How does the USPTO handle amendments or new claims in copending reexamination or reissue proceedings?
When deciding a request for reexamination, the USPTO does not consider or comment on amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent under consideration. As stated in MPEP 2243: Amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent to be reexamined will…
Read MoreWhat are the restrictions on submitting copending reexamination proceedings and applications?
The USPTO has specific restrictions regarding the submission of copending reexamination proceedings and applications during inter partes reexamination. MPEP 2686 states: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying…
Read MoreWhat happens when a patent in inter partes reexamination becomes involved in an interference?
When a patent undergoing inter partes reexamination becomes involved in an interference proceeding, the general policy is that the reexamination will not be delayed or stayed. This is due to the requirement in 35 U.S.C. 314(c) that all reexamination proceedings be conducted with “special dispatch” within the Office. As stated in the MPEP: In general,…
Read MoreHow are copending reissue and reexamination proceedings handled?
Copending reissue and reexamination proceedings are handled differently depending on which was filed first. If a reexamination request is filed when a reissue application is pending, the reexamination is generally assigned to a different examiner. If the proceedings are merged, the merged proceeding is typically handled by the reissue examiner, unless they were involved in…
Read MoreHow does the USPTO handle amendments or new claims in copending proceedings during reexamination?
The USPTO does not consider amendments or new claims from copending proceedings when deciding on a reexamination request. MPEP 2643 clearly states: “Amendments and/or new claims present in any copending reexamination or reissue proceeding for the patent to be reexamined will not (see MPEP § 2640, subsection II.(A)) be considered nor commented upon when deciding…
Read MoreHow should information about copending reexamination proceedings be provided in a reexamination request?
When providing information about copending reexamination proceedings in a reexamination request, it’s important to follow the guidelines set by the USPTO. According to MPEP 2218: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may…
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