Can the USPTO make telephone calls during inter partes reexamination proceedings?
The USPTO may, in its sole discretion, make limited telephone calls during inter partes reexamination proceedings. According to MPEP 2685, “The Office may, in its sole discretion, telephone a party as to matters of completing or correcting the record of a file, where the subject matter discussed does not go to the merits of the…
Read MoreHow are telephone calls recorded in inter partes reexamination proceedings?
When the USPTO makes a telephone call during an inter partes reexamination proceeding, it must be properly documented. The MPEP 2685 states: “If the party is reached by telephone and the matter is resolved, then the next Office communication as may be appropriate (e.g., Office action, NIRC) should make the telephone call of record. Any…
Read MoreCan procedural matters be discussed in inter partes reexamination proceedings?
Yes, questions on strictly procedural matters may be discussed with the parties in inter partes reexamination proceedings. The MPEP 2685 provides guidance: “Questions on strictly procedural matters may be discussed with the parties. The guidance to follow is that any information which a person could obtain by reading the file (which is open to the…
Read MoreAre interviews allowed in inter partes reexamination proceedings?
No, interviews discussing the merits of inter partes reexamination proceedings are not allowed. According to MPEP 2685, “Pursuant to 37 CFR 1.955, an interview which discusses the merits of a proceeding will not be permitted in inter partes reexamination proceedings.” This prohibition applies to both inter partes interviews and separate ex parte interviews with either…
Read MoreCan informal amendments be accepted in inter partes reexamination proceedings?
No, informal amendments are not accepted in inter partes reexamination proceedings. The MPEP 2685 explicitly states: “An informal amendment by the patent owner will not be accepted, because that would be tantamount to an ex parte interview.” This policy ensures that all communications and amendments are formally submitted and properly recorded, maintaining the integrity and…
Read MoreWhat types of communications are allowed in inter partes reexamination proceedings?
In inter partes reexamination proceedings, all communications between the Office and the parties (patent owner and third party requester) must be in writing and filed with the Office for entry into the record. The MPEP 2685 states: “All communications between the Office and the patent owner (and the third party requester) which are directed to…
Read More