How are withdrawn rejections handled in inter partes reexamination?
The handling of withdrawn rejections in inter partes reexamination depends on the specific circumstances. According to MPEP 2671.01: When an examiner withdraws a rejection they originally initiated: The withdrawal should be clearly stated as a decision favorable to patentability. The third party requester may propose the withdrawn rejection in their next set of comments. When…
Read MoreWhy were inter partes reexamination requests discontinued?
Inter partes reexamination requests were discontinued as part of the changes implemented by the America Invents Act (AIA). While MPEP Section 2619 doesn’t explicitly state the reason, it notes: “No requests for inter partes reexamination may be filed on or after September 16, 2012.” This change was made to streamline patent challenge procedures and replace…
Read MoreWho typically conducts an inter partes reexamination?
Typically, the same patent examiner who decided to grant the reexamination request conducts the examination. As stated in MPEP § 2655: “The examination is ordinarily conducted by the same patent examiner who made the decision that the reexamination request should be granted.” This ensures continuity and familiarity with the case throughout the reexamination process. To…
Read MoreWho can submit prior art during a pending reexamination proceeding?
While there are general limitations on prior art submissions during reexamination proceedings, certain parties are allowed to submit prior art. According to MPEP 2204, the following exceptions apply: “[S]ubmissions filed after the date of any order to reexamine will not be entered into the patent file until the pending reexamination proceeding has been concluded (37…
Read MoreWho can appeal a decision in an inter partes reexamination proceeding to the Federal Circuit?
For inter partes reexamination proceedings commenced on or after November 2, 2002, both the patent owner and the third party requester can appeal a decision of the Patent Trial and Appeal Board (PTAB) to the U.S. Court of Appeals for the Federal Circuit. This is stated in MPEP 2683: “A patent owner and/or a third…
Read MoreWhen was inter partes reexamination replaced by inter partes review?
Inter partes reexamination was replaced by inter partes review on September 16, 2012, as a result of the Leahy-Smith America Invents Act (AIA). The MPEP states: “Section 6(c) of the AIA replaced the inter partes reexamination process, effective September 16, 2012, with a new inter partes review process, such that on or after September 16,…
Read MoreWhen is a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) issued?
A Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) is issued in two main scenarios: When all claims are rejected or objected to in the prior Office action, the examiner will issue a NIRC indicating that all claims have been canceled and terminating the prosecution. When at least one claim is free of…
Read MoreWhen is an Inter Partes Reexamination Certificate issued?
An Inter Partes Reexamination Certificate is issued at the conclusion of an inter partes reexamination proceeding. According to MPEP 2688: “Since abandonment is not possible in a reexamination proceeding, an inter partes reexamination certificate will be issued at the conclusion of the proceeding for each patent in which a reexamination proceeding has been ordered under…
Read MoreWhen is an Action Closing Prosecution (ACP) issued in inter partes reexamination?
An Action Closing Prosecution (ACP) is typically issued at specific points in the inter partes reexamination process. According to MPEP 2671.02: 1. When all claims are found patentable in the first action: “When all claims are found patentable in the first action, the examiner will, at that point, issue an ACP, since the patent owner…
Read MoreWhat is a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC)?
A Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) is a document issued by the patent examiner at the conclusion of an inter partes reexamination proceeding. It is prepared using Form PTOL-2068 and indicates the examiner’s intention to issue a reexamination certificate. According to the MPEP, Upon conclusion of the inter partes reexamination…
Read More