What is the process for filing an appeal in inter partes reexamination?
The process for filing an appeal in inter partes reexamination begins after a Right of Appeal Notice (RAN) has been issued. According to MPEP 2674: “Once a RAN has been issued, the patent owner and any third party requester will have, in accordance with 37 CFR 1.953, a time period of one month or thirty…
Read MoreCan the time for filing a notice of appeal or cross appeal be extended in inter partes reexamination?
No, the time for filing a notice of appeal or cross appeal in inter partes reexamination cannot be extended. The MPEP 2674 clearly states: “Pursuant to 37 CFR 41.61(e), the time for filing a notice of appeal may not be extended.” Similarly, for cross appeals: “Pursuant to 37 CFR 41.61(e), the time for filing a…
Read MoreWhat are the timeframes for filing briefs in an inter partes reexamination appeal?
The timeframes for filing briefs in an inter partes reexamination appeal are specific and cannot be extended. According to MPEP 2662: Appellant Brief: Each party that filed a notice of appeal or notice of cross appeal may file an appellant brief and fee within two months after the last-filed notice of appeal or cross appeal.…
Read MoreWhat happens when a patent in inter partes reexamination becomes involved in an interference?
When a patent undergoing inter partes reexamination becomes involved in an interference proceeding, the general policy is that the reexamination will not be delayed or stayed. This is due to the requirement in 35 U.S.C. 314(c) that all reexamination proceedings be conducted with “special dispatch” within the Office. As stated in the MPEP: In general,…
Read MoreHow can a patent owner make amendments in an inter partes reexamination proceeding?
A patent owner can make amendments in an inter partes reexamination proceeding by filing a paper in compliance with 37 CFR 1.530(d)-(k) and 37 CFR 1.943. The MPEP states: Amendments to the patent being reexamined (where the patent has not expired) may be filed by the patent owner in the reexamination proceeding. Such amendments may…
Read MoreWhat is the difference between correcting inventorship in inter partes and ex parte reexamination?
There is no difference in the process of correcting inventorship between inter partes and ex parte reexamination proceedings. According to MPEP § 2666.03: “Correction of inventorship in an inter partes reexamination proceeding is effected in the same manner that correction of inventorship in an ex parte reexamination proceeding is effected.” This means that regardless of…
Read MoreWhat information is included in an Inter Partes Reexamination Certificate?
An Inter Partes Reexamination Certificate contains specific information about the reexamined patent. MPEP 2690 outlines the following details: The title “INTER PARTES REEXAMINATION CERTIFICATE” An ordinal number indicating its sequence The original patent number followed by a kind code suffix The date of issuance The title of the invention Name of the inventor Current classification…
Read MoreWhere can I find information on the former practice of inter partes reexamination?
For those seeking information on the former practice of inter partes reexamination, the MPEP provides two main resources: Revision 7 of the 8th Edition of the MPEP The Federal Register notice titled “Revision of Standard for Granting an Inter Partes Reexamination Request” (76 FR 59055, September 23, 2011) These resources provide comprehensive guidance on how…
Read MoreCan informal amendments be accepted in inter partes reexamination proceedings?
No, informal amendments are not accepted in inter partes reexamination proceedings. The MPEP 2685 explicitly states: “An informal amendment by the patent owner will not be accepted, because that would be tantamount to an ex parte interview.” This policy ensures that all communications and amendments are formally submitted and properly recorded, maintaining the integrity and…
Read MoreHow does reopening prosecution after ACP affect patent owner’s amendment rights?
Reopening prosecution after Action Closing Prosecution (ACP) can significantly affect a patent owner’s amendment rights. If prosecution is reopened at the ACP stage, the patent owner’s ability to amend claims is limited. MPEP 2673.01 states: “If prosecution were reopened at the ACP stage, the patent owner loses rights as to amending the claims in response…
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