Can new arguments be presented during an oral hearing?
Generally, new arguments cannot be presented during an oral hearing. Participants are limited to evidence and arguments previously considered by the primary examiner and presented in the briefs. However, there is an exception for new arguments based on recent relevant decisions. MPEP 2680 states: “At the oral hearing, each appellant and respondent may only rely…
Read MoreCan new amendments or evidence be included in an appellant brief?
No, new amendments or evidence cannot be included in an appellant brief for an inter partes reexamination. The MPEP clearly states: “Pursuant to 37 CFR 41.67(c)(2), the brief is not to include any (A) new or non-admitted (non-entered) amendment, or (B) new or non-admitted (non-entered) affidavit or other evidence.” If an examiner wishes to have…
Read MoreCan a patent owner receive multiple notifications for omissions in their response?
Generally, a patent owner will not receive multiple notifications for the same omission in their response. However, there are circumstances where multiple notifications may occur. According to MPEP 2666.30: “Once an inadvertent omission is brought to the attention of the patent owner, the question of inadvertence no longer exists. Therefore, a second written notification action…
Read MoreHow are multiple amendments handled after an Action Closing Prosecution (ACP)?
According to MPEP 2673, when multiple amendments are submitted after an Action Closing Prosecution (ACP), only the first amendment will be considered. The MPEP explicitly states: “Where multiple amendments are submitted after the ACP, all amendments except for the first one will be returned without consideration, since they are improper submissions. Thus, if prosecution is…
Read MoreWhat is the difference between minor and serious deficiencies in a patent owner’s response?
The MPEP 2666.30 distinguishes between minor and serious deficiencies in a patent owner’s response: 1. Minor deficiencies: These are less significant omissions that don’t severely impact the examination process. For example, “fails to treat every rejection, objection, or requirement.” In such cases, the examiner may “simply act on the amendment and issue a new Office…
Read MoreAre micro entity fee reductions available in inter partes reexamination proceedings?
Micro entity fee reductions are available in inter partes reexamination proceedings, but with specific limitations: For patent owners: Micro entity reductions are available for certain fees. For third party requesters: Micro entity reductions are not available. As stated in the MPEP: Micro entity reductions are available to patent owners only. Specifically, micro entity and small…
Read MoreWhat happens if an inter partes reexamination is merged with an ex parte reexamination?
When an inter partes reexamination is merged with an ex parte reexamination, the merged proceeding is conducted according to inter partes reexamination procedures. The MPEP states: “If an inter partes reexamination is merged with an ex parte reexamination, the merged proceeding will be conducted as an inter partes reexamination with the participation of the ex…
Read MoreHow is a reexamination proceeding concluded when merged with an inter partes reexamination?
When an ex parte reexamination proceeding is merged with an inter partes reexamination, it can be concluded under 37 CFR 1.997(b). According to MPEP 2294, the process involves: Issuing a single reexamination certificate Processing the merged proceeding as set forth in MPEP § 2690 and MPEP § 2694 The MPEP states: “The proceeding may be…
Read MoreWhen is reopening prosecution mandatory after Action Closing Prosecution (ACP) in inter partes reexamination?
Reopening prosecution is mandatory when the examiner decides to modify their position after receiving a submission from the patent owner pursuant to 37 CFR 1.951(a) and (b). This is necessary to give the patent owner an opportunity to address any changes adverse to their position. According to MPEP 2673.01: “The examiner should reopen prosecution where…
Read MoreWhat are the mandatory elements of a request for inter partes reexamination?
According to MPEP 2614, a request for inter partes reexamination must include the following mandatory elements: A statement pointing out each substantial new question of patentability based on prior patents and printed publications An identification of every claim for which reexamination is requested A detailed explanation of the pertinence and manner of applying the cited…
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