What happens to premature responses by patent owners in reexamination proceedings?
Premature responses by patent owners in reexamination proceedings are not considered and are expunged from the file. According to MPEP 2267: “Where the patent owner is NOT the requester, any response or amendment filed by owner prior to an order to reexamine is premature, will not be considered, and will be expunged.” This rule is…
Read MoreIs a power of attorney required for ex parte reexamination requests?
While a power of attorney is desirable, it is not strictly required for filing an ex parte reexamination request. According to MPEP 2213: “While the filing of the power of attorney is desirable, processing of the reexamination request will not be delayed due to its absence.” However, if an attorney or agent is acting under…
Read MoreWhat notices are issued regarding compliance with Portola Packaging in reexaminations?
The MPEP outlines specific notices that should be issued regarding compliance with the Portola Packaging decision in reexaminations ordered before November 2, 2002: If the prosecution of an ongoing reexamination is terminated to comply with Portola Packaging, the Notice of Intent to Issue Ex Parte Reexamination Certificate should state:“The prosecution of this reexamination is terminated…
Read MoreWhat is the process for petitioning a denial of an ex parte reexamination request?
If a request for ex parte reexamination under 35 U.S.C. 302 is denied, the requester can petition for review. According to MPEP 2248: “The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination. Any such petition…
Read MoreCan you petition a partial grant of a reexamination request?
Yes, you can petition a partial grant of a reexamination request. MPEP 2248 explains: “If an order granting reexamination includes a determination that the third party requester has not raised a substantial new question of patentability (SNQ) for one claim, but has raised a SNQ for at least one other claim, then third party requester…
Read MoreWhat is the period of enforceability for ex parte reexamination?
The period of enforceability for ex parte reexamination is an important concept in patent law. According to MPEP 2209: “The period of enforceability of a patent is the period during which the patent is enforceable in a court of law, which is usually the patent term plus the 6 year statute of limitations for bringing…
Read MoreWhat is the Patent Owner’s Statement in ex parte reexamination?
The Patent Owner’s Statement is a response filed by the patent owner in an ex parte reexamination proceeding. According to MPEP 2249, “If reexamination is ordered under 35 U.S.C. 304, the decision will set a period of not less than two months within which period the patent owner may file a statement and any narrowing…
Read MoreCan a patent owner file a statement in ex parte reexamination ordered under 35 U.S.C. 257?
No, a patent owner cannot file a statement in ex parte reexamination ordered under 35 U.S.C. 257. This is one of the key differences from standard ex parte reexamination. According to MPEP 2818.01: “The patent owner will not have the right to file a statement pursuant to 37 CFR 1.530, and the order will not…
Read MoreCan a patent owner file a statement before the reexamination order?
No, a patent owner cannot file a statement before the reexamination order is issued. MPEP 2249 states: “The patent owner has no right to file a statement subsequent to the filing of the request under 35 U.S.C. 302 but prior to the order for reexamination. Any such premature statement will not be acknowledged nor considered…
Read MoreWhat are the time limits for filing a patent owner’s statement in ex parte reexamination?
According to MPEP 2254, the patent owner has specific time limits for filing a statement in ex parte reexamination: The patent owner has two months from the date of the order for reexamination to file a statement. This period may be extended by up to one additional month upon request and payment of the requisite…
Read More