What information should be included in correspondence after filing an inter partes reexamination request?
After filing a request for inter partes reexamination, subsequent correspondence should include specific identifying information. The MPEP states: “After the filing of the request for inter partes reexamination, any letters sent to the Office relating to the reexamination proceeding should identify the proceeding by the number of the patent undergoing reexamination, the reexamination request control…
Read MoreHow does concurrent litigation affect inter partes reexamination proceedings?
Concurrent litigation can significantly impact inter partes reexamination proceedings. The key points to consider are: The USPTO is not bound by court decisions on patent validity and will generally continue reexamination proceedings unless statutorily required to terminate them. A final court decision of invalidity will typically result in termination of the reexamination for those claims…
Read MoreWhat happened to inter partes reexamination under the America Invents Act?
The America Invents Act (AIA) replaced the inter partes reexamination process with inter partes review. According to the MPEP: “Effective September 16, 2012, section 6(c) of the Leahy-Smith America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, replaced the inter partes reexamination process that was established by the AIPA with an inter partes…
Read MoreWhat happens if an inter partes reexamination certificate is not printed in a timely manner?
According to MPEP 2688, if the inter partes reexamination certificate is not printed in a timely manner after the expiration of the 3-month period following the issue date of the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC), the following actions are taken: The Office of Patent Legal Administration (OPLA) may be contacted…
Read MoreWhat happens if litigation is pending when the inter partes reexamination certificate is to be issued?
What happens if litigation is pending when the inter partes reexamination certificate is to be issued? If litigation is pending when the inter partes reexamination certificate is to be issued, the USPTO takes specific steps to ensure proper handling. According to MPEP 2688: “If the reexamination proceeding is ready for issuance of a certificate, but…
Read MoreHow are Inter Partes Reexamination Certificates numbered?
Inter Partes Reexamination Certificates are numbered using a specific system. According to MPEP 2690: “The inter partes reexamination certificates will be numbered in a separate and new ordinal sequence, beginning with “(1st)”. The certificate number will always be the patent number of the original patent followed by a two-character “kind code” suffix. The “kind code”…
Read MoreWhat information is included in the header of an inter partes reexamination certificate?
The header of an inter partes reexamination certificate contains essential information about the reexamination proceeding. According to MPEP 2688, the header includes: The patent number of the original patent The name of the patent owner at the time of issuance The reexamination control number The effective date of the certificate The reexamination request filing date…
Read MoreHow is an inter partes reexamination certificate distributed?
The distribution of an inter partes reexamination certificate involves several steps: An e-copy of the certificate is associated with the e-copy of the patent in the search files. A copy is included in any patent copies prepared by the USPTO after the certificate’s issuance. Copies are forwarded to all depository libraries. Copies are sent to…
Read MoreHow are new and amended claims presented in an Inter Partes Reexamination Certificate?
The Inter Partes Reexamination Certificate has a specific format for presenting new and amended claims. According to MPEP 2690: “Any new claims will be printed in the certificate completely in italics, and any amended claims will be printed in the certificate with italics and bracketing indicating the amendments thereto.” This formatting allows readers to easily…
Read MoreWhat is the applicability of the inter partes reexamination procedure described in MPEP 2661?
The inter partes reexamination procedure described in MPEP 2661 is specifically applicable to requests filed before September 16, 2012. This is clearly stated in the editor’s note at the beginning of the section: “[Editor Note: Applicable only to a request for inter partes reexamination filed prior to September 16, 2012]” This limitation is important because…
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