What are the service requirements for a third party requester’s reply in ex parte reexamination?
In ex parte reexamination, the third party requester must serve a copy of their reply on the patent owner. MPEP 2251 states: “Any reply by the ex parte requester must be served upon the patent owner in accordance with § 1.248.” Additionally, the MPEP directs readers to MPEP § 2266.03 for further details on service…
Read MoreWhat are the requirements for a third-party requester’s reply in ex parte reexamination?
According to MPEP 2254, a third-party requester has specific requirements for filing a reply in ex parte reexamination: The reply must be filed within two months of the date of service of the patent owner’s statement. The reply is limited to issues raised in the patent owner’s statement. No new prior art may be introduced…
Read MoreWhat can a third party requester include in their reply during ex parte reexamination?
According to MPEP 2251, a third party requester’s reply in an ex parte reexamination can be quite comprehensive. The MPEP states: “The reply need not be limited to the issues raised in the statement. The reply may include additional prior art patents and printed publications and may raise any issue appropriate for reexamination.” This means…
Read MoreHow are third-party requester replies considered in reexamination?
In a reexamination proceeding, the examiner must consider replies submitted by third-party requesters. MPEP 2253 provides guidance on this matter: “As to consideration of a reply by a third party requester, the examiner will be guided by 37 CFR 1.535.“ This means that the examiner will follow the rules set forth in 37 CFR 1.535…
Read MoreWhat are the restrictions on a third-party requester’s rebuttal brief in inter partes reexamination?
The restrictions on a third-party requester’s rebuttal brief in inter partes reexamination are specified in MPEP 2678, which cites 37 CFR 41.71(c): “(1) The rebuttal brief of any requester may be directed to the examiner’s answer and/or the respondent brief of the owner. (2) The rebuttal brief of a requester may not be directed to…
Read MoreHow should examiners handle third-party requester proposed rejections in inter partes reexamination?
Examiners must carefully consider and address all third-party requester proposed rejections in inter partes reexamination. MPEP 2660 provides clear guidance on this matter: “The examiner should not refuse to adopt a rejection properly proposed by the requester as being cumulative to other rejections applied. Rather, any such proposed rejection must be adopted to preserve parties’…
Read MoreCan a third party requester petition to merge a reexamination proceeding with a reissue application?
A third party requester does not have the right to petition for the merger of a reexamination proceeding with a reissue application. The MPEP clearly states: The third party requester does not have a right to file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, since a…
Read MoreCan a third-party requester petition to merge multiple reexamination proceedings?
A third-party requester generally does not have the right to petition for merging multiple reexamination proceedings. According to MPEP § 2283: “The third party requester of a reexamination proceeding (reexamination # 1) does not have a right to file a petition under 37 CFR 1.182 to merge that reexamination proceeding with another reexamination proceeding (reexamination…
Read MoreCan a third party requester participate in the appeal process of inter partes reexamination?
Can a third party requester participate in the appeal process of inter partes reexamination? Yes, a third party requester can participate in the appeal process of inter partes reexamination. MPEP 2674 outlines the rights and limitations of the third party requester in the appeal process: “The third party requester may file a respondent brief in…
Read MoreCan third-party requesters participate in ex parte reexamination interviews?
No, third-party requesters are not permitted to participate in ex parte reexamination interviews. MPEP 2281 clearly states: “Requests that reexamination requesters participate in interviews with examiners will not be granted.“ This restriction is in place to maintain the ex parte nature of the reexamination proceedings. Only the patent owner and/or their representative can participate in…
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