How does the USPTO handle inadvertent omissions in a patent owner’s response during inter partes reexamination?
The USPTO recognizes that sometimes a patent owner’s response may inadvertently omit certain matters or requirements while still being a bona fide attempt to respond and advance prosecution. In such cases, the USPTO may provide an opportunity for the patent owner to address the omission. According to MPEP 2666.10: “When action by the patent owner…
Read MoreHow does the USPTO handle excessive submissions in inter partes reexamination?
The USPTO has discretion to manage the volume of submissions in inter partes reexamination proceedings. According to MPEP 2686: “If the Office, in its sole discretion, deems the volume of the papers filed from litigations or other proceedings to be too extensive/lengthy, the Office may return, expunge or discard, at its sole discretion, all or…
Read MoreHow does the USPTO handle questions of compliance with the duty of disclosure in inter partes reexamination?
The USPTO’s approach to handling questions of compliance with the duty of disclosure in inter partes reexamination is outlined in 37 CFR 1.933(b): “If questions of compliance with this section are raised by the patent owner or the third party requester during a reexamination proceeding, they will be noted as unresolved questions in accordance with…
Read MoreWhat forms are used by the USPTO in inter partes reexamination actions?
The USPTO uses several specific forms for inter partes reexamination actions and processing. According to MPEP 2696, these forms include: PTOL-2064: Office Action in Inter Partes Reexamination PTOL-2065: Action Closing Prosecution (37 CFR 1.949) PTOL-2066: Right of Appeal Notice (37 CFR 1.953) PTOL-2068: Notice of Intent to Issue Inter Partes Reexamination Certificate PTOL-2069: Notice of…
Read MoreCan the USPTO examine claims not specifically requested for reexamination?
Yes, the USPTO can examine claims not specifically requested for reexamination, but it’s at their discretion. MPEP 2643 states: “The decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case.” However,…
Read MoreHow does the USPTO evaluate “sufficient cause” for time extensions in inter partes reexamination?
The USPTO evaluates “sufficient cause” for time extensions in inter partes reexamination by balancing two factors: Providing the patent owner a fair opportunity to respond Adhering to the statutory requirement for special dispatch (35 U.S.C. 314(c)) The MPEP states: “Evaluation of whether “sufficient cause” has been shown for an extension must be made by balancing…
Read MoreCan the Director make exceptions to the “special dispatch” requirement in inter partes reexamination?
Yes, the Director of the USPTO can make exceptions to the “special dispatch” requirement in inter partes reexamination proceedings for good cause. This is explicitly stated in 35 U.S.C. 314(c): “Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent…
Read MoreHow does the USPTO handle correspondence with patent owners during inter partes reexamination?
The USPTO has specific procedures for handling correspondence with patent owners during inter partes reexamination. According to the MPEP: “Communications from the Office to the patent owner will be directed to the correspondence address for the patent being reexamined. See 37 CFR 1.33(c).” This means that the USPTO will send all communications to the address…
Read MoreHow does the USPTO handle copending reexamination and interference proceedings?
How does the USPTO handle copending reexamination and interference proceedings? The USPTO handles copending reexamination and interference proceedings as follows: The Board of Patent Appeals and Interferences (BPAI) has jurisdiction over an interference proceeding. The Central Reexamination Unit (CRU) has jurisdiction over any reexamination proceeding. When both proceedings are copending, the BPAI’s jurisdiction over the…
Read MoreHow does the USPTO handle concurrent reexamination and interference proceedings?
When reexamination and interference proceedings are concurrent, the USPTO follows specific guidelines to manage both processes. According to MPEP 2686.04: “If a reexamination proceeding is ordered while an interference proceeding is pending, the reexamination proceeding is suspended until the interference proceeding is terminated at the interference level (i.e., the interference is terminated as to the…
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