How are premature appeals handled in inter partes reexamination?
Premature appeals in inter partes reexamination are not considered but are retained in the file. According to MPEP 2667: “Where a notice of appeal or notice of cross appeal is filed before a Right of Appeal Notice (RAN) has been issued, the paper will be retained in the file, but will not be considered (other…
Read MoreIs a power of attorney required to file an inter partes reexamination request?
While a power of attorney is desirable, it is not strictly required to file an inter partes reexamination request. The MPEP 2613 states: “While the filing of the power of attorney is desirable, processing of the reexamination request will not be delayed due to its absence.” However, it’s important to note that an attorney or…
Read MoreWhat is the process for petitioning a denial of an inter partes reexamination request?
If a request for inter partes reexamination is denied, the third-party requester can petition for review. According to MPEP 2648: “The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing to order inter partes reexamination.” This petition…
Read MoreCan a patent owner file papers on behalf of a third party in an inter partes reexamination?
No, a patent owner cannot file papers on behalf of a third party in an inter partes reexamination. The MPEP is clear on this matter: “The patent owner cannot file papers on behalf of a third party.” If a third party paper is submitted as part of a patent owner’s response, the entire submission will…
Read MoreCan a patent owner be notified by telephone about an omission in their response?
No, a patent owner cannot be notified by telephone about an omission in their response during inter partes reexamination. MPEP 2666.30 explicitly states: “It should be noted that the patent owner cannot simply be notified by telephone that the omission must be supplied within the remaining time period for response. This notification would be an…
Read MoreWhat is the timeframe for patent owner submissions after an Action Closing Prosecution (ACP)?
According to MPEP 2673, the patent owner is given “30 days or one month, whichever is longer, to make the 37 CFR 1.951(a) submission after Action Closing Prosecution (ACP).” If no submission is received after two months from the ACP, the examiner will take up the case for action. The examiner is required to act…
Read MoreWhat are the requirements for a patent owner’s statement in an inter partes reexamination request?
In an inter partes reexamination request, the patent owner’s statement must meet specific requirements as outlined in MPEP 2614: The statement should be clearly identified as a “statement by the patent owner.” It must address each substantial new question of patentability identified in the request. The statement should be limited to 50 pages, excluding evidence…
Read MoreWhat is the time limit for a patent owner to respond to an Office action in an inter partes reexamination?
The patent owner is typically given a period of two months to respond to an Office action in an inter partes reexamination. As stated in the MPEP, “The patent owner will normally be given a period of two months to respond to an Office action.” It’s important to note that extensions of time are limited…
Read MoreCan a patent owner respond to an inter partes reexamination request before the determination is made?
No, the patent owner cannot respond to an inter partes reexamination request before the determination is made. The MPEP clearly states: “No input from the patent owner is considered prior to the determination.” This policy is supported by case law, as the MPEP cites: “See Patlex v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed.…
Read MoreHow should patent owners respond to the first Office action in inter partes reexamination?
Patent owners should provide a complete and thorough response to the first Office action in inter partes reexamination. MPEP 2660 emphasizes the importance of a comprehensive response: “Accordingly, the first action should include a statement cautioning the patent owner that a complete response should be made to the action.” Key points for patent owners: Address…
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