How are new claims presented in an ex parte reexamination certificate?
New claims in an ex parte reexamination certificate are presented as follows: They are listed numerically in a double column format The full text of each new claim is included New claims are numbered starting after the highest number of any original patent claim As stated in MPEP 2290: “Any new claim added as a…
Read MoreCan new or amended claims be introduced during ex parte reexamination?
Yes, new or amended claims can be introduced during ex parte reexamination, but with certain limitations. According to 35 U.S.C. 305: “In any reexamination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as…
Read MoreHow does the USPTO handle correspondence in ex parte reexamination with multiple patent owners?
In ex parte reexamination proceedings involving multiple patent owners, the USPTO has specific procedures to manage correspondence efficiently. According to MPEP 2264: “Where there are multiple patent owners, the Office may treat the mailing address of the first named patent owner of record as the correspondence address of the patent owner. The Office will not…
Read MoreWhat happens when multiple ex parte reexamination requests are filed for the same patent?
When multiple ex parte reexamination requests are filed for the same patent, the following typically occurs: The second request is processed quickly and assigned to the same examiner as the first request. If reexamination is ordered for both requests, the Central Reexamination Unit (CRU) Director decides whether to merge the proceedings. As stated in MPEP…
Read MoreHow are multiple dependent claims treated in reexamination certificates?
Multiple dependent claims receive special treatment when preparing a reexamination certificate. The treatment differs between the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) and the Examiner’s Checklist. MPEP 2287 provides detailed guidance on this topic. For the NIRC, the addition or deletion of a claim in multiple dependency is viewed as adding…
Read MoreWhat MPEP sections cover Board decisions in patent applications and ex parte reexaminations?
According to MPEP § 2277, Board decisions for both patent applications and ex parte reexamination proceedings are covered in MPEP § 1213 through § 1213.03. The section states: “MPEP § 1213 through § 1213.03 relate to decisions of the Board for both applications and ex parte reexamination proceedings.” These sections provide comprehensive guidance on how…
Read MoreHow does MPEP § 2277 relate to other MPEP sections on Board decisions?
MPEP § 2277 serves as a bridge between the ex parte reexamination procedures and the general guidelines for Board decisions. It specifically references other MPEP sections: “MPEP § 1213 through § 1213.03 relate to decisions of the Board for both applications and ex parte reexamination proceedings.” This reference indicates that MPEP § 2277 does not…
Read MoreWhat happens if I miss the response deadline in an ex parte reexamination?
Missing the response deadline in an ex parte reexamination can have serious consequences. While MPEP 2263 doesn’t explicitly state the consequences, it’s important to note that: “A shortened statutory period of two months will generally be set for filing a response to an Office action in an ex parte reexamination.” Failing to respond within this…
Read MoreWhat happens if an inter partes reexamination is merged with an ex parte reexamination?
When an inter partes reexamination is merged with an ex parte reexamination, the merged proceeding is conducted according to inter partes reexamination procedures. The MPEP states: “If an inter partes reexamination is merged with an ex parte reexamination, the merged proceeding will be conducted as an inter partes reexamination with the participation of the ex…
Read MoreHow is a reexamination proceeding concluded when merged with an inter partes reexamination?
When an ex parte reexamination proceeding is merged with an inter partes reexamination, it can be concluded under 37 CFR 1.997(b). According to MPEP 2294, the process involves: Issuing a single reexamination certificate Processing the merged proceeding as set forth in MPEP § 2690 and MPEP § 2694 The MPEP states: “The proceeding may be…
Read More