How does an examiner prepare for an appeal conference?
An examiner prepares for an appeal conference by thoroughly reviewing the case and all relevant briefs. According to MPEP 2676, “In preparing for the appeal conference, the examiner should review the case so that he/she will be prepared to discuss the issues raised in all the briefs. The examiner should be prepared to propose to…
Read MoreHow does an examiner handle withdrawals of rejections in an Action Closing Prosecution (ACP)?
When an examiner withdraws a rejection in an Action Closing Prosecution (ACP) during inter partes reexamination, they must handle it carefully. According to MPEP 2671.02: For rejections initiated by the examiner: “Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the ACP as a…
Read MoreHow does an examiner handle a submission not fully responsive to a non-final Office action?
An examiner has two main options when handling a submission not fully responsive to a non-final Office action, as outlined in MPEP 2666.30: Option A: Waive minor deficiencies and act on the submission. Option B: Treat it as an incomplete response and notify the patent owner to complete the response within a set period. The…
Read MoreWhen does an examiner decide to hold an appeal conference?
An examiner decides to hold an appeal conference when they believe the appeal should proceed and an examiner’s answer should be prepared. MPEP 2676 states: “If the examiner reaches the conclusion that the appeal should go forward and an examiner’s answer should be prepared, the examiner will arrange … for an appeal conference to be…
Read MoreWhat is the role of a conference in the inter partes reexamination process?
After receiving responses and comments, the examiner participates in a conference as part of the inter partes reexamination process. The MPEP states: “After the examiner receives notification of a response/comment (e.g., having the patent owner’s response to the Office action and any third party requester comments on that response), he/she will prepare for and participate…
Read MoreWhat happens after the examiner acknowledges a rebuttal brief?
After the examiner acknowledges a rebuttal brief, the following occurs: No further response from the examiner is typically required. Any additional replies or comments from any party will not be considered. The inter partes reexamination proceeding is forwarded to the Board for a decision on the appeal. The MPEP provides two examples of acknowledgments by…
Read MoreWhat is the difference between ex parte and inter partes reexamination?
While MPEP § 2695 doesn’t directly define the difference between ex parte and inter partes reexamination, it mentions both types in the context of reexamination of a reexamination: “…regardless of whether the reexamination certificate was issued for an ex parte reexamination or an inter partes reexamination, and regardless of whether the pending reexamination proceeding is…
Read MoreWhat are the estoppel effects of inter partes reexamination?
What are the estoppel effects of inter partes reexamination? Inter partes reexamination has significant estoppel effects that can impact future proceedings. The MPEP explains: “A third party requester is estopped from later asserting in any civil action, or in a subsequent inter partes reexamination, the invalidity/unpatentability of any claim finally determined to be valid and…
Read MoreWhat is the estoppel effect of litigation on inter partes reexamination under 35 U.S.C. 317(b)?
The estoppel effect under 35 U.S.C. 317(b) can prevent the maintenance of an inter partes reexamination under certain conditions: It applies when there’s a final court decision upholding patent validity. The requester must have been a party to the litigation. It only affects claims that were at issue in the litigation. It prevents reexamination based…
Read MoreWhat happens if an amendment enlarges the scope of claims in inter partes reexamination?
In inter partes reexamination, amendments that enlarge the scope of the claims are not permitted and will be rejected. Specifically: If an amendment is found to enlarge the scope of the claims of the patent, those claims will be rejected under 35 U.S.C. 314(a). This rejection is based on the prohibition against broadening the scope…
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