How are new claims numbered in the ex parte reexamination certificate?
New claims in ex parte reexamination are numbered according to specific rules. The MPEP 2287 provides clear guidance: “If new claims have been added, the examiner should number them, starting with the number next higher than the number of claims in the patent.” For example, if the original patent had 20 claims, the first new…
Read MoreWhat is the “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements”?
The “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements” is a formal notification sent to the requester when their ex parte reexamination request fails to meet one or more filing date requirements. According to MPEP 2227: “Form PTOL-2077, ‘Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements,’ is…
Read MoreWhat is a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC)?
A Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) is a document prepared by the examiner upon conclusion of an ex parte reexamination proceeding. The NIRC informs the patent owner and any third party requester that the reexamination prosecution has been terminated. According to MPEP 2287, “Upon conclusion of the ex parte reexamination…
Read MoreCan non-patent literature be used as prior art in ex parte reexamination requests?
Yes, non-patent literature can be used as prior art in ex parte reexamination requests, provided it qualifies as a “printed publication.” The MPEP 2244 states: “The prior art that may be submitted under 35 U.S.C. 302 is limited to ‘patents or printed publications.’” Printed publications can include various forms of non-patent literature such as: Scientific…
Read MoreHow do “no cause” extensions work in patent owner requested or Director ordered ex parte reexaminations?
In patent owner requested or Director ordered ex parte reexaminations, “no cause” extensions work as follows: Patent owners can request an extension of time for up to two months from the time period set in the Office action without providing a showing of sufficient cause. The request must be filed no later than two months…
Read MoreCan new matter be introduced during ex parte reexamination?
New matter cannot be introduced into the disclosure during ex parte reexamination. The MPEP states: “35 U.S.C. 305 provides for examination under 35 U.S.C. 132, which prohibits the introduction of new matter into the disclosure.” If new matter is added to the claims or affects claim limitations, the claims should be rejected under 35 U.S.C.…
Read MoreWhat are the guidelines for addressing new matter in ex parte reexamination?
In ex parte reexamination, addressing new matter is subject to specific guidelines as outlined in MPEP 2262: New matter is not permitted in reexamination proceedings. If new matter is introduced in an amendment, it must be objected to and not entered. The examiner must provide a detailed explanation of why the proposed amendment introduces new…
Read MoreCan new matter be added to claims during ex parte reexamination?
Can new matter be added to claims during ex parte reexamination? No, new matter cannot be added to claims during ex parte reexamination: The MPEP 2258 clearly states: “No amendment may introduce new matter into the disclosure of the patent.” This prohibition is based on 35 U.S.C. 305, which specifies that no proposed amended or…
Read MoreCan new issues be raised in ex parte reexamination?
Can new issues be raised in ex parte reexamination? Generally, new issues cannot be raised in ex parte reexamination unless they are based on patents or printed publications. The MPEP 2258 states: “Issues other than those indicated in 37 CFR 1.552(c) will not be resolved in a reexamination proceeding.” However, there are some exceptions: New…
Read MoreCan new grounds of rejection be introduced in an examiner’s answer during ex parte reexamination?
Yes, new grounds of rejection can be introduced in an examiner’s answer during ex parte reexamination. According to MPEP 2273: “The examiner may, however, include in the examiner’s answer a new ground of rejection, in which case appellant would have the right to amend the claims, or take other appropriate action under 37 CFR 41.39(a)(2).”…
Read More