What are the requirements for submitting foreign patents and publications in reexamination?
When submitting foreign patents and publications in a reexamination proceeding, there are specific requirements that must be met. According to MPEP 2656: “37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications…
Read MoreCan copies of copending reexamination proceedings be submitted during reexamination?
No, copies of copending reexamination proceedings should not be submitted during a reexamination. The MPEP 2656 clearly 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 the application/proceeding serial/control number and its…
Read MoreWhat documents are required for a petition to excuse unintentional delay in an international design application?
A petition to excuse unintentional delay in an international design application must be accompanied by several documents and fees as specified in 37 CFR 1.1051(a). The required documents include: A copy of any invitation from the International Bureau setting the missed time limit The required reply (unless previously filed) The petition fee A certified copy…
Read MoreWhat happens if a copy of prior art submitted for reexamination is not legible?
If a copy of prior art submitted for reexamination is not legible, it is considered not to have been provided. The USPTO addresses this issue as stated in MPEP 2218: “If the copy provided is not legible, or is such that its image scanned into the Image File Wrapper system (IFW) will not be legible,…
Read MoreHow are properly submitted documents handled in inter partes reexamination?
When documents are properly submitted in accordance with 37 CFR 1.985 during inter partes reexamination, the USPTO has a specific process for handling them. According to MPEP 2686: “Any proper submission pursuant to 37 CFR 1.985 will be promptly entered into the record of the reexamination file, and will be considered by the examiner as…
Read MoreWhat documents must be submitted with an ex parte reexamination request?
When filing an ex parte reexamination request, the following documents must be submitted: A copy of each patent or printed publication relied on or referred to in the request English language translations of any non-English documents, including all necessary and pertinent parts As stated in MPEP 2218: “It is required that a copy of each…
Read MoreHow are documents submitted by parties considered in reexamination?
In reexamination proceedings, the consideration given to documents submitted by parties (patent owner or requester) is typically limited by how well the submitting party has explained the content and relevance of those documents. According to MPEP 2656: “Where patents, publications, and other such documents are submitted by a party (patent owner or requester) in compliance…
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…
Read MoreHow are color photographs or submissions handled in reexamination requests?
Color photographs and similar color submissions in reexamination requests are handled differently from other documents. According to MPEP 2218: “An exception is color photographs and like color submissions, which, if legible as presented, will be retained in an ‘artifact’ file and used as such.” This means that: Color photographs and similar color submissions are not…
Read MoreWhat are the requirements for submitting earlier search results in a PCT application?
When submitting earlier search results in a PCT application, the following requirements must be met: The applicant must request the International Searching Authority to take into account the results of an earlier search under PCT Rule 4.12. The applicant must comply with PCT Rule 12bis.1 regarding the submission of documents. A copy of the earlier…
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