What is required from the requester when filing for inter partes reexamination?
When filing for inter partes reexamination, the requester must provide specific information for each claim they want reexamined. According to MPEP 2643, “35 U.S.C. 311(b)(2) requires that a requester ‘set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.’” This means the requester must explain how…
Read MoreHow can a patent owner request reopening of prosecution after a new ground of rejection?
To request reopening of prosecution after a new ground of rejection, the patent owner must: File a response within one month of the Board’s decision (extensions available under 37 CFR 1.956) Submit an appropriate amendment of the newly rejected claim(s) and/or new evidence relating to the new ground(s) of rejection According to MPEP 2682, “Under…
Read MoreHow do I request an oral hearing for an inter partes reexamination appeal?
To request an oral hearing for an inter partes reexamination appeal, you must: File a written request as a separate paper captioned “REQUEST FOR ORAL HEARING” Submit the request within two months after the date of the examiner’s answer Pay the fee set forth in 37 CFR 41.20(b)(3) Include a certification that a copy of…
Read MoreWhat are the limitations on who can be named as a representative in a power of attorney for inter partes reexamination?
There are specific limitations on who can be named as a representative in a power of attorney for inter partes reexamination. The MPEP 2613 refers to 37 CFR 1.32(c), which states: “A power of attorney may only name as representative the inventors or registered patent practitioners.” This means that only the following individuals can be…
Read MoreWhen can prosecution be reopened after a Board decision in inter partes reexamination?
Reopening prosecution after a Board decision in inter partes reexamination is a rare occurrence. According to MPEP 2682: Proceedings which have been decided by the Board will not be reopened or reconsidered by the primary examiner, unless the provisions of 37 CFR 41.77 apply, or the written consent of the Director of the USPTO is…
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 MoreWhat happens to rejected claims if a patent owner fails to respond to an Office action in inter partes reexamination?
When a patent owner fails to respond to an Office action in inter partes reexamination, the fate of rejected claims depends on whether any claims were found patentable. According to MPEP 2666.10: If no claims were found patentable, all claims under rejection will be canceled upon issuance of the reexamination certificate. If at least one…
Read MoreWhat is the impact of a reissue application on a pending inter partes reexamination?
When a reissue application is filed for a patent that is undergoing inter partes reexamination, it can have significant implications for the reexamination process. According to MPEP 2686.04: “If a reissue application is filed on a patent for which a reexamination proceeding is pending, the reexamination proceeding is suspended until the reissue application is resolved.”…
Read MoreHow are telephone calls recorded in inter partes reexamination proceedings?
When the USPTO makes a telephone call during an inter partes reexamination proceeding, it must be properly documented. The MPEP 2685 states: “If the party is reached by telephone and the matter is resolved, then the next Office communication as may be appropriate (e.g., Office action, NIRC) should make the telephone call of record. Any…
Read MoreWhat is the time limit for filing a rebuttal brief in an inter partes reexamination?
According to MPEP 2678, the time limit for filing a rebuttal brief in an inter partes reexamination is one month from the mailing date of the examiner’s answer. This is specified in 37 CFR 41.66(d), which states: “Any appellant may file a rebuttal brief under § 41.71 within one month of the date of the…
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