How should a patent owner serve a response on the third party requester in an inter partes reexamination?
In an inter partes reexamination, the patent owner is required to serve a copy of their response to an Office action on the third party requester. According to MPEP 2666: “A copy of the response must be served on the third party requester in accordance with 37 CFR 1.248.” The service of the response is…
Read MoreCan third-party comments in inter partes reexamination address issues not raised by the patent owner?
Third-party comments in inter partes reexamination are limited to addressing issues raised by the patent owner’s response. The MPEP 2666.05 states: “The third party requester comments may not address any issue that was not raised in the Office action or the patent owner’s response.” This restriction ensures that the scope of the reexamination remains focused…
Read MoreWhat is the scope of inter partes reexamination?
The scope of inter partes reexamination is defined by 37 CFR 1.906, which states: Claims will be examined based on patents or printed publications. For subject matter added or deleted during reexamination, claims will be examined based on 35 U.S.C. 112 requirements. Claims cannot enlarge the scope of the original patent claims. Issues outside of…
Read MoreHow can a patent owner satisfy the duty of disclosure in an inter partes reexamination?
According to 37 CFR 1.933(a), a patent owner can satisfy the duty of disclosure in an inter partes reexamination by: “The duty to disclose all information known to be material to patentability in an inter partes reexamination proceeding is deemed to be satisfied by filing a paper in compliance with the requirements set forth in…
Read MoreWhat is the role of panel review conferences in issuing a NIRC?
Panel review conferences play a crucial role in the issuance of a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) when at least one claim is found patentable. The process involves: The examiner formulates a draft preliminary NIRC. The examiner informs their supervisor (SPRS or QAS) of the intent to issue the NIRC.…
Read MoreWhat is the process for reviving a terminated inter partes reexamination proceeding?
To revive a terminated inter partes reexamination proceeding, the patent owner must file a petition under 37 CFR 1.137. The petition must demonstrate that the delay in response was unintentional. According to the MPEP: “If the patent owner in an inter partes reexamination proceeding fails to file a timely and appropriate response to any Office…
Read MoreHow can a party seek review of a PTAB decision in inter partes reexamination?
Parties seeking review of a Patent Trial and Appeal Board (PTAB) decision in inter partes reexamination have several options, depending on the nature of the issue. According to MPEP 2681: For procedural matters: File a petition to the USPTO The petition must show a convincing error, abuse of discretion, or policy issue For substantive matters:…
Read MoreWhat is the review process after an examiner completes an action in inter partes reexamination?
After an examiner completes an action in inter partes reexamination, it undergoes a review process. The MPEP outlines this process: “After the conference, the proceeding, with the completed action, will be forwarded to the CRU Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) for review.” If corrections or revisions are…
Read MoreWhat are the restrictions on submitting copending reexamination proceedings and applications?
The USPTO has specific restrictions regarding the submission of copending reexamination proceedings and applications during inter partes reexamination. MPEP 2686 states: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying…
Read MoreWho is responsible for compliance with the duty of disclosure in inter partes reexamination?
The responsibility for compliance with the duty of disclosure in inter partes reexamination rests with specific individuals. According to 37 CFR 1.933(b): “The responsibility for compliance with this section rests upon the individuals designated in paragraph (a) of this section, and no evaluation will be made by the Office in the reexamination proceeding as to…
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