What is required in a request for ex parte reexamination under 35 U.S.C. 302?
A request for ex parte reexamination under 35 U.S.C. 302 must include: An identification of every claim for which reexamination is requested A detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested As stated in the MPEP, “The third sentence of 35 U.S.C.…
Read MoreIs there a specific form for filing a request for ex parte reexamination?
Yes, there is a specific form available for filing a request for ex parte reexamination, although its use is not mandatory. According to MPEP 2296: “A Request for Ex Parte Reexamination Transmittal Form, PTO/SB/57, is available on the USPTO website at www.uspto.gov for use in the filing of a request for reexamination; its use, however,…
Read MoreHow is the filing date assigned to an ex parte reexamination request?
How is the filing date assigned to an ex parte reexamination request? The filing date for an ex parte reexamination request is assigned based on specific criteria. According to MPEP 2226: “The filing date of the request is the date on which the request satisfies all the requirements for the request set forth in 37…
Read MoreHow are corrections to incomplete ex parte reexamination requests processed?
Corrections to incomplete ex parte reexamination requests filed under 35 U.S.C. 302 are processed by the Central Reexamination Unit (CRU). The MPEP states: “All processing of submissions to cure an incomplete request for ex parte reexamination filed under 35 U.S.C. 302 (see MPEP § 2227) is carried out by the Central Reexamination Unit (CRU).” This…
Read MoreIs the identity of the person filing an ex parte reexamination request confidential?
No, the identity of the person filing an ex parte reexamination request is not kept confidential. MPEP 2212 explicitly states: “The name of the person who files the request will not be maintained in confidence.“ This means that when someone files a request for ex parte reexamination, their identity becomes part of the public record.…
Read MoreHow are ex parte reexamination proceedings conducted?
Ex parte reexamination proceedings are conducted according to 35 U.S.C. 305, which states: “reexamination will be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133.” This means that the examination process follows similar procedures to the initial patent examination. Additionally, the MPEP states that “The examination will…
Read MoreWhat is the purpose of a panel review conference in ex parte reexamination?
A panel review conference in ex parte reexamination serves several important purposes: To discuss the issuance of the final Office action To ensure the quality and consistency of the final rejection To provide additional perspectives on the examiner’s decision To confirm or revise the examiner’s preliminary decision to reject and/or allow claims MPEP § 2271…
Read MoreWhat are the requirements for a rejection in an Office action during ex parte reexamination?
In an ex parte reexamination Office action, rejections must meet specific requirements as outlined in MPEP 2262. The key points are: Each rejection must be based on patents or printed publications. Rejections must clearly explain the reasons for rejection, citing specific sections of the references. The examiner must provide a detailed mapping of the claims…
Read MoreWhat happens if no amendments or new claims are proposed during ex parte reexamination?
If no amendments or new claims are proposed during ex parte reexamination, the process concludes with specific actions. According to MPEP 2287: “If no amendments have been proposed and no claims have been added, (A) and (B) above are carried out and (C) through (G) are omitted.” This means that the examiner will prepare a…
Read MoreWhat mailing procedures can be used for ex parte reexamination correspondence?
The MPEP outlines two primary mailing procedures that can be used for most ex parte reexamination correspondence: Certificate of Mailing and Transmission (37 CFR 1.8): This procedure can be used for filing any paper in an ex parte reexamination proceeding, except for the initial request for reexamination and a corrected/replacement request. Priority Mail Express® Mailing…
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