Can a filing date be vacated after it has been assigned to an ex parte reexamination request?
Yes, a filing date can be vacated after it has been assigned to an ex parte reexamination request if non-compliance issues are discovered during the examiner’s review. The MPEP 2227 outlines this process: “If, in the process of reviewing the request, the examiner notes a non-compliance item not earlier recognized, the examiner will communicate with…
Read MoreHow does the USPTO ensure uniformity in reexamination practices?
The USPTO ensures uniformity in reexamination practices through a multi-layered review process. According to MPEP § 2289, this includes: Monitoring and reviewing all reexamination cases by CRU SPRS or TC QAS Conducting panel reviews before issuing Office actions Providing feedback to Office personnel The MPEP states: “The above identified review processes are appropriate vehicles for…
Read MoreHow are reexamination request papers initially processed by the USPTO?
The initial processing of reexamination request papers at the USPTO involves several steps: Receipt and Scanning: The papers are received in the Office of Patent Application Processing (OPAP) and scanned into the Image File Wrapper (IFW) system. Assignment to CRU or TC: The request is then forwarded to either the Central Reexamination Unit (CRU) or…
Read MoreHow does the USPTO treat claims held “not invalid” by a federal court in reexamination?
The USPTO may still reexamine claims that have been held “not invalid” by a federal court. According to MPEP § 2259: “Claims finally held as ‘not invalid’ by a federal court, after all appeals, may still be subject to reexamination.” This means that even if a court has upheld the validity of certain claims, the…
Read MoreCan a reexamination be ordered for claims not specifically requested in the reexamination request?
Generally, the USPTO’s determination in both the order for reexamination and the examination stage will be limited to the claims for which reexamination was specifically requested. However, the Office has the discretion to reexamine any claim for which reexamination has not been requested. The MPEP states: “The decision to reexamine any claim for which reexamination…
Read MoreWhat activities are included in USPTO reexamination time reporting?
The MPEP 2238 provides guidance on the range of activities that should be included in time reporting for reexaminations: “Even activities such as supervision, copying, typing, and docketing should be included.” This means that USPTO personnel should report time spent on both direct examination tasks and supporting activities related to reexamination proceedings. To learn more:…
Read MoreHow does the USPTO prioritize different types of patent cases?
The United States Patent and Trademark Office (USPTO) has a specific prioritization system for different types of patent cases. According to MPEP 2261, the priority order is as follows: Reexamination proceedings and reissue applications involved in litigation Reexamination proceedings not involved in litigation All other cases The MPEP specifically states: “Any cases involved in litigation,…
Read MoreHow does the USPTO communicate defective papers in ex parte reexamination?
The USPTO uses specific forms to communicate defective papers in ex parte reexamination, depending on who requested the reexamination. According to MPEP 2296, there are two forms for this purpose: PTOL-475: Notice of Defective Paper In Ex Parte Reexamination – Third Party Requested PTO-2311: Notice of Defective Paper in Ex Parte Reexamination – Patent Owner…
Read MoreHow does the USPTO provide notice for reexamination requests under 35 U.S.C. 302?
The USPTO provides notice for reexamination requests filed under 35 U.S.C. 302 through publication in the Official Gazette. This is particularly important when direct communication with the patent owner is not possible. MPEP 2230 states: “The publication in the Official Gazette of (A) the notice of the filing of a request for reexamination filed under…
Read MoreCan the USPTO initiate ex parte reexamination on its own?
Yes, the USPTO can initiate ex parte reexamination on its own. According to MPEP 2212: “It is also possible for the Director of the Office to initiate reexamination on the Director’s own initiative under 37 CFR 1.520.“ This means that the Director of the USPTO has the authority to start an ex parte reexamination process…
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