How are third-party requesters notified of Office actions in ex parte reexamination?
In ex parte reexamination proceedings involving third-party requesters, the USPTO ensures that they receive copies of all Office actions. According to MPEP 2264: “All actions in a third party requester ex parte reexamination will have a copy mailed to the third party requester. A transmittal form PTOL-465 must be used in providing the third party…
Read MoreWhat happens if a third party requester doesn’t comment on a patent owner’s response in inter partes reexamination?
If a third party requester does not file timely written comments on a patent owner’s response in inter partes reexamination, any subsequent submission of comments on that specific response will be refused consideration. However, this does not affect the requester’s rights to comment on future patent owner responses. As stated in MPEP 2666.20: “Where a…
Read MoreCan a third party requester petition to merge a reissue application and an inter partes reexamination proceeding?
No, a third party requester does not have the right to file a petition to merge a reissue application and an inter partes reexamination proceeding. 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…
Read MoreCan a third party requester intervene in court review of a reexamination decision?
While third party requesters cannot directly appeal reexamination decisions, they may be allowed to intervene in court reviews under certain circumstances. The MPEP 2279 states: “While the reexamination statutory provisions do not provide for participation by any third party requester during any court review, the courts have permitted intervention by a third party requester in…
Read MoreWhat are the consequences if a third party requester fails to file a timely appeal in inter partes reexamination?
If a third party requester fails to file a timely appeal or if their appeal is dismissed in inter partes reexamination, they lose certain rights in the appeal process. However, they may retain some limited participation options depending on the circumstances. According to MPEP 2666.20: “Where the third party requester fails to make a timely…
Read MoreWhat is the timeline for third-party requester comments in inter partes reexamination?
In inter partes reexamination, the third-party requester has a specific timeline to submit comments on patent owner responses. According to MPEP 2654, which cites 35 U.S.C. 314(b)(2): “Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the third-party requester shall have one opportunity…
Read MoreWhat are the time limits for third party requester comments in inter partes reexamination?
According to 37 CFR 1.947, a third party requester may file written comments within 30 days from the date of service of the patent owner’s response to an Office action. The MPEP states: “The third party requester comments must be filed within a period of 30 days from the date of service of the patent…
Read MoreCan a third party requester comment on a patent owner’s response to a new ground of rejection?
Yes, a third party requester can comment on a patent owner’s response to a new ground of rejection. According to MPEP 2682: In accordance with 37 CFR 41.77(c), the third party requester may once file comments on the patent owner’s submission under 37 CFR 41.77(b)(1) within one month of the date of service of the…
Read MoreCan a third-party requester comment on a patent owner’s response to a new ground of rejection?
Yes, a third-party requester can comment on a patent owner’s response to a new ground of rejection issued by the Patent Trial and Appeal Board (PTAB) in an inter partes reexamination. According to MPEP 2681: Where the owner has filed a response requesting reopening of prosecution under paragraph (b)(1) of this section, any requester, within…
Read MoreCan a third party requester comment on a patent owner’s incomplete response?
Yes, a third party requester can comment on a patent owner’s incomplete response. However, the rules for commenting depend on the nature of the incomplete response: If the response is incomplete due to substantive issues, the third party requester can comment on both the original incomplete response and the completed response. If the response is…
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