What claims are considered when deciding a request for ex parte reexamination under 35 U.S.C. 302?
When deciding a request for ex parte reexamination under 35 U.S.C. 302, the claims considered are those in effect at the time of the determination. As stated in the MPEP: The claims of the patent in effect at the time of the determination will be the basis for deciding whether “a substantial new question of…
Read MoreCan claim scope be enlarged during ex parte reexamination?
No, the scope of a claim cannot be enlarged during ex parte reexamination. This is one of the basic characteristics of ex parte reexamination as stated in MPEP 2209: “(G) The scope of a claim cannot be enlarged by amendment;“ This limitation ensures that patent owners cannot use the reexamination process to broaden their patent…
Read MoreHow are claims interpreted in ex parte reexamination?
How are claims interpreted in ex parte reexamination? In ex parte reexamination, claims are interpreted using the broadest reasonable interpretation (BRI) standard: The MPEP 2258 states: “Claims in reexamination proceedings are to be given their broadest reasonable interpretation consistent with the specification.” This interpretation is applied in the same manner as in original examination. The…
Read MoreHow are claims construed in ex parte reexamination?
In ex parte reexamination, claims are given the broadest reasonable interpretation consistent with the specification. The MPEP states: “During reexamination ordered under 35 U.S.C. 304, and also during reexamination ordered under 35 U.S.C. 257, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the…
Read MoreWhat is the process for handling claim amendments in ex parte reexamination?
The process for handling claim amendments in ex parte reexamination is outlined in MPEP 2262: Amendments must be made relative to the patent claims. New claims must be numbered consecutively starting with the number next following the highest numbered patent claim. All amendments must be accompanied by an explanation of support in the disclosure. Amendments…
Read MoreHow are citations processed during an ex parte reexamination proceeding?
During an ex parte reexamination proceeding, the processing of citations is governed by 37 CFR 1.502, as referenced in MPEP 2202. The key points are: Citations by the patent owner under 37 CFR 1.555 and by an ex parte reexamination requester under 37 CFR 1.510 or 1.535 are entered into the reexamination file during the…
Read MoreCan the title or abstract of a patent be changed during reexamination?
While it’s not common, the title or abstract of a patent can be changed during reexamination under certain circumstances. However, this process requires specific procedures and timing considerations. MPEP 2287 states: “Normally the title of the invention or the abstract will not need to be changed during reexamination. If a change to the title or…
Read MoreHow can a patent owner change the attorney or agent for correspondence in a supplemental examination?
To change the attorney or agent for correspondence in a supplemental examination, a new power of attorney must be filed in two places: The file of the patent for which supplemental examination is requested The file of the supplemental examination proceeding, or if reexamination is ordered, in the resulting ex parte reexamination proceeding The MPEP…
Read MoreHow can a patent owner challenge the decision to grant an ex parte reexamination?
A patent owner has several options to challenge the decision to grant an ex parte reexamination based on a substantial new question of patentability (SNQ): Request reconsideration in the patent owner’s statement under 37 CFR 1.530. Present arguments in the response to the Office action under 37 CFR 1.111(b). Appeal to the Patent Trial and…
Read MoreWhat is a Certificate of Service in patent reexamination?
A Certificate of Service in patent reexamination is a document that must be attached to a request for ex parte reexamination when the requester is not the patent owner. It certifies that a copy of the request has been served to the patent owner. According to MPEP 2220, “The third party requester must set forth…
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