What are the appeal rights for patent owners in ex parte reexamination?
Patent owners have specific appeal rights in ex parte reexamination proceedings. According to MPEP 2273, “The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134, and may seek court review under the provisions of sections 141 to 144, with respect to any decision adverse to the…
Read MoreWhen can a patent owner propose amendments during the reexamination process?
A patent owner has multiple opportunities to propose amendments during the reexamination process. According to MPEP 2221, amendments can be proposed: With the initial reexamination request under 37 CFR 1.510(e) In a statement under 37 CFR 1.530(b) and (c) During the actual ex parte reexamination prosecution under 37 CFR 1.550(b) The MPEP states: “Amendments may…
Read MoreHow are admissions by the patent owner treated in ex parte reexamination?
Admissions by the patent owner can be used in combination with patents or printed publications in ex parte reexamination. The MPEP states: “Admissions by the patent owner as to any matter affecting patentability may be utilized to determine the scope and content of the prior art in conjunction with patents and printed publications in a…
Read MoreWhen can a patent owner file an amendment in an ex parte reexamination ordered under 35 U.S.C. 257?
In an ex parte reexamination ordered under 35 U.S.C. 257, the patent owner’s ability to file amendments is more restricted compared to standard reexaminations. According to MPEP 2823: “the patent owner cannot file an amendment to the patent until after supplemental examination is concluded and after the issuance of an initial Office action on the…
Read MoreWho can participate in interviews during ex parte reexamination proceedings?
Participation in interviews during ex parte reexamination proceedings is limited to specific parties. According to MPEP 2281: “Interviews in ex parte reexamination proceedings should be conducted with the parties set forth in MPEP § 2281.01.“ This typically includes: The examiner The patent owner (if represented, then with their attorney or agent) The third party requester…
Read MoreWhen is a panel review conference required in ex parte reexamination?
A panel review conference is generally required before issuing a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) in ex parte reexamination proceedings. However, there are exceptions to this requirement. According to MPEP 2287: “A panel review conference must be held in each instance where a NIRC is about to be issued, unless…
Read MoreHow is an ex parte reexamination ordered under 35 U.S.C. 257?
An ex parte reexamination under 35 U.S.C. 257 is ordered following a supplemental examination proceeding that finds a substantial new question of patentability. The process is as follows: A supplemental examination certificate is issued with reasons for the substantial new question of patentability. The examiner prepares an order for ex parte reexamination. The order may…
Read MoreWhat is the role of the Office of Patent Application Processing (OPAP) in ex parte reexamination?
The Office of Patent Application Processing (OPAP) plays a crucial role in the initial stages of ex parte reexamination. According to MPEP 2226: “The opening of all mail marked “Mail Stop Ex Parte Reexam,” and all initial clerical processing of requests for reexamination, will be performed in the Office of Patent Application Processing (OPAP).” OPAP…
Read MoreCan patent owners access copies of Office actions online in ex parte reexamination?
Yes, patent owners can access copies of Office actions online in ex parte reexamination proceedings. The MPEP 2264 states: “Copies of Office actions may be obtained by accessing Patent Center at the Office’s website www.uspto.gov.” Patent Center is an online portal provided by the USPTO that allows patent applicants, patent owners, and their representatives to…
Read MoreWhat information is included in the Official Gazette notice for an ex parte reexamination certificate?
The Official Gazette notice for an ex parte reexamination certificate includes several key pieces of information: Bibliographic information Status of each claim after the conclusion of the reexamination proceeding A representative claim Indication of any changes to the specification or drawing Clear indication of the type of certificate As stated in MPEP 2291: “The Official…
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