What is an ex parte reexamination request?
An ex parte reexamination request is a formal petition filed with the U.S. Patent and Trademark Office (USPTO) to review the patentability of one or more claims in an existing patent. The request is based on prior art patents or printed publications and can be filed by any person during the period of enforceability of…
Read MoreWhat is an Ex Parte Reexamination Certificate?
An Ex Parte Reexamination Certificate is a document issued at the conclusion of an ex parte reexamination proceeding, except in specific cases of merger with reissue applications or inter partes reexamination proceedings. The MPEP states: An ex parte reexamination certificate is issued at the close of each ex parte reexamination proceeding in which reexamination has…
Read MoreWhat is the Waiver of Statement Program in ex parte reexamination?
The Waiver of Statement Program is an initiative to expedite ex parte reexamination proceedings. According to MPEP 2249, “If the patent owner waives the right to file a patent owner’s statement in response to a request from the Office, the examiner will be able to act on the first Office action on the merits immediately…
Read MoreCan a filing date be vacated after it has been assigned to an ex parte reexamination request?
Yes, a filing date can be vacated after it has been assigned to an ex parte reexamination request if non-compliance issues are discovered during the examiner’s review. The MPEP 2227 outlines this process: “If, in the process of reviewing the request, the examiner notes a non-compliance item not earlier recognized, the examiner will communicate with…
Read MoreWhat standard does the USPTO use to determine if an item of information raises a Substantial New Question (SNQ) of patentability in a supplemental examination?
The USPTO uses the same standard for determining whether an item of information raises a Substantial New Question (SNQ) of patentability in supplemental examination as it does for ex parte reexaminations. According to MPEP 2816: “The standard for determining whether an item of information properly submitted as part of the request raises a SNQ will…
Read MoreHow does the USPTO communicate defective papers in ex parte reexamination?
The USPTO uses specific forms to communicate defective papers in ex parte reexamination, depending on who requested the reexamination. According to MPEP 2296, there are two forms for this purpose: PTOL-475: Notice of Defective Paper In Ex Parte Reexamination – Third Party Requested PTO-2311: Notice of Defective Paper in Ex Parte Reexamination – Patent Owner…
Read MoreWhat happens if the USPTO fails to issue a determination on a supplemental examination request within 3 months?
According to MPEP 2816, if the USPTO fails to issue a determination on a supplemental examination request within 3 months, the following occurs: “If the Office does not issue a determination on the request within 3 months, supplemental examination is deemed to be concluded.” This means that even if the USPTO doesn’t respond within the…
Read MoreCan the USPTO initiate ex parte reexamination on its own?
Yes, the USPTO can initiate ex parte reexamination on its own. According to MPEP 2212: “It is also possible for the Director of the Office to initiate reexamination on the Director’s own initiative under 37 CFR 1.520.“ This means that the Director of the USPTO has the authority to start an ex parte reexamination process…
Read MoreHow does the USPTO handle prior art that was previously considered during the original examination?
The USPTO has specific guidelines for handling prior art in ex parte reexamination that was previously considered during the original examination. According to MPEP 2244: “If prior art patents or printed publications are presented by the reexamination requester for review in a reexamination proceeding, and the requester has not had the patents or printed publications…
Read MoreHow does the USPTO handle multiple pending reexamination proceedings for the same patent?
The MPEP 2254 provides guidance on handling multiple pending reexamination proceedings for the same patent: Multiple ex parte reexamination proceedings are generally merged into a single proceeding. If an inter partes reexamination is also pending, it takes precedence over ex parte reexaminations. The USPTO may suspend one proceeding in favor of another to promote efficiency.…
Read More