Can a reexamination be ordered for claims not specifically requested in the inter partes reexamination request?
Generally, the USPTO will limit its examination to the claims specifically requested for reexamination. However, the Office retains discretion to reexamine other claims. The MPEP states: “The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the claim(s) for which…
Read MoreWhat activities should be included in USPTO personnel’s Time and Attendance Reports for reexamination?
According to MPEP 2638, USPTO personnel should include all activities related to reexamination in their Time and Attendance Reports. The section specifically states: “Even activities such as supervision, copying, typing, and docketing should be included.” This means that in addition to direct examination work, administrative and support tasks related to reexamination should also be reported.…
Read MoreWhat is the prohibition on filing subsequent inter partes reexamination requests?
The USPTO has a prohibition on filing subsequent inter partes reexamination requests under certain circumstances. The MPEP states: “Where an ordered inter partes reexamination is pending, and an inter partes reexamination request is subsequently filed, the prohibition provision of 37 CFR 1.907(a) must be considered. Once an order for inter partes reexamination has been issued,…
Read MoreHow does the USPTO prioritize reexamination proceedings and reissue applications?
The USPTO prioritizes reexamination proceedings and reissue applications as follows: Highest Priority: Cases involved in litigation (both reexamination proceedings and reissue applications) Second Priority: Reexamination proceedings not involved in litigation Lower Priority: All other cases As stated in MPEP 2661: “Any cases involved in litigation, whether they are reexamination proceedings or reissue applications, will have…
Read MoreWho is responsible for reporting time spent on reexamination activities at the USPTO?
According to MPEP Section 2638, the responsibility for reporting time spent on reexamination activities extends to all USPTO personnel involved in the process. The section clearly states: “Thus, all USPTO personnel should report all time spent on reexamination on their individual Time and Attendance Reports.” This directive applies to everyone involved in the reexamination process,…
Read MoreHow does the USPTO handle newly discovered prior art in inter partes reexamination when there’s concurrent litigation?
The USPTO’s handling of newly discovered prior art in inter partes reexamination with concurrent litigation is as follows: Estoppel under 35 U.S.C. 317(b) does not apply to newly discovered prior art unavailable during the litigation. The patent owner must show that the art was known to the requester at a time when it could have…
Read MoreWhat happens if reexamination proceedings are not merged?
When reexamination proceedings are not merged, they are typically conducted separately to maintain the “special dispatch” requirement. As explained in MPEP 2686.01: “If the Office does not merge, the first reexamination proceeding can be concluded, and any question of patentability raised by the second reexamination request can be resolved in the second proceeding, with no…
Read MoreHow does the USPTO handle multiple reexamination requests for the same patent?
The USPTO has specific procedures for handling multiple reexamination requests for the same patent. The MPEP provides guidance on this situation: “If a second or subsequent request for reexamination is filed (by any party permitted to do so) while a first reexamination is pending, the presence of a substantial new question of patentability depends on…
Read MoreHow are merged reexamination proceedings handled by the USPTO?
When reexamination proceedings are merged, the USPTO follows specific guidelines to ensure efficient handling: A single combined examiner’s action is prepared for all merged proceedings. Each action contains the control numbers of all involved proceedings on every page. A single action cover mailing sheet is used for all parties involved. The patent owner is required…
Read MoreHow does the USPTO handle incomplete requests for inter partes reexamination?
The USPTO has specific procedures for handling incomplete requests for inter partes reexamination: The request is reviewed for completeness. If found incomplete, a notice is sent to the requester. The requester is given time to complete the request. According to MPEP 2626: “If the request for inter partes reexamination is incomplete… the person identified as…
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