Who receives copies of the Ex Parte Reexamination Certificate?
The distribution of Ex Parte Reexamination Certificates is governed by specific USPTO rules. According to MPEP 2288, which cites 37 CFR 1.570(c): “The ex parte reexamination certificate will be mailed on the day of its date to the patent owner at the address as provided for in § 1.33(c). A copy of the ex parte…
Read MoreWhat form is used to communicate the reasons for patentability in ex parte reexamination?
In ex parte reexamination proceedings, the USPTO uses a specific form to communicate the reasons for patentability or confirmation of patent claims. According to MPEP 2296, this form is: PTOL-476: Reasons for Patentability/Confirmation The PTOL-476 form is used by examiners to explain why certain claims in the patent under reexamination are deemed patentable or why…
Read MoreHow are reasons for patentability provided in ex parte reexamination?
In ex parte reexamination, examiners are required to provide reasons for patentability, unless all claims are canceled in the proceeding. These reasons are typically provided as an attachment to the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC). According to MPEP 2287: “In the attachment to the NIRC, the examiner should indicate why…
Read MoreCan a patent owner file a request for continued examination (RCE) in ex parte reexamination?
No, a patent owner cannot file a request for continued examination (RCE) in ex parte reexamination. This is explicitly stated in MPEP § 2271: “Both the patent owner and the examiner should recognize that a reexamination proceeding may result in the final cancellation of claims from the patent and that the patent owner does not…
Read MoreWhat happens if a patent owner files a request for continued examination (RCE) in a merged proceeding?
When a patent owner files a request for continued examination (RCE) in a merged reissue and reexamination proceeding, it has significant consequences. The MPEP states: If applicant/patent owner files a request for continued examination (RCE) of the reissue application under 37 CFR 1.114 (which may be filed on or after May 29, 2000 for an…
Read MoreWhat types of questions are not considered in ex parte reexamination requests?
Ex parte reexamination requests under 35 U.S.C. 302 are limited to questions of patentability based on prior art patents or printed publications. The MPEP 2216 explicitly states that certain types of questions should not be included in such requests: “Questions relating to grounds of rejection other than those based on prior art patents or printed…
Read MoreWhat is the purpose of submitting written statements in patent reexamination proceedings?
The purpose of submitting written statements in patent reexamination proceedings is to provide additional context or explanation related to prior art citations. According to MPEP 2202: “The written statement should be directed to the pertinence of the cited prior art.” These statements can help clarify the relevance of cited prior art to the patent under…
Read MoreWhat is the purpose of the “substantial new question of patentability” requirement in reexamination?
The “substantial new question of patentability” requirement serves to protect patentees from unnecessary reexaminations. MPEP 2244 explains: “The substantial new question of patentability requirement protects patentees from having to respond to, or participate in unjustified reexaminations.” This requirement ensures that reexaminations are only conducted when there is a legitimate basis for questioning the validity of…
Read MoreWhat is the purpose of the requester’s reply in ex parte reexamination?
The requester’s reply in ex parte reexamination serves to address the patent owner’s statement and provide additional arguments for reexamination. According to MPEP 2252: “The reply by the requester should be limited to issues raised by the patent owner’s statement.” The purpose of the requester’s reply is to: Respond to arguments made by the patent…
Read MoreWhat is the purpose of ex parte reexamination?
The purpose of ex parte reexamination is to provide a mechanism for the USPTO to review the validity of an issued patent. According to MPEP 2209, “Ex parte reexamination is a patent office proceeding which provides a complete reexamination of the patent claims on the basis of prior art patents and printed publications.” This process…
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