What are the requirements for filing a second or subsequent protest?
Filing a second or subsequent protest requires meeting specific conditions as outlined in MPEP 1901.07(a). According to the manual, “37 CFR 1.291(c)(5) requires that a second or subsequent protest by the same real party in interest include: (A) an explanation as to why the issue(s) raised in the second or subsequent protest are significantly different…
Read MoreCan new issues be raised in ex parte reexamination?
Can new issues be raised in ex parte reexamination? Generally, new issues cannot be raised in ex parte reexamination unless they are based on patents or printed publications. The MPEP 2258 states: “Issues other than those indicated in 37 CFR 1.552(c) will not be resolved in a reexamination proceeding.” However, there are some exceptions: New…
Read MoreHow are new issues raised by a third-party requester handled in reexamination?
When a third-party requester raises new issues in their reply during a reexamination proceeding, the examiner must determine whether these issues are within the scope of reexamination. MPEP 2253 provides guidance on this matter: “If the requester’s reply to the patent owner’s statement raises issues not previously presented, such issues will be treated by the…
Read MoreHow does an examiner handle new issues raised after final rejection in patent applications?
When new issues are raised after a final rejection in a patent application, the examiner must follow specific procedures as outlined in MPEP 706.07. The MPEP states: “An amendment filed after a final rejection, but before or on the date of filing a Notice of Appeal, may be entered upon or after filing of an…
Read MoreWhat situations prevent a first Office action from being made final in a continuing application?
There are specific situations where it would not be proper to make a first Office action final in a continuing application. According to MPEP 706.07(b): “It would not be proper to make final a first Office action in a continuing or substitute application or an RCE where that application contains material which was presented in…
Read MoreHow should patent examiners handle new issues raised during interviews?
When new issues are raised during patent examination interviews, examiners should handle them carefully. The MPEP 713.01 provides guidance: New issues raised during an interview should be discussed and resolved if possible. However, if the new issues cannot be fully addressed during the interview, the examiner should: Encourage the applicant to provide a written statement…
Read MoreHow does MPEP 714.03(a) address supplemental amendments that raise new issues?
MPEP 714.03(a) provides guidance on handling supplemental amendments that raise new issues. The manual states: ‘A supplemental reply will not be entered if the supplemental reply includes any new issue such as a new argument or new evidence that was not presented in the first reply.’ This provision is designed to: Prevent the introduction of…
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