What information is included in an Ex Parte Reexamination Certificate?
An Ex Parte Reexamination Certificate contains several key pieces of information about the reexamined patent. According to the MPEP, the certificate includes: The title “Ex Parte Reexamination Certificate” An ordinal number (e.g., “235th”) The original patent number followed by a two-character kind code The date of issuance The title of the invention The name of…
Read MoreHow are new and amended claims presented in an Ex Parte Reexamination Certificate?
The Ex Parte Reexamination Certificate has a specific format for presenting new and amended claims. The MPEP states: Any new claims will be printed in the certificate completely in italics, and any amended claims will be printed in the certificate with italics and bracketing indicating the amendments thereto. This formatting helps to clearly distinguish between…
Read MoreWhat is the time limit for filing an appeal in ex parte reexamination?
In ex parte reexamination, the time limit for filing an appeal is set by MPEP 2273, which states: “The appeal need not be filed within the two-month period for response to the action from which the appeal was taken, as is required by 37 CFR 1.134 and 37 CFR 1.136 for an amendment to overcome…
Read MoreWhat are the requirements for amendments in ex parte reexamination?
What are the requirements for amendments in ex parte reexamination? In ex parte reexamination, amendments must meet specific requirements as outlined in MPEP 2250: Amendments must be made relative to the patent specification and claims as they exist at the time of the reexamination order. All amendments must be made without adding new matter. Amendments…
Read MoreWhen is an ex parte reexamination ordered after supplemental examination?
An ex parte reexamination is ordered after supplemental examination when the supplemental examination certificate indicates that a Substantial New Question of patentability (SNQ) is raised. According to MPEP 2818: “If the supplemental examination certificate indicates that a SNQ is raised, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257.” This reexamination…
Read MoreWhat forms are used for advisory actions in ex parte reexamination?
The USPTO uses specific forms for advisory actions in ex parte reexamination, depending on the stage of the proceedings. According to MPEP 2296, there are two main forms: PTOL-467: Ex Parte Reexamination Advisory Action Before the Filing of an Appeal Brief PTOL-467A: Ex Parte Reexamination Advisory Action After the Filing of an Appeal Brief These…
Read MoreWhat are the estoppel provisions related to ex parte reexamination requests?
The estoppel provisions related to ex parte reexamination requests are based on inter partes review and post-grant review proceedings. According to MPEP 2210: “The estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) are based on inter partes review and post grant review, respectively, and they only prohibit the filing of a subsequent…
Read MoreHow does entity status affect ex parte reexamination fees?
The entity status of the requester affects the fees for ex parte reexamination requests under 35 U.S.C. 302. According to the MPEP: “Pursuant to 37 CFR 1.20(c)(1) and (c)(2), there are different filing fees for a large entity, a small entity and a micro entity, when filing a request for ex parte reexamination under 35…
Read MoreCan the scope of patent claims be enlarged during ex parte reexamination?
The scope of patent claims cannot be enlarged during ex parte reexamination. The MPEP clearly states: “35 U.S.C. 305 states that ‘no proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding….’” A claim is considered to enlarge the scope if it is broader…
Read MoreAre English translations required for non-English prior art in reexamination requests?
Yes, English translations are required for non-English prior art submitted with reexamination requests. According to MPEP 2218: “If any of the documents are not in the English language, an English language translation of all necessary and pertinent parts is also required. See MPEP § 609.04(a), subsection III. An English language summary or abstract of a…
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