How often does the Director order reexamination on their own initiative?
According to MPEP 2239, reexamination ordered at the Director’s initiative is uncommon: “A decision to order reexamination at the Director’s initiative is, however, rare. Only in compelling circumstances, after a review of all the facts concerning the patent, would such a decision be made.” This indicates that while the Director has the authority to order…
Read MoreHow is Form PTOL-475 used in ex parte reexamination proceedings?
Form PTOL-475 is the Ex Parte Reexamination Advisory Action used in ex parte reexamination proceedings. The MPEP 2296 indicates that this form is “used where a submission after final rejection is not sufficient to overcome all rejections.” It serves to notify the patent owner or third-party requester that their response to a final Office action…
Read MoreWhat is the purpose of Form PTOL-473 in ex parte reexamination?
Form PTOL-473 is the Ex Parte Reexamination Examiner’s Answer used in ex parte reexamination proceedings. According to MPEP 2296, this form is “used as the Examiner’s Answer in ex parte reexamination.” It serves as the examiner’s response to an appeal brief filed by the patent owner or third-party requester, outlining the examiner’s position on the…
Read MoreWhat is Form PTOL-471 used for in ex parte reexamination?
Form PTOL-471 is used as the Ex Parte Reexamination Communication Transmittal Form in ex parte reexamination proceedings. According to MPEP 2296, this form is “used to transmit Office actions and other communications in ex parte reexamination proceedings.” It serves as a cover sheet for various communications between the USPTO and parties involved in the reexamination…
Read MoreHow is Form PTOL-465 used in ex parte reexamination?
Form PTOL-465 is the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) used in ex parte reexamination proceedings. The MPEP 2296 states that this form is “used to notify the parties that prosecution has been terminated and that a reexamination certificate will be issued.” It serves as an important notification that the reexamination…
Read MoreWhat is the significance of form paragraph 22.04 in reexamination proceedings?
Form paragraph 22.04 plays a crucial role in reexamination proceedings by setting clear expectations for the patent owner’s response to the examiner’s first action. According to MPEP 2260, this paragraph should be included in the first Office action and states: “In order to ensure full consideration of any amendments, affidavits or declarations, or other documents…
Read MoreCan the decision on a petition from denial of reexamination be appealed?
No, the decision on a petition from denial of reexamination cannot be appealed. MPEP 2248 clearly states: “This decision is final and nonappealable. See 35 U.S.C. 303(c) and 37 CFR 1.515(c). No further communication on this matter will be acknowledged or considered.” This means that once the CRU Director makes a decision on the petition,…
Read MoreWhat is the effect of a final court decision on an ex parte reexamination?
A final court decision can have a significant impact on an ex parte reexamination proceeding. According to MPEP 2286: “A final holding of claim invalidity or unenforceability (after all appeals), however, is controlling on the Office. In such cases, a substantial new question of patentability would not be present as to the claims held invalid…
Read MoreWhat is the process for filing a notice of appeal in ex parte reexamination?
The process for filing a notice of appeal in ex parte reexamination is outlined in MPEP 2273. Here are the key steps: File the notice of appeal: Submit the notice of appeal to the USPTO, accompanied by the fee set forth in 37 CFR 41.20(b)(1). Include required parts: The notice of appeal should include: A…
Read MoreHow do I file papers in an ex parte reexamination resulting from a supplemental examination?
When filing papers in an ex parte reexamination resulting from a supplemental examination, follow these guidelines as per MPEP 2806: Use the USPTO’s Patent Electronic Filing System-Web (EFS-Web) or Patent Center for electronic filing. For paper filings, send documents to: Mail Stop Ex Parte Reexam, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. Include…
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