What is the duty of disclosure in inter partes reexamination proceedings?
The duty of disclosure in inter partes reexamination proceedings is defined in 37 CFR 1.933. It requires that: “Each individual associated with the patent owner in an inter partes reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information…
Read MoreWhat are the requirements for document service in inter partes reexamination?
In inter partes reexamination, there are specific requirements for document service to ensure both parties are informed of all communications. According to MPEP 2654, which cites 35 U.S.C. 314(b)(1): “With the exception of the inter partes reexamination request, any document filed by either the patent owner or the third-party requester shall be served on the…
Read MoreIs an appeal to a U.S. District Court available in inter partes reexamination proceedings?
No, an appeal to a U.S. District Court is not available in inter partes reexamination proceedings. The MPEP 2683 clearly states: “The remedy by civil action under 35 U.S.C. 145 is not available to the patent owner and the third party requester in an inter partes reexamination proceeding. Patent owners and third party requesters dissatisfied…
Read MoreHow does the Official Gazette distinguish between different types of reexamination certificates?
The Official Gazette clearly indicates the type of certificate being issued. According to MPEP 2291: “The notice will clearly indicate the type of certificate, e.g., an ex parte reexamination certificate (for proceedings ordered under 35 U.S.C. 304), an inter partes reexamination certificate, a supplemental examination certificate, or an ex parte reexamination certificate from reexamination ordered…
Read MoreHow is an inter partes reexamination certificate distinguished from an ex parte reexamination certificate in the Official Gazette?
The Official Gazette notice clearly distinguishes an inter partes reexamination certificate from an ex parte reexamination certificate. As stated in MPEP 2691: “The notice of reexamination certificate will clearly state that it is a certificate for a concluded inter partes reexamination proceeding (as opposed to an ex parte reexamination proceeding).” This clear statement ensures that…
Read MoreWhat are the circumstances for discretionary reopening of prosecution after ACP?
Examiners are encouraged to be liberal in reopening prosecution after Action Closing Prosecution (ACP) when the equities of the situation make it appropriate. This is because patent owners cannot continue the proceeding through other means such as refiling or requesting continued examination. MPEP 2673.01 provides an example: “Patent owner might submit an amendment after the…
Read MoreCan a Director’s decision on an inter partes reexamination request be petitioned?
The Director’s decision on an inter partes reexamination request is considered final and cannot be petitioned. The MPEP 2640 clearly states: “The decision ordering reexamination is final and non-appealable. See 35 U.S.C. 312(c) and Heinl v. Godici, 143 F.Supp.2d 593, 596-98 (E.D. Va. 2001).” This means that once the Director has made a decision to…
Read MoreWhat is the difference between handling prior art citations in ex parte and inter partes reexaminations?
While there are similarities in handling prior art citations between ex parte and inter partes reexaminations, there are also key differences. According to MPEP 2602: “If the prior art citation satisfies 37 CFR 1.501 and was submitted prior to an order for reexamination, the cited documents (citations) will be considered in an inter partes reexamination…
Read MoreWhat is the process for handling dependent claims in an inter partes reexamination certificate?
What is the process for handling dependent claims in an inter partes reexamination certificate? The handling of dependent claims in an inter partes reexamination certificate follows specific rules to ensure clarity and proper referencing. According to MPEP 2688: “If a base claim is canceled, each claim which depends from that base claim must be re-written…
Read MoreWhat is the current status of inter partes reexamination requests?
As of September 16, 2012, no new requests for inter partes reexamination can be filed. The Manual of Patent Examining Procedure (MPEP) Section 2614 states: “No requests for inter partes reexamination may be filed on or after September 16, 2012.” This change was part of the America Invents Act (AIA) which replaced inter partes reexamination…
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