Can a third party requester get an extension of time in inter partes reexamination?
No, extensions of time are not available to third party requesters in inter partes reexamination proceedings. The MPEP explicitly states: “It should be noted that extensions of time under 37 CFR 1.956 are not available to the third party requester.” This limitation is specific to inter partes reexamination and reflects the process’s focus on the…
Read MoreCan a third party requester file supplemental comments in inter partes reexamination?
No, a third party requester is not allowed to file supplemental comments in inter partes reexamination. The MPEP clearly states: “The third party requester is not permitted to file further papers to supplement the third party requester’s written comments. Any such improper supplemental comments will not be considered, and will be returned.“ However, there is…
Read MoreWhat rights does a third party requester have regarding new findings of patentability in inter partes reexamination?
In inter partes reexamination, a third party requester’s rights to comment on new findings of patentability are limited until the appeal stage, unless the patent owner responds to the finding. According to MPEP 2673.01: “The third party requester has no right to comment on and address a finding of patentability made during the reexamination proceeding…
Read MoreWhat are the third party requester’s rights after a patent owner’s submission following an ACP?
After a patent owner’s submission following an Action Closing Prosecution (ACP), the third party requester has the following rights: File one set of comments responsive to the patent owner’s submission Comments must be filed within 30 days from the date of service of the patent owner’s submission Comments are limited to responding to the patent…
Read MoreWho can represent a third party requester in an inter partes reexamination?
A third party requester in an inter partes reexamination must be represented by a registered patent practitioner. The MPEP states: “A third party requester may not be represented during a reexamination proceeding by an attorney or other person who is not registered to practice before the Office.” This means that only attorneys or agents who…
Read MoreWhat are the restrictions on a third-party requester’s rebuttal brief in inter partes reexamination?
The restrictions on a third-party requester’s rebuttal brief in inter partes reexamination are specified in MPEP 2678, which cites 37 CFR 41.71(c): “(1) The rebuttal brief of any requester may be directed to the examiner’s answer and/or the respondent brief of the owner. (2) The rebuttal brief of a requester may not be directed to…
Read MoreHow should examiners handle third-party requester proposed rejections in inter partes reexamination?
Examiners must carefully consider and address all third-party requester proposed rejections in inter partes reexamination. MPEP 2660 provides clear guidance on this matter: “The examiner should not refuse to adopt a rejection properly proposed by the requester as being cumulative to other rejections applied. Rather, any such proposed rejection must be adopted to preserve parties’…
Read MoreCan a third party requester participate in the appeal process of inter partes reexamination?
Can a third party requester participate in the appeal process of inter partes reexamination? Yes, a third party requester can participate in the appeal process of inter partes reexamination. MPEP 2674 outlines the rights and limitations of the third party requester in the appeal process: “The third party requester may file a respondent brief in…
Read MoreWhat happens if a third party requester doesn’t comment on a patent owner’s response in inter partes reexamination?
If a third party requester does not file timely written comments on a patent owner’s response in inter partes reexamination, any subsequent submission of comments on that specific response will be refused consideration. However, this does not affect the requester’s rights to comment on future patent owner responses. As stated in MPEP 2666.20: “Where a…
Read MoreWhat are the consequences if a third party requester fails to file a timely appeal in inter partes reexamination?
If a third party requester fails to file a timely appeal or if their appeal is dismissed in inter partes reexamination, they lose certain rights in the appeal process. However, they may retain some limited participation options depending on the circumstances. According to MPEP 2666.20: “Where the third party requester fails to make a timely…
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