What are intervening rights in inter partes reexamination?

Intervening rights in inter partes reexamination are legal protections granted to individuals or entities who have used or made substantial preparations to use a patented invention before the patent was amended or new claims were added during reexamination. These rights are outlined in 35 U.S.C. 316(b), which states: “Any proposed amended or new claim determined…

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How does the USPTO handle amendments or new claims in copending proceedings during reexamination?

The USPTO does not consider amendments or new claims from copending proceedings when deciding on a reexamination request. MPEP 2643 clearly states: “Amendments and/or new claims present in any copending reexamination or reissue proceeding for the patent to be reexamined will not (see MPEP § 2640, subsection II.(A)) be considered nor commented upon when deciding…

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Are amendments or new claims considered during supplemental examination?

No, amendments and new claims presented in copending post-patent Office proceedings are not considered during the supplemental examination process. According to MPEP 2816.01: “Amendments and/or new claims presented in any copending post-patent Office proceeding for the patent to be examined will not be considered nor commented upon when deciding a request for supplemental examination.” However,…

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Can new claims be added during ex parte reexamination?

Can new claims be added during ex parte reexamination? Yes, new claims can be added during ex parte reexamination, subject to certain conditions. According to MPEP 2250: New claims must be numbered consecutively beginning with the number next following the highest numbered patent claim. New claims must be completely underlined. New claims must not contain…

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How are claims numbered in a reissue patent?

Claim numbering in a reissue patent follows specific rules: Original patent claims are not renumbered, even if dependencies change All original patent claims appear in the reissue, with canceled claims in brackets New claims added during prosecution follow the highest numbered patent claim New claims are completely underlined to indicate they will be printed in…

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Can I submit new claims after filing an appeal brief?

While you can submit new claims after filing an appeal brief, the Board of Patent Appeals and Interferences (BPAI) is not obligated to consider them. According to MPEP 1211.02: “There is no obligation resting on the Board to consider new or amended claims submitted while it has jurisdiction of the appeal.” However, certain limited types…

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