Can third-party requesters participate in appeals during ex parte reexamination?
No, third-party requesters cannot participate in appeals during ex parte reexamination. The MPEP 2273 explicitly states: “A third party requester may not appeal, and may not participate in the patent owner’s appeal.” This limitation is a key feature of ex parte reexamination proceedings, distinguishing them from inter partes reviews where third parties have more extensive…
Read MoreCan a third party requester appeal a decision in an ex parte reexamination?
No, a third party requester in an ex parte reexamination cannot seek judicial review of a decision. The MPEP 2279 clearly states: “A third party requester of an ex parte reexamination may not seek judicial review.” This principle is supported by case law, specifically Yuasa Battery v. Comm’r, 3 USPQ2d 1143 (D.D.C. 1987). However, it’s…
Read MoreAre third party requesters allowed to file additional papers after their reply in ex parte reexamination?
No, third party requesters are not permitted to file additional papers after their reply to the patent owner’s statement in an ex parte reexamination. MPEP 2251 clearly states: “The third party requester is not permitted to file any further papers after his or her reply to the patent owner’s statement. Any further papers will not…
Read MoreHow does the extension of time practice differ for third-party requested reexaminations?
The extension of time practice for third-party requested ex parte reexaminations differs from patent owner requested or Director ordered reexaminations in several ways: “No cause” extensions for up to two months are not available. All requests must be filed on or before the day on which action by the patent owner is due. All requests…
Read MoreWhen can a third party submit prior art or written statements in a patent reexamination?
According to MPEP 2204, a third party can submit prior art or written statements under 35 U.S.C. 301 at any time during the period of enforceability of a patent. The MPEP states: “Prior art in the form of patents or printed publications may be cited to the Office for placement into the patent file at…
Read MoreCan third parties participate in ex parte reexamination proceedings?
Third party participation in ex parte reexamination proceedings is limited. According to the MPEP, “The active participation of the ex parte reexamination requester ends with the reply pursuant to ยง 1.535, and no further submissions on behalf of the reexamination requester will be acknowledged or considered.“ After the reexamination is ordered, third party submissions are…
Read MoreCan a patent owner file papers on behalf of a third party in reexamination?
No, patent owners are explicitly prohibited from filing papers on behalf of third parties in ex parte reexamination proceedings. The MPEP clearly states: “The patent owner in an ex parte reexamination proceeding must not file papers on behalf of a third party. 37 CFR 1.550(g).“ If a third party paper accompanies or is submitted as…
Read MoreWhat happens when a reexamination proceeding is terminated?
When a reexamination proceeding is terminated, the following steps are taken according to MPEP 2294: The reexamination file is forwarded to the Central Reexamination Unit (CRU) if not already there The file is given a 420 status A copy of the PALM “Application Number Information” screen and the “Contents” screen is printed and annotated with…
Read MoreCan an interference be suspended due to a concurrent reexamination proceeding?
Yes, an interference can potentially be suspended due to a concurrent reexamination proceeding, but suspension is not favored. The process for requesting such a suspension involves multiple steps: A party to the interference may file a miscellaneous motion under 37 CFR 41.121(a)(3) to suspend the interference. This motion must be presented to the administrative patent…
Read MoreWhat additional information must accompany claim amendments in reexamination?
When submitting claim amendments in a patent reexamination, additional information must be provided to support the changes. According to 37 CFR 1.530(e): “Whenever there is an amendment to the claims pursuant to paragraph (d) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending…
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