What are the content restrictions for a patent owner’s rebuttal brief?
The content restrictions for a patent owner’s rebuttal brief in an inter partes reexamination are outlined in MPEP 2678, which references 37 CFR 41.71(b): “(1) The rebuttal brief of the owner may be directed to the examiner’s answer and/or any respondent brief. (2) The rebuttal brief of the owner shall not include any new or…
Read MoreWhat options does a patent owner have after receiving an Action Closing Prosecution (ACP)?
After receiving an Action Closing Prosecution (ACP) in an inter partes reexamination, the patent owner has specific options as outlined in MPEP 2671.02: File written comments: “Pursuant to 37 CFR 1.951(a), the patent owner may once file written comments limited to the issues raised in the reexamination proceeding and/or present a proposed amendment to the…
Read MoreWhat are the options for patent owners after an Action Closing Prosecution (ACP) in inter partes reexamination?
After an Action Closing Prosecution (ACP) in inter partes reexamination, the patent owner has the following options: File written comments limited to the issues raised in the reexamination proceeding Present a proposed amendment to the claims According to MPEP 2672, “The patent owner submission under 37 CFR 1.951(a) of comments and/or proposed amendment must be…
Read MoreHow is the patent owner notified of an inter partes reexamination order?
When an inter partes reexamination is ordered, the patent owner is notified through official channels. According to MPEP 2640: “If reexamination is ordered, the Director will simultaneously (1) send the patent owner a copy of the order to reexamine and the statement pursuant to 37 CFR 1.943(a) … and (2) notify the third party requester…
Read MoreWhat is the process when a patent owner fails to respond to an Action Closing Prosecution (ACP) in inter partes reexamination?
When a patent owner fails to respond to an Action Closing Prosecution (ACP) in inter partes reexamination, the consequences are different from those of failing to respond to other Office actions. According to MPEP 2666.10: “A response to an ACP is not required. Where the patent owner does not respond to an ACP, the Office…
Read MoreWhat happens if a patent owner fails to respond to an Office action in an inter partes reexamination?
The consequences of a patent owner’s failure to respond to an Office action in an inter partes reexamination depend on the stage of the proceedings and whether any claims were found patentable: If no claims were found patentable, the prosecution will be terminated, and a certificate concluding the reexamination will be issued. If claims were…
Read MoreWhat are the consequences if a patent owner fails to file a timely appeal after a Right of Appeal Notice in inter partes reexamination?
The consequences of a patent owner’s failure to file a timely appeal after a Right of Appeal Notice in inter partes reexamination depend on the patentability findings and the actions of the third party requester. According to MPEP 2666.10, the following outcomes may occur: If no claim was found patentable, a Notice of Intent to…
Read MoreWhat information must patent owners provide regarding prior or concurrent proceedings?
According to MPEP 2686, patent owners are required to provide the Office with information about any prior or concurrent proceedings involving the patent undergoing inter partes reexamination, as well as the results of such proceedings, if known. The MPEP states: “In accordance with 37 CFR 1.985, the patent owner is required to provide the Office…
Read MoreWhat happens if a patent owner files a court action to enjoin the inter partes reexamination?
If a patent owner files a court action to enjoin the inter partes reexamination, the action does not automatically stay the reexamination proceedings. According to MPEP 2686.04: “35 U.S.C. 318 provides that, once an order for inter partes reexamination has been issued, the patent owner may obtain a stay of any pending litigation which involves…
Read MoreCan a patent owner amend claims before the first Office action in inter partes reexamination?
No, a patent owner cannot amend claims before the first Office action in inter partes reexamination. MPEP 2660 clearly states: “Ordinarily, there will be no patent owner amendment to address in the first Office action of the inter partes reexamination, because 37 CFR 1.939(b) prohibits a patent owner amendment prior to first Office action.” This…
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