What is inter partes reexamination?
Inter partes reexamination is a process that allows any third party to request a review of a patent issued from an original application filed on or after November 29, 1999. This process was available for requests filed prior to September 16, 2012. The MPEP 2609 states: The inter partes reexamination statute and rules permit any…
Read MoreWhat is an Inter Partes Reexamination Certificate?
An Inter Partes Reexamination Certificate is a document issued at the conclusion of an inter partes reexamination proceeding, unless merged with a reissue application. As stated in MPEP 2690: “An inter partes reexamination certificate is issued at the close of each inter partes reexamination proceeding in which reexamination has been ordered under 37 CFR 1.931,…
Read MoreWhat is a decision denying reexamination?
A decision denying reexamination is a formal response issued by a patent examiner when a request for inter partes reexamination fails to establish a substantial new question of patentability (SNQ) or a reasonable likelihood of prevailing (RLP) based on patents or printed publications. As stated in the MPEP: “The request for reexamination will be denied…
Read MoreWhat are the three ways an inter partes reexamination proceeding can be concluded?
According to MPEP 2694, inter partes reexamination proceedings can be concluded in three ways: (A) By bringing the prosecution to an end through denial, vacating, or termination of the reexamination proceeding. (B) By issuing a reexamination certificate under 37 CFR 1.997(b). (C) By merging the reexamination proceeding with a reissue proceeding and granting a reissue…
Read MoreCan the USPTO make telephone calls during inter partes reexamination proceedings?
The USPTO may, in its sole discretion, make limited telephone calls during inter partes reexamination proceedings. According to MPEP 2685, “The Office may, in its sole discretion, telephone a party as to matters of completing or correcting the record of a file, where the subject matter discussed does not go to the merits of the…
Read MoreCan the USPTO suspend an inter partes reexamination due to ongoing litigation?
Yes, the USPTO can suspend an inter partes reexamination due to ongoing litigation, but this is rare. The key points are: The Director has authority to suspend for “good cause” under 35 U.S.C. 314(c). Suspension is considered on a case-by-case basis. The potential for termination under 35 U.S.C. 317(b) may provide “good cause” for suspension.…
Read MoreHow does the USPTO handle a request for reexamination of a patent that has already been reissued?
The USPTO has a specific policy for handling reexamination requests for patents that have already been reissued. The MPEP states: “Where a request for reexamination is filed on a patent after a reissue patent for that patent has already issued, reexamination will be denied, because the patent on which the request for reexamination is based…
Read MoreCan a reexamination be ordered for claims not specifically requested in the inter partes reexamination request?
Generally, the USPTO will limit its examination to the claims specifically requested for reexamination. However, the Office retains discretion to reexamine other claims. The MPEP states: “The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the claim(s) for which…
Read MoreWhat is the prohibition on filing subsequent inter partes reexamination requests?
The USPTO has a prohibition on filing subsequent inter partes reexamination requests under certain circumstances. The MPEP states: “Where an ordered inter partes reexamination is pending, and an inter partes reexamination request is subsequently filed, the prohibition provision of 37 CFR 1.907(a) must be considered. Once an order for inter partes reexamination has been issued,…
Read MoreHow does the USPTO handle newly discovered prior art in inter partes reexamination when there’s concurrent litigation?
The USPTO’s handling of newly discovered prior art in inter partes reexamination with concurrent litigation is as follows: Estoppel under 35 U.S.C. 317(b) does not apply to newly discovered prior art unavailable during the litigation. The patent owner must show that the art was known to the requester at a time when it could have…
Read More