What types of documents can third parties submit during an ex parte reexamination proceeding?

During an ex parte reexamination proceeding, third parties are generally not allowed to make submissions after the reexamination order is issued. However, the USPTO will accept certain documents to ensure a complete file with updated status information. These include: Copies of notices of suits involving the patent Copies of decisions or papers filed in court…

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What limitations are placed on submissions to patent files regarding court decisions?

The USPTO places several limitations on submissions to patent files regarding court decisions and related documents. According to MPEP 2207, these limitations include: Non-merit decisions (e.g., on motions for a new venue or discovery date) are not entered and may be expunged if mistakenly added. Papers providing a party’s arguments (e.g., a memorandum supporting summary…

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What additional legal documents should be included with a patent reexamination request?

When submitting a patent reexamination request, certain additional legal documents should be included to provide a comprehensive context for the patent’s current status. According to MPEP 2219: “A copy of any federal court decision, complaint in a pending civil action, or interference or derivation decision should also be submitted.“ These additional documents may include: Federal…

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What are some examples of products that have been found to have or lack markedly different characteristics?

The MPEP provides several examples of products that have been found to have or lack markedly different characteristics from their natural counterparts. These examples are based on court decisions and help illustrate the application of the analysis. Products found to have markedly different characteristics: Chakrabarty’s genetically modified bacterium: “This bacterium had a changed functional characteristic,…

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How do court decisions impact the determination of a substantial new question of patentability?

Court decisions can impact the determination of a substantial new question of patentability (SNQ) or reasonable likelihood that the requester will prevail (RLP), but their influence varies depending on the nature of the decision. The MPEP outlines several scenarios: Final holding of validity: A final court decision that a patent claim is not invalid doesn’t…

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