What are the key components of an Office action cover sheet in inter partes reexamination?
In inter partes reexamination, the Office action cover sheet plays a crucial role in organizing and presenting information. According to MPEP 2671.01, the key components of an Office action cover sheet are: Use of Form PTOL-2064 as the cover sheet Date of the communication(s) to which the Office action is responsive Response period given to…
Read MoreHow can I obtain copies of Office actions in inter partes reexamination proceedings?
Copies of Office actions in inter partes reexamination proceedings can be obtained through the USPTO’s Public PAIR system. The MPEP states: Copies of Office actions may be obtained by accessing Public PAIR at the Office’s website www.uspto.gov. Public PAIR (Patent Application Information Retrieval) is an online portal that provides access to patent application status and…
Read MoreHow are amended or new claims numbered in an inter partes reexamination certificate?
The numbering of amended or new claims in an inter partes reexamination certificate follows specific rules as outlined in MPEP 2688: Amended or new claims are numbered consecutively starting with the number next higher than the number of the last claim in the original patent. The numbering starts with the lowest amended claim number. If…
Read MoreWhat is a Notice of Defective Paper in Inter Partes Reexamination?
A Notice of Defective Paper is issued when a submission in an inter partes reexamination is considered defective or informal. This notice is typically provided using form PTOL-2069, which outlines the specific defects present in the submission. According to the MPEP 2666.50, “Where a submission made is defective (informal), form PTOL-2069 is used to provide…
Read MoreWhat is the deadline for filing a notice of appeal in an inter partes reexamination?
The deadline for filing a notice of appeal in an inter partes reexamination is strictly defined. According to MPEP 2662: After the examiner issues a Right of Appeal Notice (RAN), the patent owner and the third party requester may each file a notice of appeal within 30 days or one month (whichever is longer) from…
Read MoreWhat are the time limits for filing a notice of appeal in inter partes reexamination?
What are the time limits for filing a notice of appeal in inter partes reexamination? The time limits for filing a notice of appeal in inter partes reexamination are specified in MPEP 2674. The manual states: “The time for filing a notice of appeal is within thirty days after the mailing of the action from…
Read MoreWhat constitutes a submission not fully responsive to a non-final Office action in inter partes reexamination?
A submission is considered not fully responsive when it’s a bona fide attempt to respond to an examiner’s Office action filed within the permissible response period, but through oversight or inadvertence, omits a necessary point. As stated in MPEP 2666.30: “A response by the patent owner will be considered not fully responsive to a non-final…
Read MoreCan a requester include arguments about non-prior art issues in the statement applying prior art?
No, a requester should not include arguments about non-prior art issues in the statement applying prior art for an inter partes reexamination request. The MPEP 2617 clearly states: “The statement applying the prior art is not intended as an opportunity for a requester to propose rejections based on 35 U.S.C. 101, 112, 102, and 103…
Read MoreWhat happens if a rebuttal brief does not comply with all requirements?
MPEP 2678 outlines the process for handling non-compliant rebuttal briefs in inter partes reexamination, as specified in 37 CFR 41.71(e): “If a rebuttal brief is timely filed under paragraph (a) of this section but does not comply with all the requirements of paragraphs (a) through (d) of this section, appellant will be notified of the…
Read MoreWhat should be included in a non-ACP Office action in inter partes reexamination?
A non-ACP Office action in inter partes reexamination should be comprehensive and address all issues related to the patent or printed publications. According to MPEP 2671.01, the action should include: A clear statement of the examiner’s position A comprehensive address of all issues related to patents or printed publications Clear explanations for each ground of…
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