How did the America Invents Act (AIA) affect prior art citations in inter partes reexamination?
The Leahy-Smith America Invents Act (AIA) introduced new provisions for submitting information in patent proceedings, but it did not significantly alter the process for prior art citations in inter partes reexamination. According to MPEP 2602: “The Leahy-Smith America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, enacted September 16, 2011, provided, under 35…
Read MoreCan affidavits be used in inter partes reexamination?
Yes, affidavits can be used in inter partes reexamination proceedings. The MPEP states: “Affidavits under 37 CFR 1.131(a) and 1.132 may be utilized in a reexamination proceeding.” However, there are limitations on the use of certain types of affidavits: “Note, however, that an affidavit under 37 CFR 1.131(a) may not be used to ‘swear behind’…
Read MoreHow are affidavits treated after an Action Closing Prosecution (ACP) in inter partes reexamination?
According to MPEP 2673, affidavits submitted after an Action Closing Prosecution (ACP) in inter partes reexamination are treated similarly to amendments submitted after an ACP. The MPEP states: “Affidavits submitted after an ACP are subject to the same treatment as amendments submitted after an ACP. This is analogous to the treatment of affidavits submitted after…
Read MoreHow should an examiner address new arguments or evidence in an examiner’s answer?
In an inter partes reexamination proceeding, examiners are not permitted to introduce new grounds of rejection or new findings of patentability in an examiner’s answer. According to MPEP 2677, the examiner’s answer must include an explicit statement that: “It does not contain any new ground of rejection, and it does not contain any new finding…
Read MoreHow should I address correspondence for inter partes reexamination?
For inter partes reexamination correspondence sent via U.S. Postal Service Mail, address it to: Mail Stop “Inter Partes Reexam”Attn: Central Reexamination UnitCommissioner for PatentsP.O. Box 1450Alexandria, VA 22313-1450 For hand-carried or delivery service correspondence, address it to: Customer Service WindowRandolph Building401 Dulany StreetAlexandria, VA 22314 The MPEP advises: It is strongly recommended that the Mail…
Read MoreWhat is an Action Closing Prosecution (ACP) in inter partes reexamination?
An Action Closing Prosecution (ACP) is a type of Office action in inter partes reexamination that signifies the examiner’s intention to close prosecution. According to MPEP 2671.01, an ACP is typically issued when: The examiner has considered the issues a second or subsequent time The examiner has determined the patentability of all claims However, the…
Read MoreWhat types of third-party submissions are accepted during inter partes reexamination?
During an inter partes reexamination proceeding, the USPTO generally does not enter third-party submissions filed after the date of the order into the reexamination file or patent file, unless the third party is a reexamination requester. However, MPEP 2686 states: “[T]he Office will, at any time, accept from any parties, for entry into the reexamination…
Read MoreHow does 35 U.S.C. 312(a) affect the determination in inter partes reexamination?
35 U.S.C. 312(a) provides flexibility in the determination process for inter partes reexamination. According to MPEP 2644: “35 U.S.C. 312(a) provides that the determination on a request will be made ‘with or without consideration of other patents or printed publications,’ i.e., other than those relied upon in the request.” This means that the examiner has…
Read MoreWhich MPEP chapters discuss reexamination procedures?
The MPEP discusses reexamination procedures in two chapters: MPEP Chapter 2200 covers ex parte reexamination MPEP Chapter 2600 covers inter partes reexamination requests (for those filed before September 16, 2012) As stated in MPEP 1400.01: “The fourth way (reexamination) is discussed in MPEP Chapter 2200 for ex parte reexamination and MPEP Chapter 2600 for inter…
Read MoreWhat petitions are decided by the Director of the Central Reexamination Unit (CRU)?
The Director of the Central Reexamination Unit (CRU) decides on several types of petitions related to ex parte and inter partes reexamination proceedings. According to MPEP 1002.02(c)(4), these include: Petitions for extension of time in ex parte and inter partes reexamination proceedings, except those related to court actions Petitions under 37 CFR 1.182 and 1.183…
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