How can I electronically file an ex parte reexamination request?
As of July 9, 2007, the USPTO began accepting ex parte reexamination requests and subsequent correspondence through its Web-based electronic filing system (EFS-Web). The MPEP states: “The Office has updated the Legal Framework for Patent Electronic System to set forth that requests for reexamination, and proper reexamination ‘follow-on’ papers (see MPEP § 2267) are permitted…
Read MoreWhat is the significance of the effective date on an ex parte reexamination certificate?
The effective date on an ex parte reexamination certificate is significant for several reasons: It marks the date when the certificate becomes legally effective It determines when the changes to the patent claims take effect It impacts the enforcement of patent rights for the modified claims MPEP 2290 states: “The certificate is titled ‘Ex Parte…
Read MoreWhat is the duty of disclosure in ex parte reexamination proceedings?
The duty of disclosure in ex parte reexamination proceedings filed under 35 U.S.C. 302 applies to the patent owner, attorneys or agents representing the patent owner, and individuals substantively involved on behalf of the patent owner. This duty requires disclosing all information known to be material to patentability. As stated in MPEP 2280: “The continuing…
Read MoreHow does the duty of disclosure differ between ex parte reexamination under 35 U.S.C. 302 and 35 U.S.C. 257?
The duty of disclosure differs between ex parte reexamination proceedings under 35 U.S.C. 302 and 35 U.S.C. 257. MPEP 2280 explains: “The material to patentability standard set forth in 37 CFR 1.56(b), which is applicable to patent applications, and not the standard set forth in 37 CFR 1.555(b), applies in ex parte reexamination proceedings ordered…
Read MoreHow should an examiner address drawings in an ex parte reexamination Office action?
When addressing drawings in an ex parte reexamination Office action, examiners must follow specific guidelines as outlined in MPEP 2262: Objections to drawings are not permitted unless related to amendments made during reexamination. If new drawings are filed with amendments, they may be objected to. Drawings cannot be canceled in reexamination. The MPEP states: “Drawings…
Read MoreHow are drawing amendments handled in ex parte reexamination?
How are drawing amendments handled in ex parte reexamination? Drawing amendments in ex parte reexamination must follow specific guidelines as outlined in MPEP 2250: Amendments to the drawings must be explained in detail in accordance with 37 CFR 1.530(d)(3). New drawings must be filed with the changes shown in red for approval by the examiner.…
Read MoreCan double patenting rejections be made in ex parte reexamination?
Can double patenting rejections be made in ex parte reexamination? Yes, double patenting rejections can be made in ex parte reexamination, but with specific conditions: Double patenting rejections are permitted if they are based on patents or printed publications. These rejections must raise a substantial new question of patentability. The MPEP 2258 states: “Double patenting…
Read MoreWhat types of documents are processed during supplemental examination?
The MPEP 2812 provides information on the types of documents processed during supplemental examination: “All processing of requests for supplemental examination and of other papers filed in a supplemental examination proceeding and in any resulting ex parte reexamination proceeding will be performed by the staff of the Central Reexamination Unit.” Based on this statement, the…
Read MoreWhat documents are considered prior to examination in ex parte reexamination?
According to MPEP 2252, only specific documents are considered prior to examination in ex parte reexamination. The MPEP states: “No submissions other than the statement pursuant to § 1.530 and the reply by the ex parte reexamination requester pursuant to § 1.535 will be considered prior to examination.” This means that only the patent owner’s…
Read MoreHow should patent owners document interviews in ex parte reexamination proceedings?
Patent owners are required to document interviews in ex parte reexamination proceedings as follows: A complete written statement of the reasons presented at the interview must be filed. The statement should explain why the interview warrants favorable action. It must be filed either as a separate paper within one month of the interview or as…
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