Are automatic extensions available in inter partes reexamination?
No, automatic extensions are not available in inter partes reexamination proceedings. This differs from ex parte reexamination, where an automatic two-month extension is granted for the first response to a final Office action. The MPEP clarifies: “The automatic extension given in ex parte reexamination does not apply to the first response to an Action Closing…
Read MoreHow does the automatic two-month extension work for responses to final rejections in reexamination?
In ex parte reexamination proceedings, an automatic two-month extension is granted for the first response to a final rejection. Key points include: The filing of a timely first response to a final rejection is construed as including a request to extend the shortened statutory period for an additional two months. This applies even if the…
Read MoreWho has the authority to order reexamination at the Director’s initiative?
The authority to order reexamination at the Director’s initiative is delegated to specific high-ranking officials within the USPTO. According to MPEP 2239: “Authority to order reexamination at the Director’s initiative has been delegated to the Deputy Commissioner for Patents who oversees the Office of Petitions. A decision to order reexamination at the Director’s initiative may…
Read MoreHow should prior art be applied in an ex parte reexamination request?
When applying prior art in an ex parte reexamination request, the requester must: Provide a detailed explanation of how each cited prior art reference applies to each claim for which reexamination is requested Present the explanation in a clear and organized manner, preferably using claim charts For obviousness rejections, provide at least one basis for…
Read MoreHow does the term “applicant” apply in reexamination under 35 U.S.C. 257?
In ex parte reexamination ordered under 35 U.S.C. 257, the term “applicant” is interpreted differently than in standard patent applications. According to MPEP 2818.01: “Any reference to ‘applicant’ in 37 CFR 1.56(b) will be read as ‘patent owner’ in the context of a supplemental examination proceeding and any resulting ex parte reexamination proceeding under 35…
Read MoreAre there any restrictions on when a patent owner can appeal in ex parte reexamination?
Yes, there are restrictions on when a patent owner can appeal in ex parte reexamination. The MPEP 2273 specifies that “The patent owner may appeal to the Board only after the final rejection of the claims.” This means that a patent owner cannot appeal intermediate office actions but must wait until a final rejection is…
Read MoreWhat are the rules for extending time to file an appeal brief or reply brief in reexamination?
The rules for extending time to file an appeal brief or reply brief in ex parte reexamination are as follows: Extensions are governed by 37 CFR 1.550(c). For patent owner requested or Director ordered reexaminations, a “no cause” extension of up to two months from the time permitted to file the brief can be requested.…
Read MoreHow can a third party anonymously request ex parte reexamination?
The MPEP 2210 provides guidance on how a third party can anonymously request ex parte reexamination: “If a third party requester desires anonymity, the request for ex parte reexamination can be filed by an attorney or agent representing the third party requester. The attorney or agent should not be the attorney or agent of record…
Read MoreHow did the America Invents Act (AIA) affect ex parte reexamination?
The Leahy-Smith America Invents Act (AIA), enacted on September 16, 2012, made several significant changes to ex parte reexamination: Expanded the scope of citable information to include patent owner statements filed in federal court or USPTO proceedings. Introduced estoppel provisions related to inter partes review and post-grant review. Established a first-inventor-to-file prior art regime, replacing…
Read MoreWhen can amendments be filed in ex parte reexamination under 35 U.S.C. 257?
In ex parte reexamination ordered under 35 U.S.C. 257, amendments cannot be filed immediately. According to MPEP 2818.01: “No amendment in an ex parte reexamination proceeding ordered under 35 U.S.C. 257 may be filed until after the mailing of a first Office action on the merits.“ This restriction ensures that the initial examination is based…
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