How does the USPTO handle prior art that was previously considered during the original examination?
The USPTO has specific guidelines for handling prior art in ex parte reexamination that was previously considered during the original examination. According to MPEP 2244: “If prior art patents or printed publications are presented by the reexamination requester for review in a reexamination proceeding, and the requester has not had the patents or printed publications…
Read MoreHow does the USPTO handle prior art submissions in languages other than English for reexamination?
When submitting prior art in languages other than English for reexamination, the USPTO has specific requirements. According to MPEP 2244: “If the prior art patents and printed publications are in a language other than English, any necessary translation should be included.“ This means that: Translations must be provided for non-English prior art The translation should…
Read MoreHow does the USPTO handle multiple pending reexamination proceedings for the same patent?
The MPEP 2254 provides guidance on handling multiple pending reexamination proceedings for the same patent: Multiple ex parte reexamination proceedings are generally merged into a single proceeding. If an inter partes reexamination is also pending, it takes precedence over ex parte reexaminations. The USPTO may suspend one proceeding in favor of another to promote efficiency.…
Read MoreHow does the USPTO handle confidential concurrent proceedings during reexamination?
The USPTO has specific procedures for handling confidential concurrent proceedings during reexamination. According to MPEP 2282: “If the concurrent proceeding is a confidential proceeding pending before the Office, the reexamination proceeding will be referred to an appropriate Technology Center (TC) official to resolve any issues relating to the confidential status of the concurrent proceeding before…
Read MoreHow does the USPTO handle amendments or new claims in copending reexamination or reissue proceedings?
When deciding a request for reexamination, the USPTO does not consider or comment on amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent under consideration. As stated in MPEP 2243: Amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent to be reexamined will…
Read MoreHow does the USPTO handle submissions of copending reexamination proceedings and applications?
The USPTO has specific guidelines for handling submissions related to copending reexamination proceedings and applications. According to the MPEP: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding…
Read MoreWhat forms are used in ex parte reexamination proceedings?
The USPTO uses several specific forms for ex parte reexamination actions and processing. Some key forms include: PTOL-471D: Order Denying Request For Ex Parte Reexamination PTOL-471G: Order Granting Request For Ex Parte Reexamination PTOL-466: Office Action in Ex Parte Reexamination PTOL-469: Notice of Intent to Issue Ex Parte Reexamination Certificate As stated in MPEP 2296,…
Read MoreHow does the USPTO handle submissions from foreign courts?
The United States Patent and Trademark Office (USPTO) has specific guidelines for handling submissions from foreign courts. According to MPEP 2207: “It is to be further noted that 35 U.S.C. 290 is directed to ‘courts of the United States.’ Accordingly, any submission of papers from a court outside the United States (a foreign jurisdiction) will…
Read MoreCan the USPTO examine claims not requested for reexamination under 35 U.S.C. 302?
Yes, the USPTO can examine claims not specifically requested for reexamination under 35 U.S.C. 302, but this is at the discretion of the Office. According to MPEP 2243: The decision to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302 lies within the sole discretion of the Office, to be…
Read MoreHow does the USPTO handle ex parte reexamination when all claims are held invalid by a court?
When a court issues a final decision holding all claims invalid or unenforceable in a patent undergoing ex parte reexamination, the USPTO has specific procedures to follow. According to MPEP 2286: “If all of the claims being examined in the reexamination proceeding are finally held invalid or unenforceable, the reexamination will be vacated by the…
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