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…
Read MoreHow 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…
Read MoreHow is the date of patentability of amended or new claims determined in ex parte reexamination?
How is the date of patentability of amended or new claims determined in ex parte reexamination? In ex parte reexamination, the date of patentability for amended or new claims is determined based on the filing date of the request for reexamination. The MPEP provides clear guidance: “The date of patentability of an amended or new…
Read MoreAre 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,…
Read MoreCan adding new claims after March 16, 2013, make AIA laws applicable to a pre-AIA application?
No, adding new claims after March 16, 2013, does not make AIA laws applicable to a pre-AIA application. The MPEP 2159.01 states: “Additionally, adding claims after March 16, 2013 in an application filed before March 16, 2013 via an amendment which contains new matter does not make the changes to 35 U.S.C. 102 and 35…
Read MoreCan 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…
Read MoreHow 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…
Read MoreHow are new claims presented and amended in a reissue application?
For new claims in a reissue application: Present the entire claim with underlining throughout, including the claim number Use the status identifier “New” Number new claims starting after the last original patent claim number When amending a previously added new claim: Present the entire amended claim with underlining Do not use brackets to show changes…
Read MoreCan 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…
Read MoreHow do I format new claims added in a reissue application for an appeal brief?
When presenting new claims added in a reissue application as part of an appeal brief, you must format them in a specific way. According to MPEP 1454: “any new claims added in the reissue application should be completely underlined.” This means that any claim that was not present in the original patent, but was added…
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