or one-and-a-half spaced lines Use a non-script type font such as Arial, Times New Roman, or Courier Use a font size no smaller than 12 point Have margins that conform to the…
Read MoreHow does the certification regarding statutory estoppel affect ex parte reexamination requests?
The certification regarding statutory estoppel is a requirement for third-party requesters filing ex parte reexamination requests. As stated in the MPEP: “37 CFR 1.510(b)(6) requires that the request contain a certification by the third party requester that the statutory estoppel provisions of inter partes review and post grant review do not bar the third party…
Read MoreWhat is the statutory basis for ex parte reexamination of patents?
The statutory basis for ex parte reexamination of patents was established on July 1, 1981, through sections 301-307 of title 35, United States Code, added by Public Law 96-517. The MPEP states: “Statutory basis for citation of prior art patents or printed publications in patent files and ex parte reexamination of patents became available on…
Read MoreWhat statutory authority allows for the revival of reexamination proceedings?
The statutory authority for reviving reexamination proceedings is provided by 35 U.S.C. 27, which was added by the Patent Law Treaties Implementation Act of 2012 (PLTIA). The MPEP quotes the statute as follows: “The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to revive an unintentionally abandoned…
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