Can untimely papers returned or expunged during ex parte reexamination be resubmitted later?
Yes, untimely papers that were initially returned or expunged during the ex parte reexamination process can potentially be resubmitted later in the proceedings. MPEP 2225 provides guidance on this matter: “If the submission of the returned/expunged papers is appropriate later in the proceedings, they may be filed and accepted by the Office at that time.”…
Read MoreAre there any restrictions on who can file for ex parte reexamination?
Yes, there is one specific restriction mentioned in MPEP 2212: “The only ‘person’ who is barred from filing a request for ex parte reexamination of a patent under 35 U.S.C. 302 is one who is barred from doing so by the estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) based on inter…
Read MoreWhat are the time periods for response in ex parte reexamination proceedings?
In ex parte reexamination proceedings, specific time periods are set for responses. According to MPEP 2254: “The time periods set for response are one month (30 days) from the mailing date of the Office action for the patent owner, and one month (30 days) from the date of service for any third party requester.“ However,…
Read MoreWhat information must be included in a Certificate of Service for patent reexamination?
A Certificate of Service for patent reexamination must include specific information to be valid. According to MPEP 2220: The name and address of the party served (i.e., the patent owner) The method of service used The MPEP states: “The third party requester must set forth on the certificate of service the name and address of…
Read MoreWhat documents are required when submitting a request for reexamination of a patent?
When submitting a request for reexamination of a patent, the following documents are required: A copy of the printed patent in double column format, including the front page Any disclaimer, certificate of correction, or reexamination certificate issued for the patent Any relevant federal court decision, complaint in a pending civil action, or interference or derivation…
Read MoreWho can represent a requester in an ex parte reexamination?
A requester in an ex parte reexamination can be represented by an attorney or agent who must be a registered patent practitioner. According to MPEP 2213, “an attorney or agent representing a requester must be a registered patent practitioner.” The representative can act under either: A power of attorney from the client (requester) In a…
Read MoreWhat information must an attorney or agent provide to act in a representative capacity?
To act in a representative capacity under 37 CFR 1.34 during an ex parte reexamination, an attorney or agent must provide specific information. According to MPEP 2213: “In order to act in a representative capacity under 37 CFR 1.34, an attorney or agent must set forth his or her registration number, his or her name,…
Read MoreHow does a reissue patent affect the Ex Parte Reexamination Certificate?
In certain situations, the grant of a reissue patent can replace the need for an Ex Parte Reexamination Certificate. According to MPEP 2288: “If the ex parte reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.565(d), the reissued patent will constitute the ex parte reexamination certificate required by…
Read MoreWhat regulations govern ex parte reexamination ordered under 35 U.S.C. 257?
Ex parte reexamination ordered under 35 U.S.C. 257 is generally governed by the same regulations as standard ex parte reexamination, with some specific exceptions. According to MPEP 2818.01: “Ex parte reexamination under 35 U.S.C. 257 will be conducted in accordance with 37 CFR 1.530 through 1.570, which govern ex parte reexamination, subject to the exceptions…
Read MoreWhat happens if the Deputy Commissioner refuses to issue a reexamination order?
If the Deputy Commissioner for Patents decides not to issue a reexamination order after considering a potential case, the matter is handled discreetly. According to MPEP 2239: “If the Deputy Commissioner for Patents who oversees the Office of Petitions refuses to issue an order for reexamination, no record of any consideration of the matter will…
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