What happens if a patent owner fails to notify the Office of prior or concurrent proceedings?
If a patent owner fails to notify the Office of prior or concurrent proceedings as required by 37 CFR 1.985, there can be serious consequences. According to MPEP 2282: “Where the patent owner has not complied with the notice requirement of 37 CFR 1.985, and the reexamination proceeding is concluded by the issuance and publication…
Read MoreWhat happens when a reissue application and an inter partes reexamination proceeding are pending concurrently for the same patent?
When a reissue application and an inter partes reexamination proceeding are pending concurrently on the same patent, the general policy of the USPTO is that they will not be conducted separately at the same time. As stated in the MPEP: “The general policy of the Office is that the examination of a reissue application and…
Read MoreHow does the USPTO handle concurrent proceedings during ex parte reexamination?
The MPEP 2288 addresses the handling of concurrent proceedings during ex parte reexamination. It states: “If concurrent proceedings are pending at the time the ex parte reexamination certificate is to be issued, the USPTO may suspend the issuance of the certificate until the concurrent proceedings are terminated.” This means that if there are other ongoing…
Read MoreHow does the USPTO handle concurrent proceedings for reissue applications?
How does the USPTO handle concurrent proceedings for reissue applications? The USPTO has specific procedures for handling concurrent proceedings involving reissue applications. According to MPEP 1442: “Where a reissue application and an ex parte reexamination proceeding on which an order pursuant to 37 CFR 1.525 has been mailed are copending, the reissue application is placed…
Read MoreWhat are the notification requirements for prior or concurrent proceedings in a reissue application?
In a reissue application, the applicant has a continuing duty to notify the USPTO of any prior or concurrent proceedings involving the patent for which reissue is requested. This requirement is outlined in 37 CFR 1.178(b), which states: “In any reissue application before the Office, the applicant must call to the attention of the Office…
Read MoreWhat are the patent owner’s responsibilities regarding notification of concurrent proceedings?
The patent owner has specific responsibilities to notify the USPTO of concurrent proceedings involving their patent: In the reissue application, the patent owner should file a Notification of Concurrent Proceedings pursuant to 37 CFR 1.178(b) as early as possible. In the reexamination proceeding, the patent owner should file a Notification of Concurrent Proceedings pursuant to…
Read MoreHow should a patent owner notify the USPTO of prior or concurrent proceedings?
Patent owners should notify the USPTO of prior or concurrent proceedings as specified in MPEP 1418: “The patent owner has a duty to notify the Office in writing, within two months of the date of the order … of any prior or concurrent proceedings in which the patent is or was involved such as interferences,…
Read MoreWhat happens when a reissue application and a reexamination proceeding are pending concurrently for the same patent?
When a reissue application and a reexamination proceeding are pending concurrently for the same patent, the Office may decide to merge the two proceedings or suspend one of them. According to MPEP 1449.01, “If an examiner becomes aware that a reissue application and an ex parte or inter partes reexamination proceeding are both pending for…
Read MoreHow does the USPTO handle concurrent reissue applications and PTAB Review Proceedings?
When a reissue application and a PTAB Review Proceeding (such as inter partes review, post grant review, or covered business method review) are concurrent, the Director of the USPTO has discretion in determining how to proceed. According to MPEP 1442.03: “The Director may determine the manner in which the PTAB Review Proceeding and the other…
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