What is the purpose of a shortened statutory period in ex parte reexamination?
The purpose of a shortened statutory period in ex parte reexamination is to expedite the reexamination process while still providing sufficient time for patent owners to respond. MPEP 2263 states: “A shortened statutory period of two months will generally be set for filing a response to an Office action in an ex parte reexamination.” This…
Read MoreWhat is the requirement for serving prior art or Section 301 written statements on a patent owner?
When a person other than the patent owner submits prior art patents, printed publications, or Section 301 written statements to a patent file, they must serve a copy of this submission on the patent owner. This requirement ensures that the patent owner is fully informed about the contents of their patent file wrapper/file history. The…
Read MoreWhat are the service requirements for a patent owner’s statement in ex parte reexamination?
In ex parte reexamination, the patent owner must serve their statement on the requester if the reexamination was requested by a third party. MPEP 2249 states: “A copy of the statement must be served by the patent owner on the requester, unless the request was filed by the patent owner.” Failure to provide proof of…
Read MoreWhat should a third-party requester do if service of the reexamination request on the patent owner is not possible?
If a third-party requester is unable to serve the reexamination request on the patent owner despite reasonable efforts, they must take specific steps. According to MPEP 2220: “If service was not possible after a reasonable effort to do so, a duplicate copy of the request papers must be supplied to the Office together with a…
Read MoreCan a patent owner designate separate addresses for different reexamination proceedings?
Yes, a patent owner can designate separate addresses for different reexamination proceedings on the same patent. MPEP 2222 explicitly states: “A patent owner may designate a separate correspondence address for each reexamination proceeding for which a request is filed.” This allows patent owners to manage multiple reexamination proceedings more efficiently, especially if different legal representatives…
Read MoreHow can a patent owner seek review of a Substantial New Question of Patentability (SNQ) determination?
A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process: “To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the…
Read MoreWhat additional requirements apply to submissions that include section 301 written statements?
Submissions that include section 301 written statements have specific additional requirements, as outlined in MPEP 2205 and 37 CFR 1.501(a)(3): Identification of the forum and proceeding in which the patent owner filed each statement Identification of the specific papers and portions of the papers that contain the statement Explanation of how each submitted statement is…
Read MoreWhat is the scope of prior art considered in ex parte reexamination?
What is the scope of prior art considered in ex parte reexamination? In ex parte reexamination, the scope of prior art considered is broader than in the original examination. According to MPEP 2258: “The consideration of prior art in ex parte reexamination is, however, limited to prior patents or printed publications applied under the appropriate…
Read MoreWhat is the scope of an ex parte reexamination under 35 U.S.C. 304?
An ex parte reexamination under 35 U.S.C. 304 provides a complete reexamination of the patent claims based on prior art patents and printed publications. The MPEP states: “A reexamination proceeding ordered under 35 U.S.C. 304 provides a complete reexamination of the patent claims on the basis of prior art patents and printed publications.” Additionally, double…
Read MoreIs there a sample form for attorney withdrawal from a patent proceeding?
Yes, the USPTO provides a sample form for attorney withdrawal from a patent proceeding. According to MPEP 2223: “A sample form for a request by an attorney or agent of record to withdraw from a patent is set forth below.” While the specific form is not included in this excerpt, practitioners can find the sample…
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