How does the Official Gazette distinguish between different types of reexamination certificates?
The Official Gazette clearly indicates the type of certificate being issued. According to MPEP 2291: “The notice will clearly indicate the type of certificate, e.g., an ex parte reexamination certificate (for proceedings ordered under 35 U.S.C. 304), an inter partes reexamination certificate, a supplemental examination certificate, or an ex parte reexamination certificate from reexamination ordered…
Read MoreHow is an inter partes reexamination certificate distinguished from an ex parte reexamination certificate in the Official Gazette?
The Official Gazette notice clearly distinguishes an inter partes reexamination certificate from an ex parte reexamination certificate. As stated in MPEP 2691: “The notice of reexamination certificate will clearly state that it is a certificate for a concluded inter partes reexamination proceeding (as opposed to an ex parte reexamination proceeding).” This clear statement ensures that…
Read MoreWhat is reexamination ordered at the Director’s initiative?
Reexamination ordered at the Director’s initiative is a process where the Director of the USPTO can initiate an ex parte reexamination of a patent without a request being filed or a fee being paid. As stated in MPEP 2239: “The Director, at any time during the period of enforceability of a patent, may determine whether…
Read MoreWhat is the difference between filing papers for supplemental examination and ex parte reexamination?
The main differences in filing papers for supplemental examination and ex parte reexamination are: Mailing Address: Supplemental examination papers go to “Mail Stop Supplemental Examination,” while ex parte reexamination papers go to “Mail Stop Ex Parte Reexam.” Marking: Papers should be marked “SUPPLEMENTAL EXAMINATION” or “EX PARTE REEXAMINATION” respectively. Control Number: Each proceeding is assigned…
Read MoreWhat is the difference between reexaminations ordered under 35 U.S.C. 304 and 35 U.S.C. 257?
The MPEP distinguishes between reexaminations ordered under different statutory provisions: 1. Reexaminations ordered under 35 U.S.C. 304: These are standard ex parte reexaminations The certificate states “Reexamination Request” before the filing date and number They continue an established ordinal numbering sequence 2. Reexaminations ordered under 35 U.S.C. 257: These result from a supplemental examination proceeding…
Read MoreWhat are the key differences in ex parte reexamination ordered under 35 U.S.C. 257?
Ex parte reexamination ordered under 35 U.S.C. 257 has several key differences from standard ex parte reexamination: The patent owner cannot file a statement under 37 CFR 1.530. Reexamination can be conducted based on any item of information, not just patents and printed publications. Additional issues beyond those raised by patents and printed publications can…
Read MoreWhat is the difference between handling prior art citations in ex parte and inter partes reexaminations?
While there are similarities in handling prior art citations between ex parte and inter partes reexaminations, there are also key differences. According to MPEP 2602: “If the prior art citation satisfies 37 CFR 1.501 and was submitted prior to an order for reexamination, the cited documents (citations) will be considered in an inter partes reexamination…
Read MoreWho determines if an appeal brief is compliant in ex parte reexamination?
Since May 25, 2010, the Patent Trial and Appeal Board (Board) has the sole responsibility for determining whether appeal briefs filed in ex parte reexamination proceedings comply with 37 CFR 41.37. The MPEP states: “The Board also has the sole responsibility for determining whether corrected briefs comply with 37 CFR 41.37, and addresses any inquiries…
Read MoreWhat is the process for handling dependent claims in ex parte reexamination?
Dependent claims in ex parte reexamination are handled with specific considerations. The MPEP 2287 provides guidance: “If the patent owner presents a number of dependent claims to be examined, all dependent claims may be listed on the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) by using the claim number with the status…
Read MoreHow should an examiner handle dependent claims in ex parte reexamination?
When dealing with dependent claims in ex parte reexamination, examiners must follow specific guidelines as outlined in MPEP 2262: Each dependent claim should be examined for patentability in its own right. If a base claim is rejected, dependent claims must be individually addressed. Reasons for allowance of dependent claims must be provided if the base…
Read More