How does the USPTO handle newly discovered prior art in inter partes reexamination when there’s concurrent litigation?
The USPTO’s handling of newly discovered prior art in inter partes reexamination with concurrent litigation is as follows: Estoppel under 35 U.S.C. 317(b) does not apply to newly discovered prior art unavailable during the litigation. The patent owner must show that the art was known to the requester at a time when it could have…
Read MoreWhat are the obligations of a patent owner during ex parte reexamination when there is concurrent litigation?
During ex parte reexamination, a patent owner has specific obligations regarding concurrent litigation. According to MPEP 2286: “The patent owner is required by 37 CFR 1.565(a) to call the attention of the Office to any prior or concurrent proceeding in which the patent is involved or was involved. Thus, the patent owner has an obligation…
Read MoreHow does concurrent litigation affect ex parte reexamination proceedings?
Concurrent litigation can significantly impact ex parte reexamination proceedings. According to MPEP 2286, when a request for ex parte reexamination is filed as a result of a court order or an agreement sanctioned by a court, or when litigation is stayed for the filing of a reexamination request, “all aspects of the proceeding will be…
Read MoreAre time extensions permitted in reissue applications with related litigation?
Generally, time extensions are not permitted in reissue applications with related litigation. The MPEP provides specific language to be used in such cases: “Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.” This restriction is applied to ensure that the…
Read MoreWhat is the general policy regarding reissue applications with concurrent litigation?
Generally, action in reissue applications with concurrent litigation is suspended sua sponte to avoid duplicating effort. The Manual of Patent Examining Procedure (MPEP) states: “To avoid duplicating effort, action in reissue applications in which there is an indication of concurrent litigation will generally be suspended sua sponte.” This policy helps streamline the process and prevents…
Read MoreWhat is the procedure for suspending action in a reissue application with concurrent litigation?
When suspending action in a reissue application with concurrent litigation, examiners are instructed to follow a specific procedure. The MPEP states: “The examiner should consult with the Technology Center Training Quality Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist (SPRS) before suspending action in the reissue application.” Additionally, examiners are provided with a form paragraph…
Read MoreHow does the USPTO handle reissue applications merged with ex parte reexamination proceedings when there is concurrent litigation?
When a reissue application is merged with an ex parte reexamination proceeding and there is concurrent litigation, the merged proceeding will not be stayed. The MPEP provides clear guidance on this matter: “Thus, where a reissue application has been merged with an ex parte reexamination proceeding, the merged proceeding will not be stayed where there…
Read MoreUnder what circumstances might the USPTO not suspend action on a reissue application with concurrent litigation?
The USPTO may choose not to suspend action on a reissue application with concurrent litigation if certain conditions are met. According to the MPEP, these conditions include: A stay of the litigation is in effect The litigation has been terminated There are no significant overlapping issues between the application and the litigation The applicant requests…
Read MoreHow does concurrent litigation affect the examination of a reissue application?
Concurrent litigation can significantly impact the examination of a reissue application: The examiner must determine if there is ongoing litigation related to the patent. If litigation exists, the examiner needs to ascertain its current status. The reissue file history should be appropriately marked to indicate the presence of concurrent litigation. Special procedures may need to…
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