What happens to unamended patent claims in reexamination after a Board decision?
The treatment of unamended patent claims in reexamination after a Board decision depends on whether the claim is rejected or allowed. If an unamended patent claim is rejected and the Board affirms the rejection, the claim will be canceled. However, dependent claims based on the rejected unamended patent claim may still be confirmed or deemed…
Read MoreWhat types of persons typically file ex parte reexamination requests?
MPEP 2212 provides a non-exhaustive list of persons who are likely to use the ex parte reexamination process under 35 U.S.C. 302: Patentees Licensees Potential licensees Attorneys without identification of their real client in interest Infringers Potential exporters Patent litigants Interference applicants International Trade Commission respondents This diverse list reflects the various stakeholders in the…
Read MoreWhat types of prior art can be submitted to the USPTO under 35 U.S.C. 301?
According to MPEP 2203, the types of prior art that can be submitted to the USPTO under 35 U.S.C. 301 include: Prior art patents Printed publications Written statements Additional information The MPEP states: The patent owner, or any member of the public, may submit prior art patents or printed publications and/or written statements and additional…
Read MoreWhat types of documents can be submitted as prior art in patent reexamination?
According to MPEP 2204, the types of documents that can be submitted as prior art in patent reexamination are limited to patents and printed publications. The MPEP specifically states: “Prior art in the form of patents or printed publications may be cited to the Office for placement into the patent file at any time during…
Read MoreWhat types of submissions require service on the patent owner?
According to the MPEP, the following types of submissions by persons other than the patent owner require service on the patent owner: Prior art patents Printed publications Section 301 written statements Additional information in a patent file The MPEP specifically states: “A copy of any submission of prior art patents, printed publications, and/or section 301…
Read MoreHow does the MPEP distinguish between different types of reexamination requests?
The MPEP distinguishes between different types of reexamination requests based on the requester’s intent and the claims made. Two main types are discussed: Requests indicating claims are unpatentable over the art: “The example in MPEP ยง 2247.01 is drafted for the case where the ‘request indicates that Requester considers that Claims 1-2 are unpatentable over…
Read MoreWhat types of prior art can be used in a reexamination request under 35 U.S.C. 302?
In a reexamination request under 35 U.S.C. 302, the following types of prior art can be used: Patents or printed publications Prior art that was available to the public before the effective filing date of the claimed invention Prior art that raises a substantial new question of patentability As stated in MPEP 2244: “The prior…
Read MoreWhat are the different types of intervening rights in patent reexamination?
What are the different types of intervening rights in patent reexamination? There are two types of intervening rights in patent reexamination: Absolute intervening rights: These allow continued use or sale of specific products made before the reissue Equitable intervening rights: These may be granted by the court for products made after the reissue As stated…
Read MoreAre there any restrictions on the timing of interviews in ex parte reexamination?
Yes, there are specific restrictions on the timing of interviews in ex parte reexamination proceedings. The MPEP 2281 states: “Interviews prior to the first Office action in ex parte reexamination proceedings are prohibited.“ This restriction is in place to ensure that: The examiner has had a chance to review the case and form initial opinions…
Read MoreWhen is the decision to merge or stay concurrent proceedings made?
The decision to merge or stay concurrent reissue application and ex parte reexamination proceedings is not made immediately. According to the MPEP: A decision whether or not to merge the reissue application examination and the ex parte reexamination proceeding, or to stay one of the two proceedings, will not be made prior to the mailing…
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