Can I still file a request for inter partes reexamination?
No, requests for inter partes reexamination are no longer accepted. According to MPEP 2631, “No requests for inter partes reexamination may be filed on or after September 16, 2012.” This change was part of the America Invents Act (AIA) which replaced inter partes reexamination with inter partes review. For information on the former practice of…
Read MoreWhat is the standard for granting an inter partes reexamination request?
The standard for granting an inter partes reexamination request depends on when the request was filed: For requests filed prior to September 16, 2011: A substantial new question of patentability must be raised. For requests filed on or after September 16, 2011: There must be a reasonable likelihood that the requester will prevail with respect…
Read MoreWhen did inter partes reexamination requests cease to be accepted?
Inter partes reexamination requests ceased to be accepted on September 16, 2012. According to MPEP 2612, “No requests for inter partes reexamination may be filed on or after September 16, 2012.” This change was part of the America Invents Act (AIA) reforms to the patent system. To learn more: inter partes reexamination patent law AIA…
Read MoreWhat happens if an inter partes reexamination request is denied?
If an inter partes reexamination request is denied, the requester has the option to seek review of the decision. The MPEP outlines this process: “If a decision to deny an order for reexamination is made, the requester may seek review by a petition under 37 CFR 1.181. See 37 CFR 1.927.” However, it’s important to…
Read MoreIs there a refund if an inter partes reexamination request is denied?
Yes, there is a partial refund available if an inter partes reexamination request is denied. According to MPEP 2648: “After the time for petition has expired (without a petition being filed), or a petition has been filed and the decision affirms the denial of the request, a partial refund of the filing fee for the…
Read MoreCan the decision on a petition for inter partes reexamination be appealed?
No, the decision on a petition for inter partes reexamination cannot be appealed. According to MPEP 2648: “This decision is final and nonappealable. See 35 U.S.C. 312(c) and 37 CFR 1.927. No further communication on this matter will be acknowledged or considered.” This means that once the CRU Director has made a decision on the…
Read MoreHow are Office actions mailed in inter partes reexamination proceedings?
In inter partes reexamination proceedings, Office actions are mailed after completion, processing, and approval by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS). The MPEP states: After an Office action is completed and processed and has been approved by the Central Reexamination Unit (CRU) Supervisory…
Read MoreWhat happens when an Inter Partes Reexamination is merged with a reissue application?
When an Inter Partes Reexamination is merged with a reissue application, the process and outcome are different from a standard reexamination. MPEP 2690 states: “In that situation, the inter partes reexamination proceeding is concluded by the grant of a reissue patent, the reissue patent will constitute the reexamination certificate.” This means that instead of issuing…
Read MoreWhat is the timeline for filing an inter partes reexamination request?
What is the timeline for filing an inter partes reexamination request? An inter partes reexamination request can be filed at any time during the enforceability of a patent. The MPEP states: “An inter partes reexamination can be filed at any time during the enforceability of a patent.” (MPEP 2611) This means that a request can…
Read MoreWhat fees are required in an inter partes reexamination proceeding?
Several fees are required in an inter partes reexamination proceeding: Fee for filing the request for inter partes reexamination Fees for the addition of claims by the patent owner during the proceeding (excess claims fees) Fees for an extension of time Fees for any appeal, brief, and oral hearing Fees for all petitions filed relating…
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