What happens if a substantial new question of patentability is not found in an inter partes reexamination request?
If a substantial new question of patentability is not found in an inter partes reexamination request, the request will be denied. The MPEP 2640 states: “If no substantial new question of patentability is found, the Director will refuse the request and no inter partes reexamination will be ordered.” In this case, the patent owner and…
Read MoreWhat happens if no rebuttal brief is received within the specified time period?
According to MPEP 2678, if no rebuttal brief is received within the one-month period set in the examiner’s answer, the following process occurs: “If no rebuttal brief is received within the one month period set in the examiner’s answer, the Central Reexamination Unit (CRU) will issue a notification letter to parties using form paragraph 26.67,…
Read MoreWhat happens if no request for oral hearing is filed?
If no request and fee for an oral hearing are timely filed by the appellant or respondent, the appeal will be decided based on the briefs without an oral hearing. MPEP 2680 states: “If no request and fee for oral hearing have been timely filed by appellant or respondent as required by paragraph (b) of…
Read MoreCan an examiner issue a new rejection of previously patentable claims in inter partes reexamination?
Yes, an examiner can issue a new rejection of previously patentable claims in inter partes reexamination under certain circumstances. The MPEP states: “It should be noted that even in a situation where there has been no patent owner response, the examiner is always free to issue a supplemental Office action providing a new rejection of…
Read MoreIs reopening prosecution necessary when a new finding of patentability is made after ACP?
No, reopening prosecution is not necessary when a new finding of patentability is made after Action Closing Prosecution (ACP). This includes situations where a ground of rejection is withdrawn or an additional claim is found patentable. MPEP 2673.01 states: “As opposed to the examiner making a new ground of rejection, if a new finding of…
Read MoreHow are “new matter” amendments treated in inter partes reexamination?
“New matter” amendments in inter partes reexamination are treated as follows: Amendments to the disclosure that introduce new matter ( 35 U.S.C. 132 ) will be required to be canceled. Claims containing new matter will be rejected under 35 U.S.C. 112. “New matter” amendments to drawings are ordinarily not entered. MPEP 2670 states: “Any ‘new…
Read MoreCan new grounds of rejection be proposed in a respondent brief?
No, new grounds of rejection cannot be proposed in a respondent brief during an inter partes reexamination appeal. The MPEP explicitly states in reference to 37 CFR 41.68(b)(1)(vi): “No new ground of rejection can be proposed by a requester respondent.” This limitation ensures that the scope of the appeal remains focused on the issues raised…
Read MoreHow does an examiner handle new grounds of rejection in inter partes reexamination?
In inter partes reexamination, examiners must carefully consider how to handle new grounds of rejection. According to MPEP 2671.01: “An action will not normally close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.” This means that:…
Read MoreCan an examiner’s answer include new grounds of rejection?
No, an examiner’s answer cannot include new grounds of rejection in an inter partes reexamination proceeding. This is explicitly stated in MPEP 2677, which cites 37 CFR 41.69(b): “An examiner’s answer may not include a new ground of rejection.” If the examiner determines that a new ground of rejection is necessary, they must reopen prosecution…
Read MoreCan new evidence be included in a respondent brief?
No, new evidence cannot be included in a respondent brief during an inter partes reexamination appeal. The MPEP clearly states in reference to 37 CFR 41.68(b)(2): “A respondent brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence.” This restriction ensures that the appeal process focuses on…
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