What determines the official filing date of a reexamination request?
The official filing date of a reexamination request is determined based on specific criteria: The request must be in compliance with 37 CFR 1.510. The filing date is automatically assigned by the PALM EXPO 2970 system. The date assigned is based on the receipt date of the compliant request. MPEP 2226 states: “The system will…
Read MoreWhat happens if the 3-month period for deciding a reexamination request ends on a non-business day?
If the 3-month period for deciding a reexamination request ends on a weekend or federal holiday, the USPTO must issue the determination by the preceding business day. MPEP 2241 specifically states: “If the 3-month period ends on a Saturday, Sunday, or federal holiday within the District of Columbia, then the determination must be mailed by…
Read MoreWhat is the difference in priority between reexamination proceedings and reissue applications?
According to MPEP 2261, there is no inherent difference in priority between reexamination proceedings and reissue applications at the United States Patent and Trademark Office (USPTO). The key factor determining their priority is whether they are involved in litigation. The MPEP states: “Any cases involved in litigation, whether they are reexamination proceedings or reissue applications,…
Read MoreWhat happens if a reexamination proceeding is terminated without a certificate?
If a reexamination proceeding is terminated without a certificate, the following actions occur: The reexamination file is stored in the storage area for terminated reexamination files. The patent file is returned to the storage area for patented cases. The MPEP 2278 states: “The reexamination file will then be forwarded to the Office of Patent Legal…
Read MoreCan a reexamination proceeding itself be involved in an interference?
No, a reexamination proceeding itself cannot be involved in an interference proceeding. The MPEP clearly states: “Although a patent being reexamined via a reexamination proceeding may become involved in an interference proceeding, the reexamination proceeding itself can never be involved in an interference proceeding.“ This is based on the language of 35 U.S.C. 135(a), which…
Read MoreCan a reexamination proceed if the patent owner can’t be contacted?
Yes, a reexamination can proceed even if the patent owner cannot be contacted. The USPTO has provisions in place to ensure that the process continues through the use of constructive notice. MPEP 2230 clearly states: “If all efforts to correspond with the patent owner fail, the reexamination proceeding will proceed without actual notice to the…
Read MoreWhat is the process for preparing an Office action in a patent reexamination?
The process for preparing an Office action in a patent reexamination, as outlined in MPEP 2262, involves several steps: The examiner is notified upon receipt of a patent owner response or expiration of the response period. The examiner prepares for and sets up a panel review conference (see MPEP ยง 2271.01). The examiner may prepare…
Read MoreWhat is the Reexamination e-File system?
The Reexamination e-File system is a digital platform for viewing and managing reexamination proceeding documents. According to MPEP 2235: “The papers of a reexamination proceeding may be viewed on IFW. Patent Data Portal provides information for the reexamination proceeding as to the patent owner and requester, contents, status, and related Office proceedings (applications, patents and…
Read MoreHow are reexamination decisions and prior art documents recorded?
Reexamination decisions and associated prior art documents are officially recorded in the patent’s electronic file history. According to MPEP 2245: “The signed copy of the decision and a copy of any prior art enclosed is made of record in the reexamination electronic file (file history).“ This process ensures that: The official decision is preserved in…
Read MoreWho receives copies of the reexamination decision and prior art documents?
According to MPEP 2245, after a reexamination decision is processed: A copy of the decision is mailed to the patent owner If applicable, a copy is also sent to any third party involved in the reexamination Any required copies of prior art documents are included with the mailing The MPEP states: “A copy of the…
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