Where should submissions for changing power of attorney or correspondence address be sent after a supplemental examination request?
After a request for supplemental examination has been filed, or after any ex parte reexamination resulting from the supplemental examination has been ordered, submissions to change the power of attorney or correspondence address should be addressed as specified in MPEP § 2806. The MPEP states: “After a request for supplemental examination has been filed, and/or…
Read MoreCan new claims be added during ex parte reexamination?
Can new claims be added during ex parte reexamination? Yes, new claims can be added during ex parte reexamination, subject to certain conditions. According to MPEP 2250: New claims must be numbered consecutively beginning with the number next following the highest numbered patent claim. New claims must be completely underlined. New claims must not contain…
Read MoreHow does the examiner determine whether to issue an ACP or a final rejection in ex parte reexamination?
The examiner’s decision to issue an Action Closing Prosecution (ACP) or a final rejection in ex parte reexamination depends on specific criteria outlined in the MPEP. According to MPEP 2260: “If the patent owner’s response overcomes all rejections and objections, a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) should be issued. If…
Read MoreHow does 37 CFR 1.104 apply to reexamination proceedings?
37 CFR 1.104, which outlines the nature of examination, applies to reexamination proceedings in the same way it applies to the examination of patent applications. As stated in MPEP 2260: “As is true in the examination of applications, 37 CFR 1.104 (Nature of examination) applies to the examination of reexamination proceedings.” This means that the…
Read MoreHow does the Patent and Trademark Office Authorization Act of 2002 affect ex parte reexamination?
The Patent and Trademark Office Authorization Act of 2002 significantly impacted ex parte reexamination by allowing a substantial new question of patentability to be raised based on previously cited or considered art. The MPEP 2216 explains: “After the enactment of the Patent and Trademark Office Authorization Act of 2002 (‘the 2002 Act’), a substantial new…
Read MoreHow does the USPTO handle concurrent proceedings for reissue applications?
How does the USPTO handle concurrent proceedings for reissue applications? The USPTO has specific procedures for handling concurrent proceedings involving reissue applications. According to MPEP 1442: “Where a reissue application and an ex parte reexamination proceeding on which an order pursuant to 37 CFR 1.525 has been mailed are copending, the reissue application is placed…
Read MoreCan time periods for filing petitions or replies be extended in the appeal process?
The time periods set forth in 37 CFR 41.40 for filing petitions or replies in the appeal process have specific extension rules: These time periods are not extendable under 37 CFR 1.136(a). They are extendable under 37 CFR 1.136(b) for patent applications. For ex parte reexamination proceedings, extensions are possible under 37 CFR 1.550(c). The…
Read MoreWhat happens after the Patent Trial and Appeal Board (PTAB) makes a decision?
After the Patent Trial and Appeal Board (PTAB) makes a decision, the following steps occur: A copy of the decision is provided to the appellant and placed in the Image File Wrapper (IFW). The application is electronically returned to the Technology Center with an updated status reflecting the Board’s decision. Jurisdiction over the application or…
Read MoreHow can a patent owner seek judicial review of an ex parte reexamination decision?
According to MPEP 1216, a patent owner dissatisfied with the final written decision of the Patent Trial and Appeal Board (PTAB) in an ex parte reexamination has only one option for judicial review: “A patent owner who is not satisfied with the final written decision of the Board in an ex parte reexamination may seek…
Read MoreNo more FAQs can be generated
All relevant information from MPEP 2227 – Incomplete Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 has been covered in the previously generated FAQs. The section’s content has been exhaustively addressed, and no additional meaningful questions can be formulated without repetition. To learn more: ex parte reexamination incomplete request MPEP 2227
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