What are the rules for third party comments when a patent owner’s response is incomplete due to a fee requirement?
When a patent owner’s response is incomplete solely due to a fee requirement (other than excess claims fees), the rules for third party comments are as follows: Third party requester comments must be filed within 30 days from the date of service of the patent owner’s original response. The third party requester is not permitted…
Read MoreCan a patent owner file a supplemental response in an inter partes reexamination?
Yes, a patent owner can file a supplemental response in an inter partes reexamination, but it must meet specific requirements. According to MPEP 2666, “Pursuant to 37 CFR 1.945(b), any supplemental response to the Office action in an inter partes reexamination proceeding must be accompanied by a showing of sufficient cause why the supplemental response…
Read MoreWhat is a substantial new question of patentability in inter partes reexamination?
A substantial new question of patentability (SNQ) is a key criterion for granting inter partes reexamination requests filed before September 16, 2011. It refers to a question that: Has not been raised in a previous examination of the patent Is likely to be considered important by a reasonable examiner in determining patentability Is based on…
Read MoreWhat are the steps for filing an appeal to the Federal Circuit in an inter partes reexamination?
According to MPEP 2683, the steps for filing an appeal to the Federal Circuit in an inter partes reexamination are: In the USPTO, timely file a written notice of appeal directed to the Director in accordance with 37 CFR 1.302 and 1.304. In the Federal Circuit, file a copy of the notice of appeal and…
Read MoreWhat was the standard for granting an inter partes reexamination request?
The standard for granting an inter partes reexamination request changed over time. Initially, under 35 U.S.C. 312(a), the standard was whether “a substantial new question of patentability affecting any claim of the patent concerned is raised by the request,” known as the SNQ standard. However, during the one-year transition period (September 16, 2011 to September…
Read MoreWhat standards are used to evaluate reexamination requests?
The standards used to evaluate reexamination requests have changed over time. For requests filed: Prior to September 16, 2011: The standard was “substantial new question of patentability” (SNQ). From September 16, 2011 to September 15, 2012: The standard was “reasonable likelihood that requester will prevail” (RLP). The MPEP provides specific language for each standard: “No…
Read MoreWhat is the standard for granting inter partes reexamination?
The granting of an inter partes reexamination request is based on a specific standard set by law. The MPEP 2609 states: The standard for granting reexamination (see 35 U.S.C. 312(a)) must be met for reexamination to be ordered; This standard, as defined in 35 U.S.C. 312(a), requires that the request must raise a substantial new…
Read MoreWhat is the “special dispatch” requirement for inter partes reexamination proceedings?
The “special dispatch” requirement for inter partes reexamination proceedings is a statutory mandate that these proceedings be conducted quickly. Key points include: It’s required by 35 U.S.C. 314(c). It applies to all aspects of the reexamination, including appeals. The Director can make exceptions for “good cause.” It’s a factor in decisions about suspending proceedings due…
Read MoreWhat is “special dispatch” in inter partes reexamination proceedings?
“Special dispatch” is a requirement for inter partes reexamination proceedings as mandated by 35 U.S.C. 314(c). The MPEP states: “In view of the requirement for ‘special dispatch,’ all reexamination proceedings will be ‘special’ throughout their pendency in the Office.” This means that inter partes reexamination proceedings are given priority and expedited treatment throughout the entire…
Read MoreWhat is the significance of the first Office action in inter partes reexamination?
The first Office action in inter partes reexamination is a crucial milestone that significantly impacts the submission of papers. According to MPEP 2625 and 37 CFR 1.939: “Unless otherwise authorized, no paper shall be filed prior to the initial Office action on the merits of the inter partes reexamination.” The significance of the first Office…
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