What happens if an appeal brief is not timely filed in ex parte reexamination?
If an appeal brief is not timely filed in ex parte reexamination, the appeal will be dismissed. The MPEP clearly states: “Failure to file the brief and/or the appeal brief fee within the permissible time will result in dismissal of the appeal.” After dismissal, the reexamination prosecution is terminated, and a Notice of Intent to…
Read MoreWhat are the consequences of not completing an ex parte reexamination request within the specified time?
If an incomplete ex parte reexamination request is not completed within the specified time, the consequences can be severe: The request may be treated as a non-filing. The filing fee may be refunded. The requester may lose their filing date. MPEP 2227 states: “If the request is not completed within that time, the request will…
Read MoreWhat are the consequences of failing to provide a proper explanation in an ex parte reexamination request?
Failing to provide a proper explanation in an ex parte reexamination request can result in the following consequences: The requester will receive a “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements” The requester must then either provide the missing explanation or explicitly withdraw the document, combination, or claim lacking explanation The…
Read MoreWhat happens if a requester fails to remedy defects in an ex parte reexamination request?
If a requester fails to remedy defects in an ex parte reexamination request after receiving a notice of non-compliance, the request will not be granted a filing date. The MPEP 2227 states: “If after receiving a ‘Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements,’ the requester does not remedy the defects…
Read MoreWhat are the consequences of failing to correct defective papers in ex parte reexamination?
Failing to correct defective papers in ex parte reexamination can have serious consequences. According to MPEP 2266.02: “If, in response to the notice, the defect still is not corrected, the submission will not be entered. If the failure to comply with the notice results in a patent owner failure to file a timely and appropriate…
Read MoreWhat happens if a requester fails to apply cited prior art to all claims in a reexamination request?
If a requester fails to apply cited prior art to all claims in a reexamination request, those claims not addressed may not be reexamined. The MPEP 2243 states: If the requester fails to apply the art to certain claims, then the requester is not statutorily entitled to reexamination of such claims. If a request fails…
Read MoreWhat are the expectations regarding conduct in ex parte reexamination proceedings?
The USPTO has specific expectations regarding conduct in ex parte reexamination proceedings. As stated in MPEP 2209: “Parties are cautioned that the reexamination statute, regulations, and published examining procedures do not countenance so-called ‘litigation tactics’ in reexamination proceedings. The parties are expected to conduct themselves accordingly.“ This means that participants should adhere to the established…
Read MoreHow does the USPTO handle concurrent proceedings during ex parte reexamination?
The MPEP 2288 addresses the handling of concurrent proceedings during ex parte reexamination. It states: “If concurrent proceedings are pending at the time the ex parte reexamination certificate is to be issued, the USPTO may suspend the issuance of the certificate until the concurrent proceedings are terminated.” This means that if there are other ongoing…
Read MoreHow is a reexamination proceeding concluded with a Reexamination Certificate?
A reexamination proceeding can be concluded with the issuance of a Reexamination Certificate under 37 CFR 1.570(b). According to MPEP 2294, the process involves: Processing the reexamination as set forth in MPEP § 2287 Review by the CRU Supervisory Patent Reexamination Specialist (SPRS) or TC Quality Assurance Specialist (QAS) The MPEP states: “The proceeding may…
Read MoreHow are color photographs or submissions handled in reexamination requests?
Color photographs and similar color submissions in reexamination requests are handled differently from other documents. According to MPEP 2218: “An exception is color photographs and like color submissions, which, if legible as presented, will be retained in an ‘artifact’ file and used as such.” This means that: Color photographs and similar color submissions are not…
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