What fees are associated with supplemental examination?
The USPTO charges fees for supplemental examination, as authorized by statute. The MPEP states: “35 U.S.C. 257(d)(1) provides the Director with authority to establish fees for filing a request for supplemental examination and for considering each item of information submitted with the request.” Additionally, if an ex parte reexamination is ordered as a result of…
Read MoreCan the time for filing an appeal brief be extended in ex parte reexamination?
Yes, the time for filing an appeal brief in ex parte reexamination can be extended under certain circumstances. The MPEP states: “In the event that the patent owner finds that he or she is unable to file a brief within the time allowed by the rules, he or she may file a request with the…
Read MoreWhat types of papers are typically expunged in reexamination proceedings?
Several types of papers are typically expunged in reexamination proceedings, including: Premature responses by patent owners (MPEP 2267) Papers submitted on behalf of third parties Untimely responses by requesters Additional responses by requesters after their participation has ended Third-party submissions that don’t meet specific criteria For example, the MPEP states: “Where the patent owner is…
Read MoreHow are excess claim fees handled in ex parte reexamination requests?
Excess claim fees may apply to ex parte reexamination requests under certain circumstances: When the request is filed by the patent owner The request includes a proposed amendment in accordance with 37 CFR 1.530 The MPEP states: “In addition, regardless of which filing fee is submitted, if the request under 35 U.S.C. 302 is filed…
Read MoreAre there exceptions to who conducts a reexamination?
Yes, there are exceptions to who conducts a reexamination. According to MPEP § 2255: “However, if a petition under 37 CFR 1.515(c) is granted after an examiner’s determination that found the request did not raise any SNQ, the reexamination will generally be conducted by another examiner.” This means that if a petition challenging the examiner’s…
Read MoreCan examiners consider prior art not cited in the reexamination request?
Yes, examiners are not limited to the prior art cited in the reexamination request. According to MPEP 2244: “The examiner is not limited in making the determination based on the patents and printed publications relied on in the request. The examiner can find ‘a substantial new question of patentability’ based upon the prior art patents…
Read MoreWhat is the significance of the examiner’s amendment in ex parte reexamination?
The examiner’s amendment plays a crucial role in ex parte reexamination, particularly for title changes. According to MPEP 2287: “An examiner’s amendment can be prepared to change the title of the patent to correspond to the invention as reexamined.” This amendment ensures that the title accurately reflects the subject matter of the patent after reexamination.…
Read MoreWhat is the role of the examiner in ex parte reexamination?
What is the role of the examiner in ex parte reexamination? The examiner plays a crucial role in ex parte reexamination, with responsibilities including: Conducting a thorough search of the prior art relevant to the patent under reexamination. Examining the patent claims in light of the cited prior art and any newly discovered references. Making…
Read MoreHow does an examiner notify parties of defective papers in ex parte reexamination?
In ex parte reexamination, examiners use specific forms to notify parties of defective papers: Form PTOL-475: Used for third-party requested ex parte reexaminations Form PTO-2311: Used for patent owner requested ex parte reexaminations (including reexaminations ordered under 35 U.S.C. 257) or Director ordered ex parte reexaminations The MPEP states: “Where a submission made prior to…
Read MoreHow does the examiner consider the patent owner’s statement in ex parte reexamination?
The examiner carefully considers the patent owner’s statement in ex parte reexamination as part of the overall examination process. According to MPEP 2252: “The examiner must consider all of the patent owner’s arguments in the statement, regardless of whether or not an amendment is made to any claim.” This means that the examiner will: Review…
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