What is the process for reviving a terminated ex parte reexamination proceeding?
To revive a terminated ex parte reexamination proceeding, the patent owner must file a petition under 37 CFR 1.137. The petition must include: The required reply to the outstanding Office action or notice (if not previously filed) The petition fee as set forth in 37 CFR 1.17(m) A statement that the entire delay was unintentional…
Read MoreIs it possible to revive a reexamination proceeding based on unavoidable delay?
No, it is no longer possible to revive a reexamination proceeding based on unavoidable delay. The MPEP clearly states: “37 CFR 1.137 was revised to implement the changes in the Patent Law Treaties Implementation Act of 2012 (PLTIA) to eliminate revival of an abandoned application and reexamination prosecution terminated under § 1.550(d) under the ‘unavoidable’…
Read MoreCan a patentability decision favoring the patentee be reviewed in ex parte reexamination?
No, a patentability decision favoring the patentee cannot be reviewed in ex parte reexamination. The MPEP 2273 clearly states: “The reexamination statute does not provide for review of a patentability decision favoring the patentee.” This principle is supported by case law, specifically “Greenwood v. Seiko Instruments, 8 USPQ2d 1455 (D.D.C. 1988).” This limitation is an…
Read MoreCan untimely papers returned or expunged during ex parte reexamination be resubmitted later?
Yes, untimely papers that were initially returned or expunged during the ex parte reexamination process can potentially be resubmitted later in the proceedings. MPEP 2225 provides guidance on this matter: “If the submission of the returned/expunged papers is appropriate later in the proceedings, they may be filed and accepted by the Office at that time.”…
Read MoreAre there any restrictions on who can file for ex parte reexamination?
Yes, there is one specific restriction mentioned in MPEP 2212: “The only ‘person’ who is barred from filing a request for ex parte reexamination of a patent under 35 U.S.C. 302 is one who is barred from doing so by the estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) based on inter…
Read MoreWhat are the time periods for response in ex parte reexamination proceedings?
In ex parte reexamination proceedings, specific time periods are set for responses. According to MPEP 2254: “The time periods set for response are one month (30 days) from the mailing date of the Office action for the patent owner, and one month (30 days) from the date of service for any third party requester.“ However,…
Read MoreHow can an appellant respond to new grounds of rejection in an Examiner’s Answer?
When an Examiner’s Answer contains new grounds of rejection, the appellant has two options to respond within two months from the date of the Examiner’s Answer. According to MPEP § 2275, these options are: Reopen prosecution: The appellant can request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR…
Read MoreDoes res judicata apply in patent reexamination proceedings?
Res judicata, or claim preclusion, generally does not apply in patent reexamination proceedings. The MPEP § 2259 states: “A rejection on the grounds of res judicata will not be appropriate in reexamination.” This is because one of the essential elements of res judicata is the involvement of the same parties, and the USPTO is not…
Read MoreWhat are the requirements for a proper 37 CFR 1.501 submission?
A proper submission under 37 CFR 1.501 must meet specific requirements. According to the MPEP, a proper submission: Is limited to patents, printed publications, and/or patent owner written claim scope statements and additional information Includes the requisite citation description and information Includes proof of service on the patent owner (if submitted after an order for…
Read MoreWhat are the requirements for a submission of patents and publications to be included in the reexamination certificate?
For a submission of patents and publications to be included in the reexamination certificate, it must meet specific requirements. MPEP 2257 outlines these requirements: “A submission of patents and/or publications is entitled to entry and citation in the reexamination certificate (that will be issued) when it complies with 37 CFR 1.98 and is submitted:” By…
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