What are the consequences of a patent owner failing to respond to an Office action in an inter partes reexamination?
Failing to respond to an Office action in an inter partes reexamination can have serious consequences for the patent owner. While the MPEP section provided doesn’t directly address this, it refers to another section that does: “See MPEP § 2666.10 for the consequences of the failure by the patent owner to respond to the Office…
Read MoreWhat happens when a reissue application and an inter partes reexamination proceeding are pending concurrently for the same patent?
When a reissue application and an inter partes reexamination proceeding are pending concurrently on the same patent, the general policy of the USPTO is that they will not be conducted separately at the same time. As stated in the MPEP: “The general policy of the Office is that the examination of a reissue application and…
Read MoreWhat are the concluding paragraphs in an inter partes reexamination Office action?
The concluding paragraphs in an inter partes reexamination Office action serve important purposes related to the “special dispatch” requirement and future prosecution. According to MPEP 2671.01, these paragraphs should include: A caution to the patent owner about making a complete response, as the next action is expected to be an Action Closing Prosecution (ACP). A…
Read MoreHow is a patent owner’s completed response treated in inter partes reexamination?
In inter partes reexamination, a patent owner’s completed response is generally treated as a new response on-the-merits to the Office action. This treatment has implications for third party requester comments: The third party requester is entitled to respond to the completed response. The requester has 30 days from the date of service of the completed…
Read MoreWhat types of communications are allowed in inter partes reexamination proceedings?
In inter partes reexamination proceedings, all communications between the Office and the parties (patent owner and third party requester) must be in writing and filed with the Office for entry into the record. The MPEP 2685 states: “All communications between the Office and the patent owner (and the third party requester) which are directed to…
Read MoreWhat are common defects in inter partes reexamination submissions?
Common defects in inter partes reexamination submissions include: Lack of proof of service Unsigned paper Paper signed by a person not of record Amendment not complying with 37 CFR 1.530(d)-(j) Amendment not complying with 37 CFR 1.20(c)(3) and/or (c)(4) The MPEP 2666.50 states: “Defects in the submission can be, for example: (A) The paper filed…
Read MoreWhat is the process for comments and replies after an examiner’s determination under 37 CFR 41.77(d)?
The process for comments and replies after an examiner’s determination under 37 CFR 41.77(d) is outlined in MPEP 2682: The examiner’s determination sets two one-month time periods: One month from the mailing date of the determination for the patent owner and third party requester(s) to file comments on the examiner’s determination One month from the…
Read MoreWhat claims are considered when deciding on an inter partes reexamination request?
The claims considered when deciding on an inter partes reexamination request are those in effect at the time of the determination. According to MPEP 2643, “The claims of the patent in effect at the time of the determination will be the basis for deciding whether ‘a substantial new question of patentability’ or ‘a reasonable likelihood…
Read MoreCan foreign priority or domestic benefit be claimed during inter partes reexamination?
Yes, foreign priority or domestic benefit can be claimed during inter partes reexamination under certain circumstances. The MPEP states: “Amendments may be made to the specification to correct, for example, an inadvertent failure to claim foreign priority or the continuing status of the patent relative to a parent application if such correction is necessary to…
Read MoreHow are claims selected for reexamination in inter partes proceedings?
In inter partes reexamination, claims are selected for reexamination based on whether they raise a substantial new question of patentability (SNQ). The MPEP provides examples of this process: Claims 1 – 3 of the Key patent will be reexamined. … Accordingly, claim 4 will not be reexamined. … Finally, reexamination has not been requested for…
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