What are the requirements for a third-party requester’s reply in ex parte reexamination?
According to MPEP 2254, a third-party requester has specific requirements for filing a reply in ex parte reexamination: The reply must be filed within two months of the date of service of the patent owner’s statement. The reply is limited to issues raised in the patent owner’s statement. No new prior art may be introduced…
Read MoreWhat can a third party requester include in their reply during ex parte reexamination?
According to MPEP 2251, a third party requester’s reply in an ex parte reexamination can be quite comprehensive. The MPEP states: “The reply need not be limited to the issues raised in the statement. The reply may include additional prior art patents and printed publications and may raise any issue appropriate for reexamination.” This means…
Read MoreCan third-party requesters participate in ex parte reexamination interviews?
No, third-party requesters are not permitted to participate in ex parte reexamination interviews. MPEP 2281 clearly states: “Requests that reexamination requesters participate in interviews with examiners will not be granted.“ This restriction is in place to maintain the ex parte nature of the reexamination proceedings. Only the patent owner and/or their representative can participate in…
Read MoreHow are third-party requesters notified of Office actions in ex parte reexamination?
In ex parte reexamination proceedings involving third-party requesters, the USPTO ensures that they receive copies of all Office actions. According to MPEP 2264: “All actions in a third party requester ex parte reexamination will have a copy mailed to the third party requester. A transmittal form PTOL-465 must be used in providing the third party…
Read MoreCan third-party requesters participate in appeals during ex parte reexamination?
No, third-party requesters cannot participate in appeals during ex parte reexamination. The MPEP 2273 explicitly states: “A third party requester may not appeal, and may not participate in the patent owner’s appeal.” This limitation is a key feature of ex parte reexamination proceedings, distinguishing them from inter partes reviews where third parties have more extensive…
Read MoreCan a third party requester appeal a decision in an ex parte reexamination?
No, a third party requester in an ex parte reexamination cannot seek judicial review of a decision. The MPEP 2279 clearly states: “A third party requester of an ex parte reexamination may not seek judicial review.” This principle is supported by case law, specifically Yuasa Battery v. Comm’r, 3 USPQ2d 1143 (D.D.C. 1987). However, it’s…
Read MoreAre third party requesters allowed to file additional papers after their reply in ex parte reexamination?
No, third party requesters are not permitted to file additional papers after their reply to the patent owner’s statement in an ex parte reexamination. MPEP 2251 clearly states: “The third party requester is not permitted to file any further papers after his or her reply to the patent owner’s statement. Any further papers will not…
Read MoreHow does the extension of time practice differ for third-party requested reexaminations?
The extension of time practice for third-party requested ex parte reexaminations differs from patent owner requested or Director ordered reexaminations in several ways: “No cause” extensions for up to two months are not available. All requests must be filed on or before the day on which action by the patent owner is due. All requests…
Read MoreCan third parties participate in ex parte reexamination proceedings?
Third party participation in ex parte reexamination proceedings is limited. According to the MPEP, “The active participation of the ex parte reexamination requester ends with the reply pursuant to § 1.535, and no further submissions on behalf of the reexamination requester will be acknowledged or considered.“ After the reexamination is ordered, third party submissions are…
Read MoreCan a patent owner file papers on behalf of a third party in reexamination?
No, patent owners are explicitly prohibited from filing papers on behalf of third parties in ex parte reexamination proceedings. The MPEP clearly states: “The patent owner in an ex parte reexamination proceeding must not file papers on behalf of a third party. 37 CFR 1.550(g).“ If a third party paper accompanies or is submitted as…
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