What is the purpose of the PTOL-2068 form in inter partes reexamination?
The PTOL-2068 form is used for issuing the “Notice of Intent to Issue Inter Partes Reexamination Certificate” in inter partes reexamination proceedings. As mentioned in MPEP 2696, this form serves a crucial purpose in the final stages of the reexamination process. It notifies all parties that the USPTO intends to conclude the reexamination by issuing…
Read MoreWhat is the function of the PTOL-2066 form in inter partes reexamination?
The PTOL-2066 form is used for issuing the “Right of Appeal Notice” in inter partes reexamination proceedings. According to MPEP 2696, this form is associated with “37 CFR 1.953”. The Right of Appeal Notice is a crucial document that informs the parties involved in the reexamination of their right to appeal the examiner’s decision. This…
Read MoreWhat is the purpose of the PTOL-2065 form in inter partes reexamination?
The PTOL-2065 form is used for the “Action Closing Prosecution” in inter partes reexamination proceedings. As stated in MPEP 2696, this form is associated with “37 CFR 1.949”. The Action Closing Prosecution is a significant step in the reexamination process, indicating that the examiner believes the prosecution of the reexamination proceeding is drawing to a…
Read MoreWhat happens when the PTAB issues a new ground of rejection in an inter partes reexamination?
When the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection in an inter partes reexamination, it triggers specific procedures outlined in MPEP 2681: The decision is considered non-final for judicial review. The patent owner has one month to choose one of two options: Reopen prosecution by filing a response with amendments…
Read MoreWhen is jurisdiction transferred to the Board in inter partes reexamination appeals?
The jurisdiction of an inter partes reexamination proceeding is transferred to the Patent Trial and Appeal Board (PTAB) at a specific point in the appeal process. According to MPEP 2674: “The jurisdiction of the inter partes reexamination proceeding is transferred to the Board when a docketing notice is entered after the time period for filing…
Read MoreWhat are the possible outcomes of a Patent Trial and Appeal Board decision in an inter partes reexamination?
According to MPEP 2681, the Patent Trial and Appeal Board (PTAB) can issue several types of decisions in an inter partes reexamination: Affirm the examiner’s decision Reverse the examiner’s decision Remand the proceeding to the examiner for further consideration Issue a new ground of rejection The MPEP states: The Patent Trial and Appeal Board, in…
Read MoreIs a PTAB decision containing a new ground of rejection considered final?
No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681: A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to…
Read MoreCan the PTAB recommend claim amendments to make a claim patentable in inter partes reexamination?
No, the Patent Trial and Appeal Board (PTAB) does not have the authority to recommend claim amendments to make a claim patentable in inter partes reexamination. MPEP 2681 explicitly states: Unlike the practice for applications and ex parte reexaminations, the rules do not provide for the Board in its decision to include a statement that…
Read MoreHow should proof of service be provided in inter partes reexamination proceedings?
Proof of service in inter partes reexamination proceedings must be provided through a certificate of service. The MPEP 2666.06 states: “As proof of service, the party submitting the paper to the Office must attach a certificate of service to the paper. It is required that the certificate of service set forth the name and address…
Read MoreHow is a reexamination of a reexamination processed?
A reexamination of a reexamination is processed according to specific guidelines, regardless of the type of reexamination involved. According to MPEP § 2695: “A reexamination of a reexamination is processed in accordance with the guidelines set forth in MPEP § 2295 regardless of whether the reexamination certificate was issued for an ex parte reexamination or…
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