What is the timeline for preparing and reviewing an examiner’s answer in inter partes reexamination?
The timeline for preparing and reviewing an examiner’s answer in an inter partes reexamination proceeding is outlined in MPEP 2677. The key steps and timeframes are as follows: The examiner’s answer is to be completed by the examiner within two weeks after the appeal conference. After completion, the examiner obtains the initials of the appeal…
Read MoreCan an examiner reopen prosecution after issuing an examiner’s answer?
Yes, an examiner can reopen prosecution after issuing an examiner’s answer, but it is a rare occurrence and requires specific approval. According to MPEP 2679: “In a very rare situation, where the examiner finds that it is essential to address a rebuttal brief, the examiner must reopen prosecution. In order to reopen prosecution after an…
Read MoreCan an examiner’s answer include new grounds of rejection?
No, an examiner’s answer cannot include new grounds of rejection in an inter partes reexamination proceeding. This is explicitly stated in MPEP 2677, which cites 37 CFR 41.69(b): “An examiner’s answer may not include a new ground of rejection.” If the examiner determines that a new ground of rejection is necessary, they must reopen prosecution…
Read MoreCan new grounds of rejection be introduced in an examiner’s answer during ex parte reexamination?
Yes, new grounds of rejection can be introduced in an examiner’s answer during ex parte reexamination. According to MPEP 2273: “The examiner may, however, include in the examiner’s answer a new ground of rejection, in which case appellant would have the right to amend the claims, or take other appropriate action under 37 CFR 41.39(a)(2).”…
Read MoreWhat are the key components of an examiner’s answer in inter partes reexamination?
According to MPEP 2677, an examiner’s answer in an inter partes reexamination proceeding must include several key components in a specific order. These components are: Real Party in Interest Related Appeals and Interferences Status of Claims Status of Amendments Summary of Claimed Subject Matter Grounds of Rejection to be Reviewed on Appeal Findings of Patentability…
Read MoreHow should an examiner handle affidavits or declarations in an examiner’s answer?
When handling affidavits or declarations in an examiner’s answer for an inter partes reexamination proceeding, the examiner should follow the guidance provided in MPEP 2677. The key points are: The examiner should report their conclusions on any affidavits, declarations, or exhibits that were admitted to the record. Affidavits or declarations swearing behind a patent should…
Read MoreWhat is the purpose of Form PTOL-473 in ex parte reexamination?
Form PTOL-473 is the Ex Parte Reexamination Examiner’s Answer used in ex parte reexamination proceedings. According to MPEP 2296, this form is “used as the Examiner’s Answer in ex parte reexamination.” It serves as the examiner’s response to an appeal brief filed by the patent owner or third-party requester, outlining the examiner’s position on the…
Read MoreAre extensions of time available for responding to an Examiner’s Answer in patent reexamination?
Extensions of time for responding to an Examiner’s Answer in patent reexamination proceedings are available, but they are subject to specific rules. According to MPEP § 2275: “Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of…
Read MoreWhat is an Examiner’s Answer in patent reexamination proceedings?
An Examiner’s Answer is a written response provided by the primary examiner to an appeal brief in a patent reexamination proceeding. According to MPEP § 2275, “The primary examiner may, within such time as may be directed by the Director, furnish a written answer to the appeal brief.” The Examiner’s Answer addresses the arguments presented…
Read MoreWhat happens if an examiner’s answer is not approved in a reexamination proceeding?
What happens if an examiner’s answer is not approved in a reexamination proceeding? If an examiner’s answer is not approved in a reexamination proceeding, the following steps occur: The examiner’s answer is returned to the Central Reexamination Unit (CRU) or Technology Center (TC) for correction. The original statement of the basis for the rejection is…
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