How are reasons for patentability provided in a NIRC?
Reasons for patentability must be provided for every claim identified as patentable in the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC), unless all claims are canceled. The process involves: Indicating why the claims found patentable are clearly patentable over cited patents or printed publications. Using a manner similar to indicating reasons for…
Read MoreHow should prior art be cited in an inter partes reexamination request?
When citing prior art in an inter partes reexamination request, it’s important to follow the specific guidelines outlined in MPEP 2657. The manual states: “The prior art patents and printed publications should be listed in a form similar to that provided by 37 CFR 1.98(b)(1) and (2). The request must also include a copy of…
Read MoreHow are untimely papers handled in inter partes reexamination?
Untimely papers in inter partes reexamination are handled according to specific procedures outlined in MPEP 2625. The process is as follows: Papers filed prior to the first Office action that are not authorized will be returned without consideration. If such papers are inadvertently entered, they will be expunged from the record. A notification letter about…
Read MoreHow are properly submitted documents handled in inter partes reexamination?
When documents are properly submitted in accordance with 37 CFR 1.985 during inter partes reexamination, the USPTO has a specific process for handling them. According to MPEP 2686: “Any proper submission pursuant to 37 CFR 1.985 will be promptly entered into the record of the reexamination file, and will be considered by the examiner as…
Read MoreHow are prior art citations handled when submitted after an order for inter partes reexamination?
The handling of prior art citations submitted after an order for inter partes reexamination depends on who submits them. According to MPEP 2602: Patent owner citations: “A patent owner citation will normally be considered if it is submitted in time to do so before the reexamination certificate issues.” Third party requester citations: “A third party…
Read MoreWhat happens if new prior art is discovered during inter partes reexamination?
If new prior art is discovered during inter partes reexamination, the process for handling it depends on who discovers the art and when. According to MPEP 2657: “After the request for inter partes reexamination is filed, the third party requester may cite additional prior art as provided for in 37 CFR 1.948. The third party…
Read MoreWhat happens if a third party requester submits improper comments in inter partes reexamination?
If a third party requester submits improper comments in inter partes reexamination, the examiner will take specific actions. The MPEP states: “If the written comments are improper, the examiner should return the written comments (the entire paper) with an explanation of what is not proper; if the comments have been scanned into the Image File…
Read MoreHow are amendments handled in inter partes reexamination proceedings?
Amendments in inter partes reexamination proceedings are handled as follows: Amendments should be submitted in proper form If appropriate, amendments will be entered for the reexamination proceeding, even if they don’t have legal effect until the certificate is issued “New matter” amendments to the disclosure will be required to be canceled Claims containing new matter…
Read MoreHow does the USPTO handle amendments or new claims in copending proceedings during reexamination?
The USPTO does not consider amendments or new claims from copending proceedings when deciding on a reexamination request. MPEP 2643 clearly states: “Amendments and/or new claims present in any copending reexamination or reissue proceeding for the patent to be reexamined will not (see MPEP § 2640, subsection II.(A)) be considered nor commented upon when deciding…
Read MoreHow should an examiner handle affidavits or declarations in an examiner’s answer?
When handling affidavits or declarations in an examiner’s answer for an inter partes reexamination proceeding, the examiner should follow the guidance provided in MPEP 2677. The key points are: The examiner should report their conclusions on any affidavits, declarations, or exhibits that were admitted to the record. Affidavits or declarations swearing behind a patent should…
Read More