Can patent claims be broadened during inter partes reexamination?
No, patent claims cannot be broadened during inter partes reexamination. The MPEP 2609 explicitly states: The scope of the patent claims cannot be enlarged by amendment; This limitation is a crucial aspect of the reexamination process. It ensures that the reexamination focuses on reviewing the validity of existing claims rather than expanding patent rights. Patent…
Read MoreCan claims be broadened during inter partes reexamination?
No, claims cannot be broadened during inter partes reexamination. The MPEP clearly states: “Where new claims are presented, or where any part of the disclosure is amended, the claims of the inter partes reexamination proceeding should be examined under 35 U.S.C. 314, to determine whether they enlarge the scope of the original claims. 35 U.S.C.…
Read MoreHow does the Board handle new grounds of rejection in inter partes reexamination appeals?
How does the Board handle new grounds of rejection in inter partes reexamination appeals? In inter partes reexamination appeals, the Board has the authority to issue new grounds of rejection. According to MPEP 2674: “The Board may also issue new grounds of rejection under 37 CFR 41.77(b). For example, the Board might state the following:…
Read MoreWhat happens if the Board affirms a rejection of some claims but reverses others in inter partes reexamination?
What happens if the Board affirms a rejection of some claims but reverses others in inter partes reexamination? In inter partes reexamination, when the Board issues a decision that affirms some rejections while reversing others, the examiner must follow specific procedures. According to MPEP 2674: “Where the Board decision affirms a rejection of some claims…
Read MoreWho can benefit from intervening rights in inter partes reexamination?
Intervening rights in inter partes reexamination can benefit individuals or entities who have used or made preparations to use a patented invention before the patent was amended or new claims were added during reexamination. According to 35 U.S.C. 316(b), these rights apply to: “Any person who made, purchased, or used within the United States, or…
Read MoreWhat are the basic characteristics of inter partes reexamination?
Inter partes reexamination has several key characteristics as outlined in MPEP 2609: It could be requested by any third party before September 16, 2012, during the enforceability period of eligible patents. Prior art is limited to patents or printed publications under 35 U.S.C. 102 and 103. A specific standard must be met for reexamination to…
Read MoreAre automatic extensions available in inter partes reexamination?
No, automatic extensions are not available in inter partes reexamination proceedings. This differs from ex parte reexamination, where an automatic two-month extension is granted for the first response to a final Office action. The MPEP clarifies: “The automatic extension given in ex parte reexamination does not apply to the first response to an Action Closing…
Read MoreWhat are the requirements for an attorney or agent filing an inter partes reexamination request?
When an attorney or agent files an inter partes reexamination request on behalf of a client (the third party requester), they must meet certain requirements. According to MPEP 2613: “Where an attorney or agent files a request for an inter partes reexamination for an identified client (the third party requester), he or she may act…
Read MoreWhat are the time limits for filing an appellant brief in an inter partes reexamination?
The time limits for filing an appellant brief in an inter partes reexamination are specified in 37 CFR 41.66. The brief must be filed by the later of: Two months from the date of the examiner’s answer The time remaining in the maximum six-month time period set in MPEP § 2662 to file an appeal…
Read MoreWhat is the required fee for filing an appellant brief in inter partes reexamination?
A fee is required when filing an appellant brief in an inter partes reexamination. The MPEP states: “A fee as set forth in 37 CFR 41.20(b)(2) is required when the appellant brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a).” It’s important to note that: The fee is only…
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