How are claim amendments handled in inter partes reexamination?
How are claim amendments handled in inter partes reexamination? In inter partes reexamination, claim amendments are subject to specific rules and procedures. The MPEP states: “Amendments in reexamination proceedings are made by filing a paper in compliance with 37 CFR 1.530(d)-(k).” (MPEP 2666) This means that: Amendments must be made by filing a separate paper…
Read MoreHow should prior art patents and printed publications be cited in an inter partes reexamination request?
When citing prior art patents and printed publications in an inter partes reexamination request, follow these guidelines from MPEP 2614: Provide a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. Include copies of all cited patents or printed publications, except those already…
Read MoreCan a patent owner challenge a premature Action Closing Prosecution (ACP)?
Yes, a patent owner can challenge a premature Action Closing Prosecution (ACP) in inter partes reexamination. The process is as follows: File comments under 37 CFR 1.951(a) Additionally, file a petition under 37 CFR 1.181 to challenge the making of the action an ACP The petition must be filed within the time period for filing…
Read MoreCan a requester challenge a basis for granting reexamination?
While a requester can petition against a denial of reexamination, challenging a basis for granting reexamination is more limited. According to MPEP 2648: “37 CFR 1.927 applies only to challenging a basis for denying of reexamination; it does not apply to challenging a basis for granting of reexamination.” However, there is a specific circumstance where…
Read MoreCan I use certificate of mailing and transmission procedures for inter partes reexamination documents?
The use of certificate of mailing and transmission procedures (37 CFR 1.8) is allowed for most documents in an inter partes reexamination proceeding, with some important exceptions. The MPEP states: “The certificate of mailing and transmission procedures (37 CFR 1.8) may be used to file any paper in an inter partes reexamination proceeding, except for…
Read MoreWhat is the role of the Central Reexamination Unit (CRU) in processing inter partes reexamination requests?
The Central Reexamination Unit (CRU) plays a crucial role in processing inter partes reexamination requests: Receives and reviews the reexamination requests Prepares and mails official notices Coordinates the initial processing of requests According to MPEP 2626: “A Notice of Inter Partes Reexamination Request Filing Date will be prepared and mailed by the Central Reexamination Unit…
Read MoreWhat is the role of the Central Reexamination Unit (CRU) in the appeal process?
The Central Reexamination Unit (CRU) plays a crucial role in managing the flow of documents and proceedings in the appeal process. MPEP 2676 outlines this role: “All appellant and respondent briefs will be processed by the Board and the reexamination proceeding then forwarded to the Central Reexamination Unit (CRU). The CRU will forward the reexamination…
Read MoreHow are cancelled claims indicated in an inter partes reexamination certificate?
How are cancelled claims indicated in an inter partes reexamination certificate? In an inter partes reexamination certificate, cancelled claims are clearly indicated to show the changes made to the patent. According to MPEP 2688: “Claims which were canceled by the reexamination proceeding are omitted from the inter partes reexamination certificate. Such claims are listed at…
Read MoreCan a patent owner appeal an Action Closing Prosecution (ACP)?
No, a patent owner cannot appeal an Action Closing Prosecution (ACP) in an inter partes reexamination. The MPEP 2671.02 clearly states: “Although an Action Closing Prosecution (ACP) has many attributes similar to a ‘final rejection’ made in an ex parte reexamination proceeding or in a non-provisional application, it is not a final action, and, as…
Read MoreHow are excess claims fees calculated in inter partes reexamination?
Excess claims fees in inter partes reexamination are calculated based on the number of claims added beyond certain thresholds. According to MPEP 2666.04: Independent claims fee (37 CFR 1.20(c)(3)): Due for each independent claim in excess of three AND in excess of the number of independent claims in the patent being reexamined. Total claims fee…
Read More