What is the process for mailing decisions and Office actions in inter partes reexamination?
The process for mailing decisions and Office actions in inter partes reexamination involves the following steps: The examiner completes a decision on the request for inter partes reexamination and/or an Office action. The CRU technical support staff processes the decision and/or Office action for mailing. The documents are mailed to the patent owner and the…
Read MoreWhat is the procedure for mailing Office actions to third party requesters in inter partes reexamination?
In inter partes reexamination proceedings, the USPTO has a specific procedure for mailing Office actions to third party requesters. The MPEP outlines: All actions in an inter partes reexamination proceeding will have a copy mailed to the third party requester. A transmittal form PTOL-2070 must be used in providing the third party requester with a…
Read MoreWhat are the responsibilities of parties regarding litigation in inter partes reexamination?
In inter partes reexamination proceedings, both the patent owner and the third-party requester have responsibilities regarding litigation. The MPEP states: The patent owner is reminded of the continuing responsibility under 37 CFR 1.985(a), to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent 9,999,999 throughout the course of this…
Read MoreWhat are the limitations on patent owner submissions after an ACP?
Patent owner submissions after an Action Closing Prosecution (ACP) in inter partes reexamination are subject to the following limitations: Comments must be limited to issues raised in the ACP Proposed amendments are subject to the criteria of 37 CFR 1.116 Only one submission is allowed under 37 CFR 1.951(a) MPEP 2672 states: “The patent owner’s…
Read MoreWhy can’t examiners use interviews or examiner’s amendments to resolve minor issues after ACP in inter partes reexamination?
In inter partes reexamination, examiners cannot use interviews or examiner’s amendments to resolve minor issues after Action Closing Prosecution (ACP) due to the presence of the third party requester and procedural restrictions. MPEP 2673.01 explains: “The examiner cannot telephone the owner to obtain the minor change(s) and then issue a RAN because interviews are not…
Read MoreWhat legislative acts have significantly impacted inter partes reexamination?
Several legislative acts have had significant impacts on inter partes reexamination: The American Inventors Protection Act of 1999 (AIPA): Introduced inter partes reexamination. Public Law 107-273 (2002): Expanded the scope of what qualifies for a substantial new question of patentability and expanded third-party requester’s appeal rights. The Leahy-Smith America Invents Act (AIA) of 2011: Replaced…
Read MoreWhat happens if a third party requester’s comments are received late in inter partes reexamination?
If a third party requester’s comments are received after the 30-day deadline in inter partes reexamination, they will not be considered. The MPEP 2666.40 is clear on this matter: “Comments by the third party requester filed after the 30-day period will not be considered.” This strict adherence to the timeline ensures that the reexamination process…
Read MoreHow are late-filed third-party comments handled in inter partes reexamination?
Late-filed third-party comments in inter partes reexamination are generally not considered. The MPEP 2666.05 provides clear guidance on this matter: “If the third party requester comments are late, the comments will not be considered […] If the comments are filed late, they will be returned to the third party requester unless a petition under 37…
Read MoreWhat happens to late-filed papers in inter partes reexamination?
Late-filed papers in inter partes reexamination are generally retained in the file but not considered. According to MPEP 2667: “Where patent owner has filed a paper which was filed after the period for response set by the Office, the paper will be retained in the file but will not be considered.” Similarly, for third party…
Read MoreWhen was the last day to file an inter partes reexamination request?
The last day to file an inter partes reexamination request was September 15, 2012. According to MPEP 2626: “No requests for inter partes reexamination may be filed on or after September 16, 2012.” This means that September 15, 2012, was the final day on which the USPTO accepted inter partes reexamination requests. After this date,…
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