How are properly submitted documents handled in inter partes reexamination?
When documents are properly submitted in accordance with 37 CFR 1.985 during inter partes reexamination, the USPTO has a specific process for handling them. According to MPEP 2686: “Any proper submission pursuant to 37 CFR 1.985 will be promptly entered into the record of the reexamination file, and will be considered by the examiner as…
Read MoreHow does an examiner treat an entered protest during patent examination?
When a protest has been entered into the record of a patent application, the examiner must consider it during prosecution. According to MPEP 1901.06, the examiner must: Consider each prior art or other document submitted in conformance with 37 CFR 1.291(c) and any discussion of such documents in the protest. Consider any non-prior art issue(s)…
Read MoreHow does the examiner consider the patent owner’s statement in ex parte reexamination?
The examiner carefully considers the patent owner’s statement in ex parte reexamination as part of the overall examination process. According to MPEP 2252: “The examiner must consider all of the patent owner’s arguments in the statement, regardless of whether or not an amendment is made to any claim.” This means that the examiner will: Review…
Read MoreWhat is the purpose of the PTO-892 form in reissue applications?
The PTO-892 form, also known as the “Notice of References Cited,” serves an important purpose in reissue applications: It lists references cited or applied by the examiner during the reissue application examination. It includes relevant references from the original patent prosecution that are still applicable to the reissue claims. It helps maintain a clear record…
Read MoreHow can I determine if a cited reference in an IDS has been considered by the examiner?
To determine if a cited reference in an Information Disclosure Statement (IDS) has been considered by the examiner, you should refer to MPEP 609.04(b). The MPEP 609.08 directs applicants to this section: See MPEP § 609.04(b) for determining whether a cited reference has been considered by the examiner. This section provides detailed guidance on how…
Read MoreHow does an examiner indicate that they have considered an information disclosure statement (IDS)?
An examiner can indicate consideration of an IDS in two ways: By placing their initials adjacent to the citations on the PTO/SB/08 form or its equivalent. Using an alternative electronic signature method where: Each page of reference citations is stamped with “All references considered except where lined through” along with the examiner’s electronic initials. The…
Read MoreHow do examiners review and consider an e-IDS?
Examiners are required to review and consider e-IDS submissions in the same manner as paper IDS submissions. The MPEP 609.07 provides guidance on this process: If the e-IDS complies with the requirements of 37 CFR 1.97, examiners must consider the e-IDS and complete the e-IDS form by initialing, signing, and dating the e-IDS form entries.…
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