What should be included in an appellant brief for an inter partes reexamination?
An appellant brief for an inter partes reexamination must include several key elements as specified in 37 CFR 41.67(c)(1). The MPEP states: “37 CFR 41.67(c)(1) requires that the appellant shall provide, in the appellant brief, the authorities and arguments on which the appellant will rely to maintain the appeal, a concise explanation of subject matter…
Read MoreWhat are the procedural requirements for conducting an appeal conference?
The procedural requirements for conducting an appeal conference in inter partes reexamination are outlined in MPEP 2676, which states: “The appeal conference will be held in accordance with the procedures as set forth in MPEP § 1207.01.” These procedures ensure consistency in the appeal conference process across different cases. The conference is arranged by the…
Read MoreWhat is an appeal conference in inter partes reexamination?
An appeal conference in inter partes reexamination is a procedure conducted when an examiner believes an appeal should go forward and an examiner’s answer should be prepared. According to MPEP 2676, “If the examiner reaches the conclusion that the appeal should go forward and an examiner’s answer should be prepared, the examiner will arrange (via…
Read MoreWho is responsible for determining compliance of appeal briefs in inter partes reexamination?
As of August 17, 2010, the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) has sole responsibility for determining whether appeal briefs in inter partes reexamination comply with the relevant regulations. The MPEP 2674 states: “Effective August 17, 2010, the Board was delegated the sole responsibility for determining whether appeal…
Read MoreCan amendments be entered after a Right of Appeal Notice (RAN) in inter partes reexamination?
According to MPEP 2673, amendments filed after a Right of Appeal Notice (RAN) in inter partes reexamination are generally not allowed. The MPEP states: “An amendment filed after the RAN will not be entered at all, in the absence of a grantable petition under 37 CFR 1.183 because 37 CFR 1.953(c) prohibits an amendment after…
Read MoreCan a patent owner amend claims after an Action Closing Prosecution (ACP)?
According to MPEP 2673, a patent owner cannot, as a matter of right, amend claims rejected in the ACP, add new claims after an ACP, or reinstate previously canceled claims. The MPEP states: “A showing under 37 CFR 1.116(b) is required and will be evaluated by the examiner for all proposed amendments after the ACP,…
Read MoreWhat types of third party submissions are allowed in inter partes reexamination?
In inter partes reexamination, third parties other than the requester are generally not allowed to make submissions. However, there are two exceptions, as stated in MPEP 2667: A 37 CFR 1.501 art citation limited to patents and printed publications, along with an explanation of their relevance. Bare notice of suits and other proceedings involving the…
Read MoreWhat papers are allowed to be filed prior to the first Office action in inter partes reexamination?
According to MPEP 2625, only a limited set of papers are allowed to be filed prior to the first Office action in inter partes reexamination. These include: Citations of patents or printed publications under 37 CFR 1.501 and 1.933 Another complete request under 37 CFR 1.510 Notifications pursuant to MPEP § 2686 The MPEP states:…
Read MoreWhat happens if all patent claims are canceled in an Inter Partes Reexamination?
If all patent claims are canceled as a result of an inter partes reexamination, the USPTO will issue a certificate reflecting this outcome. According to MPEP 2688: “If a certificate issues which cancels all of the claims of the patent, no further Office proceedings will be conducted with regard to that patent or any reissue…
Read MoreWhat happens when all claims are canceled in an inter partes reexamination proceeding?
When all claims in an inter partes reexamination proceeding are to be canceled, the following process occurs: The examiner issues a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) indicating that all claims have been canceled and terminating the prosecution. An examiner’s amendment is drafted as an attachment to the NIRC, canceling all…
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