Are there any restrictions on who can file for ex parte reexamination?
Yes, there is one specific restriction mentioned in MPEP 2212: “The only ‘person’ who is barred from filing a request for ex parte reexamination of a patent under 35 U.S.C. 302 is one who is barred from doing so by the estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) based on inter…
Read MoreWhat certifications are required in an inter partes reexamination request?
An inter partes reexamination request must include specific certifications as outlined in MPEP 2614. These certifications are crucial to ensure compliance with statutory provisions and to prevent abuse of the reexamination process. The required certifications are: Estoppel Certification (35 U.S.C. 317 and 315(e)): The request must include “A certification by the third party requester that…
Read MoreWhat is the legal concept of estoppel in patent interference proceedings?
In patent interference proceedings, estoppel is a legal concept that prevents a party from raising an issue if they have already lost on that issue during the interference. This principle is outlined in MPEP 2308.03(a), which states: “A party is barred (estopped) from raising an issue if the party lost on the issue during the…
Read MoreWhat is the estoppel effect of litigation on inter partes reexamination under 35 U.S.C. 317(b)?
The estoppel effect under 35 U.S.C. 317(b) can prevent the maintenance of an inter partes reexamination under certain conditions: It applies when there’s a final court decision upholding patent validity. The requester must have been a party to the litigation. It only affects claims that were at issue in the litigation. It prevents reexamination based…
Read MoreCan a losing party in a patent interference pursue claims in a continuing application?
A losing party in a patent interference may pursue claims in a continuing application, but with significant limitations due to estoppel. According to MPEP 2308.03, the following restrictions apply: Claims that would have been anticipated or rendered obvious by the subject matter of the lost count are barred due to estoppel on the merits. Claims…
Read MoreCan a party claim the same invention after losing an interference?
If a party loses an interference proceeding and subsequently attempts to claim the same invention as the count in the lost interference, their claims will be rejected. The MPEP 2308.03(c) provides clear guidance on this matter: “If a party that lost the earlier interference is again claiming the same invention as the count, the interfering…
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