How are defective responses handled after final rejection in ex parte reexamination?
The handling of defective responses after final rejection in ex parte reexamination differs from those filed before final rejection. According to MPEP 2266.02: “If a defective (informal) response to an examiner’s action is filed after final rejection (before the expiration of the permissible response period), the examiner should not issue a form PTOL-475 or form…
Read MoreWhat constitutes a defective paper in ex parte reexamination?
A defective paper in ex parte reexamination, also known as an “informal submission,” can have various defects even if the substance is complete. The MPEP 2266.02 lists several examples of defects: Lack of proof of service Unsigned paper Paper signed by a non-practitioner who is not of record Patent owner’s amendment not complying with 37…
Read MoreWhat happens if a notice of appeal is defective in ex parte reexamination?
If a notice of appeal is defective in ex parte reexamination, the patent owner will be notified and given an opportunity to cure the defect(s). The MPEP 2273 states: “Where a notice of appeal is defective, the patent owner will be so notified. In third party requested reexaminations, Form PTOL-475 will be used to provide…
Read MoreHow is the date of patentability of amended or new claims determined in ex parte reexamination?
How is the date of patentability of amended or new claims determined in ex parte reexamination? In ex parte reexamination, the date of patentability for amended or new claims is determined based on the filing date of the request for reexamination. The MPEP provides clear guidance: “The date of patentability of an amended or new…
Read MoreHow is correspondence handled for a requester in ex parte reexamination?
Correspondence handling for a requester in ex parte reexamination depends on whether the requester is the patent owner or not. According to MPEP 2213: For a requester that is not the patent owner: “All correspondence for a requester that is not the patent owner is addressed to the representative of the requester, unless a specific…
Read MoreHow can patent drawings be corrected during ex parte reexamination?
Patent drawings can be corrected during ex parte reexamination by following specific procedures outlined in 37 CFR 1.530(d)(3). The process involves: Submitting a sketch on a separate paper showing proposed changes in red for examiner approval. Upon approval, filing new sheets of drawings including the changes and complying with 37 CFR 1.84. Identifying amended figures…
Read MoreHow should information about copending reexamination proceedings be provided in a reexamination request?
When providing information about copending reexamination proceedings in a reexamination request, it’s important to follow the guidelines set by the USPTO. According to MPEP 2218: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may…
Read MoreWhat should be included in the examiner’s first action in a reexamination proceeding?
The examiner’s first action in a reexamination proceeding should include several key elements: A clear establishment of the issues between the examiner and the patent owner regarding the patent. A cautionary statement to the patent owner about the need for a complete response. A warning that the next action is expected to be a final…
Read MoreWhat happens if I don’t pay the full fee for an ex parte reexamination request?
What happens if I don’t pay the full fee for an ex parte reexamination request? Failure to pay the full fee for an ex parte reexamination request can result in the request being treated as not having been filed. According to MPEP 2215: “If the request for ex parte reexamination is filed by the patent…
Read MoreWhat are the consequences of not filing a timely notice of appeal in ex parte reexamination?
If a patent owner fails to file a timely notice of appeal or does not pay the appropriate appeal fee in ex parte reexamination, there are significant consequences. According to MPEP 2273, “If the patent owner does not timely file a notice of appeal and/or does not timely file the appropriate appeal fee, the patent…
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