How does the USPTO handle amendments or new claims in copending reexamination or reissue proceedings?
When deciding a request for reexamination, the USPTO does not consider or comment on amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent under consideration. As stated in MPEP 2243: Amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent to be reexamined will…
Read MoreWhat forms are used in ex parte reexamination proceedings?
The USPTO uses several specific forms for ex parte reexamination actions and processing. Some key forms include: PTOL-471D: Order Denying Request For Ex Parte Reexamination PTOL-471G: Order Granting Request For Ex Parte Reexamination PTOL-466: Office Action in Ex Parte Reexamination PTOL-469: Notice of Intent to Issue Ex Parte Reexamination Certificate As stated in MPEP 2296,…
Read MoreCan the USPTO examine claims not requested for reexamination under 35 U.S.C. 302?
Yes, the USPTO can examine claims not specifically requested for reexamination under 35 U.S.C. 302, but this is at the discretion of the Office. According to MPEP 2243: The decision to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302 lies within the sole discretion of the Office, to be…
Read MoreHow does the USPTO handle ex parte reexamination when all claims are held invalid by a court?
When a court issues a final decision holding all claims invalid or unenforceable in a patent undergoing ex parte reexamination, the USPTO has specific procedures to follow. According to MPEP 2286: “If all of the claims being examined in the reexamination proceeding are finally held invalid or unenforceable, the reexamination will be vacated by the…
Read MoreWhat happens if an Office employee identifies a patent that may warrant reexamination?
If a USPTO employee identifies a patent that they believe clearly warrants reexamination, there is a specific internal process to follow. According to MPEP 2239: “If an Office employee becomes aware of an unusual fact situation in a patent which the employee considers to clearly warrant reexamination, a memorandum setting forth these facts (including a…
Read MoreHow does the USPTO handle correspondence with patent owners in ex parte reexamination proceedings?
The USPTO has specific guidelines for handling correspondence with patent owners during ex parte reexamination proceedings: Correspondence Address: The MPEP states, “Communications from the U.S. Patent and Trademark Office to the patent owner will be directed to the correspondence address for the patent being reexamined. See 37 CFR 1.33(c).” No Double Correspondence: “Double correspondence with…
Read MoreAre copies of U.S. patents and patent application publications required in reexamination requests?
Generally, copies of U.S. patents and U.S. patent application publications are not required to be submitted with reexamination requests. The MPEP 2218 states: “The requirement for the submission of a copy of every patent or printed publication relied upon or referred to in the request, pursuant to 37 CFR 1.510(b)(3), is waived to the extent…
Read MoreWhat happens to untimely submissions in ex parte reexamination?
Untimely submissions in ex parte reexamination are generally not considered and may be returned to the sender. MPEP 2252 states: “Untimely submissions will ordinarily not be considered. Untimely submissions, other than untimely papers filed by the patent owner after the period set for response, will not be placed of record in the reexamination file but…
Read MoreWhat types of persons typically file ex parte reexamination requests?
MPEP 2212 provides a non-exhaustive list of persons who are likely to use the ex parte reexamination process under 35 U.S.C. 302: Patentees Licensees Potential licensees Attorneys without identification of their real client in interest Infringers Potential exporters Patent litigants Interference applicants International Trade Commission respondents This diverse list reflects the various stakeholders in the…
Read MoreAre there any restrictions on the timing of interviews in ex parte reexamination?
Yes, there are specific restrictions on the timing of interviews in ex parte reexamination proceedings. The MPEP 2281 states: “Interviews prior to the first Office action in ex parte reexamination proceedings are prohibited.“ This restriction is in place to ensure that: The examiner has had a chance to review the case and form initial opinions…
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