What triggers an order for inter partes reexamination?
An order for inter partes reexamination is triggered when the Director finds that a substantial new question of patentability (SNQ) affecting a claim of a patent is raised, or that there is a reasonable likelihood that the requester would prevail (RLP) with respect to at least one of the claims challenged in the request. As…
Read MoreHow are prior art submissions handled after an inter partes reexamination order is issued?
Prior art submissions made after an inter partes reexamination order is issued are handled differently than those submitted before the order. According to MPEP 2646: “Any prior art citations under 37 CFR 1.501 submitted after the date of the decision ordering inter partes reexamination are stored until the reexamination is concluded. Note 37 CFR 1.902.…
Read MoreCan a patent owner or third party requester petition to vacate an order granting reexamination?
Generally, neither the patent owner nor the third party requester can petition to vacate an order granting reexamination based on the substantive determination of a substantial new question of patentability (SNQ) or reasonable likelihood of prevailing (RLP). As stated in MPEP 2646: “A substantive determination by the Director of the Office to institute reexamination pursuant…
Read MoreWhat is the time frame for issuing a decision on inter partes reexamination?
What is the time frame for issuing a decision on inter partes reexamination? According to MPEP 2646, the Office must issue a decision on inter partes reexamination within three months following the filing date of a request. The MPEP states: “35 U.S.C. 312 and 313 require that the PTO determine whether or not to order…
Read MoreHow does the examiner’s decision granting a reexamination request differ from determining patentability?
The examiner’s decision granting a reexamination request focuses on whether there is a substantial new question of patentability (SNQ) or a reasonable likelihood that the requester will prevail (RLP), rather than determining the ultimate patentability of the claims. According to MPEP 2646: “In the decision on the request, the examiner does not decide the ultimate…
Read MoreWhat happens if the USPTO denies a request for inter partes reexamination?
What happens if the USPTO denies a request for inter partes reexamination? If the USPTO denies a request for inter partes reexamination, several important steps follow, as outlined in MPEP 2646: The requester is notified of the denial. The requester is given one opportunity to seek review of the denial. The patent owner is sent…
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