How should a patent owner respond to rejections in an inter partes reexamination?
In an inter partes reexamination, a patent owner should respond to rejections by providing a clear and specific rebuttal. According to MPEP 2666: “Any request for reconsideration must be in writing and must distinctly and specifically point out each supposed error in the examiner’s action. A general allegation that the claims define a patentable invention,…
Read MoreCan the page limit for a respondent brief be waived in inter partes reexamination?
The MPEP 2675.01 addresses the possibility of waiving the page limit for respondent briefs in inter partes reexamination: “A request for waiver of the page limit for a respondent brief will be decided by a Board member and may be granted when a party can show good cause.” This means that while there is a…
Read MoreIs there a fee associated with filing a respondent brief in inter partes reexamination?
Yes, there is a fee required for filing a respondent brief in inter partes reexamination. The MPEP states: “A fee as set forth in 37 CFR 41.20(b)(2) is required when the respondent brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a).” This fee is mandatory and must be paid…
Read MoreWhat is the time limit for filing a respondent brief in an inter partes reexamination?
According to 37 CFR 41.66(b), a respondent must file their brief within one month from the date of service of the appellant’s brief. The MPEP states: “Once an appellant’s brief has been properly filed, any brief must be filed by respondent within one month from the date of service of the appellant’s brief. The time…
Read MoreWhat is the deadline for filing a respondent brief in an inter partes reexamination?
According to MPEP 2675.01, the deadline for filing a respondent brief in an inter partes reexamination is as follows: “The respondent brief is due one month after the date of service of the appellant’s brief. The time for filing a respondent brief may not be extended.” It’s crucial to note that this deadline is strictly…
Read MoreWhat are the required contents of a respondent brief in an inter partes reexamination?
The contents of a respondent brief are outlined in 37 CFR 41.68(b)(1). Key components include: Real Party in Interest statement Related Appeals, Interferences, and trials Status of claims Status of amendments Summary of claimed subject matter Issues to be reviewed on appeal Argument Evidence appendix Related proceedings appendix Certificate of service The MPEP emphasizes: “The…
Read MoreHow detailed should the statement applying prior art be in an inter partes reexamination request?
The statement applying prior art in an inter partes reexamination request should be sufficiently detailed to explain how each item of prior art applies to every claim for which reexamination is requested. The MPEP 2617 states: “The particularity should be equivalent to that usually present in a prior art rejection statement in an Office action…
Read MoreWhat certifications are required in an inter partes reexamination request?
An inter partes reexamination request must include specific certifications as outlined in MPEP 2614. These certifications are crucial to ensure compliance with statutory provisions and to prevent abuse of the reexamination process. The required certifications are: Estoppel Certification (35 U.S.C. 317 and 315(e)): The request must include “A certification by the third party requester that…
Read MoreWhat is the process for requesting an oral hearing in an inter partes reexamination appeal?
What is the process for requesting an oral hearing in an inter partes reexamination appeal? In inter partes reexamination appeals, parties have the option to request an oral hearing before the Board. The process for requesting an oral hearing is outlined in MPEP 2674: “If an appellant or a respondent (the patent owner or the…
Read MoreWhat rights does the requester have when a patent owner corrects an omission in their response?
When a patent owner corrects an omission in their response, the requester in an inter partes reexamination has certain rights. According to MPEP 2666.30: “In this situation, the requester has thirty days from the date of service of patent owner’s corrected or supplemental response to file comments, unless only a fee (other than an excess…
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