What happens if only a fee is needed to complete a patent owner’s response in inter partes reexamination?
In inter partes reexamination, if only a fee (other than an excess claims fee to support an amendment) is needed to complete a patent owner’s response, the third party requester is not allowed to file comments after the fee is submitted. As stated in MPEP 2666.20: “However, where only a fee (other than an excess…
Read MoreWhat is the timeframe for appealing a Board decision to the Federal Circuit in an inter partes reexamination?
The timeframe for appealing a Board decision to the U.S. Court of Appeals for the Federal Circuit in an inter partes reexamination is clearly defined in MPEP 2662: The time for the patent owner and/or the third party requester to file a notice of appeal to the U.S. Court of Appeals for the Federal Circuit…
Read MoreCan the time period for paying excess claims fees be extended in reexamination?
Yes, the time period for paying excess claims fees in reexamination can be extended. According to MPEP 2666.04: “An extension of time to correct the fee deficiency may be requested under 37 CFR 1.956.” This means that if you receive a Notice of Defective Paper In Inter Partes Reexamination (PTOL-2069) for unpaid excess claims fees,…
Read MoreWhat are the expectations for parties involved in inter partes reexamination proceedings?
Parties involved in inter partes reexamination proceedings are expected to conduct themselves professionally and in accordance with USPTO regulations. The MPEP 2609 states: Patent owners and third party requesters are cautioned that the reexamination statute, regulations, and published examining procedures do not countenance so-called “litigation tactics” in reexamination proceedings. The parties are expected to conduct…
Read MoreHow are excess claims fees handled in inter partes reexamination?
In inter partes reexamination, excess claims fees are handled differently from other fees. If a patent owner fails to pay excess claims fees: The new claim “package” in the patent owner’s original request is not entered until the excess claims fee is paid. The third party requester cannot comment on the new claim “package” until…
Read MoreWhat information is included in the examiner’s statement for an inter partes reexamination?
The examiner’s statement in an inter partes reexamination contains crucial information about the substantial new question of patentability. According to MPEP 2640: “The statement will generally point out what it considers to be the substantial new question of patentability which presents a reasonable likelihood that the requester will prevail.” The examiner’s statement typically includes: Identification…
Read MoreWhat is an examiner’s answer in an inter partes reexamination proceeding?
An examiner’s answer is a written response prepared by the primary examiner in an inter partes reexamination proceeding. It addresses the arguments presented in the appellant’s and/or requester’s briefs. According to MPEP 2677, the examiner’s answer should include: An explanation of the invention claimed and references relied upon Grounds of rejection Reasons for patentability Responses…
Read MoreHow are examiner’s amendments handled in inter partes reexamination proceedings?
Examiner’s amendments in inter partes reexamination proceedings are handled differently from regular patent applications due to the prohibition of interviews. Key points include: Examiner’s amendments can only be made without patent owner authorization. They must be included as a formal examiner’s amendment accompanying the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). The…
Read MoreHow does an examiner’s withdrawal of a rejection affect third party requester rights in inter partes reexamination?
When an examiner withdraws a ground of rejection in inter partes reexamination, it can affect the third party requester’s rights in several ways, depending on the circumstances: Examiner-initiated rejection: If the examiner withdraws a rejection they originally initiated, the third party requester may propose the withdrawn rejection in their next set of comments. If the…
Read MoreWhat is the examiner’s role after a Board decision with a new ground of rejection?
After a Board decision with a new ground of rejection, the examiner’s role is defined in MPEP 2682 under 37 CFR 41.77(d). The key points are: The Board will formally remand the proceeding back to the examiner. The examiner will consider the submissions under 37 CFR 41.77(b)(1) (patent owner’s request to reopen) and 37 CFR…
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