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 More

Can 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 More

What 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 More

What 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 More

What 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 More

What 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 More