What is the three-prong test for identifying limitations under 35 U.S.C. 112(f)?
The three-prong test is used to determine whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. According to MPEP § 2181, the test consists of the following prongs: The claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a…
Read MoreWhat is the three-month rule for replying to Office actions in relation to patent term adjustment?
The three-month rule for replying to Office actions is an important consideration in patent term adjustment calculations. According to 37 CFR 1.704(b): “[A]n applicant shall be deemed to have failed to engage in reasonable efforts to conclude processing or examination of an application for the cumulative total of any periods of time in excess of…
Read MoreWhat types of documents can third parties submit during an ex parte reexamination proceeding?
During an ex parte reexamination proceeding, third parties are generally not allowed to make submissions after the reexamination order is issued. However, the USPTO will accept certain documents to ensure a complete file with updated status information. These include: Copies of notices of suits involving the patent Copies of decisions or papers filed in court…
Read MoreCan a sale by a third party trigger the on-sale bar?
Yes, a sale by an independent third party can trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP states: A sale or offer for sale of the invention by an independent third party more than 1 year before the effective filing date of applicant’s claimed invention may be applied as prior art and may…
Read MoreCan a third party requester get an extension of time in inter partes reexamination?
No, extensions of time are not available to third party requesters in inter partes reexamination proceedings. The MPEP explicitly states: “It should be noted that extensions of time under 37 CFR 1.956 are not available to the third party requester.” This limitation is specific to inter partes reexamination and reflects the process’s focus on the…
Read MoreCan a third party requester file supplemental comments in inter partes reexamination?
No, a third party requester is not allowed to file supplemental comments in inter partes reexamination. The MPEP clearly states: “The third party requester is not permitted to file further papers to supplement the third party requester’s written comments. Any such improper supplemental comments will not be considered, and will be returned.“ However, there is…
Read MoreWhat rights does a third party requester have regarding new findings of patentability in inter partes reexamination?
In inter partes reexamination, a third party requester’s rights to comment on new findings of patentability are limited until the appeal stage, unless the patent owner responds to the finding. According to MPEP 2673.01: “The third party requester has no right to comment on and address a finding of patentability made during the reexamination proceeding…
Read MoreWhat are the third party requester’s rights after a patent owner’s submission following an ACP?
After a patent owner’s submission following an Action Closing Prosecution (ACP), the third party requester has the following rights: File one set of comments responsive to the patent owner’s submission Comments must be filed within 30 days from the date of service of the patent owner’s submission Comments are limited to responding to the patent…
Read MoreWho can represent a third party requester in an inter partes reexamination?
A third party requester in an inter partes reexamination must be represented by a registered patent practitioner. The MPEP states: “A third party requester may not be represented during a reexamination proceeding by an attorney or other person who is not registered to practice before the Office.” This means that only attorneys or agents who…
Read MoreCan a third party requester file a reply if the patent owner doesn’t file a statement?
No, a third party requester cannot file a reply if the patent owner does not file a statement in an ex parte reexamination. MPEP 2251 clearly states: “If the patent owner does not file a statement under § 1.530, no reply or other submission from the ex parte reexamination requester will be considered.” This rule…
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