What happens if a Substantial New Question of Patentability (SNQ) is raised?
If the supplemental examination certificate states that a Substantial New Question of Patentability (SNQ) is raised, an ex parte reexamination of the patent will be ordered. As stated in MPEP 2817: “If the supplemental examination certificate states that a SNQ is raised by one or more of the items of information submitted as part of…
Read MoreWhat is a “substantial new question of patentability” in ex parte reexamination?
A “substantial new question of patentability” is a key requirement for initiating an ex parte reexamination. As stated in MPEP 2209: “The Office initially determines if ‘a substantial new question of patentability’ (35 U.S.C. 303(a)) is presented. If such a new question has been presented, reexamination will be ordered.“ This requirement ensures that the USPTO…
Read MoreWhat are the requirements for submitting copies of prior art in ex parte reexamination?
In ex parte reexamination, there are specific requirements for submitting copies of prior art. According to MPEP 2256: “37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the…
Read MoreWhat are the differences between “streamlined” and “non-streamlined” ex parte reexamination requests?
The main differences between “streamlined” and “non-streamlined” ex parte reexamination requests are: Filing Fee: Streamlined requests: Lower fee under 37 CFR 1.20(c)(1) Non-streamlined requests: Higher fee under 37 CFR 1.20(c)(2) Page Limit: Streamlined requests: 40 or fewer pages Non-streamlined requests: More than 40 pages Formatting Requirements: Streamlined requests: Must meet specific formatting requirements (e.g., line…
Read MoreWhat is the ‘streamlined’ request option for ex parte reexamination?
The ‘streamlined’ request option for ex parte reexamination, introduced on January 16, 2018, allows for a reduced filing fee under certain conditions. According to the MPEP: “Requests for ex parte reexamination under 35 U.S.C. 302 filed on or after January 16, 2018 may be filed with a reduced filing fee set forth in 37 CFR…
Read MoreWhat are the requirements for a “streamlined” ex parte reexamination request?
A “streamlined” ex parte reexamination request under 37 CFR 1.20(c)(1) must meet the following requirements: Have forty (40) or fewer pages Use double-spaced or one-and-a-half spaced lines Use a non-script type font such as Arial, Times New Roman, or Courier Use a font size no smaller than 12 point Have margins that conform to the…
Read MoreHow does the certification regarding statutory estoppel affect ex parte reexamination requests?
The certification regarding statutory estoppel is a requirement for third-party requesters filing ex parte reexamination requests. As stated in the MPEP: “37 CFR 1.510(b)(6) requires that the request contain a certification by the third party requester that the statutory estoppel provisions of inter partes review and post grant review do not bar the third party…
Read MoreWhat is the statutory basis for ex parte reexamination of patents?
The statutory basis for ex parte reexamination of patents was established on July 1, 1981, through sections 301-307 of title 35, United States Code, added by Public Law 96-517. The MPEP states: “Statutory basis for citation of prior art patents or printed publications in patent files and ex parte reexamination of patents became available on…
Read MoreHow does the “special dispatch” requirement affect prior art submissions in ex parte reexamination?
The “special dispatch” requirement, as mandated by 35 U.S.C. 305, significantly affects prior art submissions in ex parte reexamination, especially after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) has been mailed. The MPEP explains: “To automatically delay prosecution by pulling the proceeding from that process when such a submission has been…
Read MoreWhat is the importance of special dispatch in ex parte reexamination proceedings?
Special dispatch is a crucial aspect of ex parte reexamination proceedings, as mandated by law. The MPEP states: Pursuant to 35 U.S.C. 305, all ex parte reexamination proceedings must be conducted with special dispatch within the Office. This applies to the transfer of reexamination proceedings. This requirement ensures that reexamination proceedings, including any transfers, are…
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