How is information material to patentability defined in ex parte reexamination under 35 U.S.C. 257?
In ex parte reexamination proceedings resulting from supplemental examination under 35 U.S.C. 257, the definition of information material to patentability is specific. According to MPEP 2823: “information material to patentability will be defined by 37 CFR 1.56(b) for an ex parte reexamination proceeding resulting from a supplemental examination proceeding“ This means that the standard definition…
Read MoreWhere should submissions for correcting incomplete ex parte reexamination requests be sent?
Submissions for correcting incomplete ex parte reexamination requests should be marked and sent to a specific mailing address. The MPEP provides clear guidance: “Any such submission should be marked “Mail Stop Ex Parte Reexam” in the manner discussed in MPEP § 2224 so that the submission may be promptly forwarded to the staff of the…
Read MoreWhat are the limitations on new rejections in ex parte reexamination?
What are the limitations on new rejections in ex parte reexamination? In ex parte reexamination, there are specific limitations on introducing new rejections: Pre-AIA 35 U.S.C. 303(a) and 37 CFR 1.906(c) restrict new rejections to those based on patents or printed publications. New rejections cannot be based on issues like 35 U.S.C. 112 or public…
Read MoreWhat legal precedents support the USPTO’s handling of untimely papers in ex parte reexamination?
The USPTO’s handling of untimely papers in ex parte reexamination is supported by several legal precedents. MPEP 2225 cites the following cases: Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985, 989 (Fed. Cir. 1985) In re Knight, 217 USPQ 294 (Comm’r Pat. 1982) In re Amp, 212 USPQ 826 (Comm’r Pat. 1981) These…
Read MoreWhat is the legal basis for ex parte reexamination requests?
The legal basis for ex parte reexamination requests is established in United States patent law. The MPEP section refers to this statute: “…request for ex parte reexamination filed under 35 U.S.C. 302…” 35 U.S.C. 302 is the specific statute that provides the legal foundation for ex parte reexamination requests. This law outlines the requirements and…
Read MoreHow are late responses by requesters handled in reexamination proceedings?
Late responses by requesters in reexamination proceedings are not considered and are expunged from the file. According to MPEP 2267: “Any response subsequent to 2 months from the date of service of the patent owner’s statement will not be considered, and will be expunged.” This rule is based on 37 CFR 1.535 and 37 CFR…
Read MoreHow does the KSR decision affect the standard for substantial new question of patentability?
The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly change the standard for determining a substantial new question of patentability in ex parte reexamination. The MPEP 2216 states: “The clarification of the legal standard for determining obviousness under 35 U.S.C. 103…
Read MoreWhat are the key requirements for an appeal brief in ex parte reexamination?
An appeal brief in ex parte reexamination must meet several key requirements, as outlined in the MPEP: A fee as set forth in 37 CFR 41.20(b)(2) is required. The brief must include authorities and arguments on which the appellant will rely. A summary of claimed subject matter, referring to the specification by page and line…
Read MoreWhat issues can be considered in ex parte reexamination ordered under 35 U.S.C. 304?
Ex parte reexamination ordered under 35 U.S.C. 304 is limited to considerations of prior art patents and printed publications. The MPEP states: “Rejections will not be based on matters other than patents or printed publications, such as public use or sale, inventorship, 35 U.S.C. 101, conduct issues, etc.” However, certain ancillary matters may be considered,…
Read MoreHow are interviews conducted in ex parte reexamination proceedings?
Interviews in ex parte reexamination proceedings are conducted under specific guidelines. The MPEP 2254 states: “Interviews are permitted in an ex parte reexamination proceeding. In the ex parte reexamination proceeding, only ex parte interviews between the examiner and patent owner and/or the patent owner’s representative are permitted. Interviews between the examiner and the third party…
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