What are the consequences if a patent owner fails to file a timely appeal after a Right of Appeal Notice in inter partes reexamination?
The consequences of a patent owner’s failure to file a timely appeal after a Right of Appeal Notice in inter partes reexamination depend on the patentability findings and the actions of the third party requester. According to MPEP 2666.10, the following outcomes may occur: If no claim was found patentable, a Notice of Intent to…
Read MoreWhat is a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC)?
A Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) is a document prepared by the examiner upon conclusion of an ex parte reexamination proceeding. The NIRC informs the patent owner and any third party requester that the reexamination prosecution has been terminated. According to MPEP 2287, “Upon conclusion of the ex parte reexamination…
Read MoreWhat happens if new prior art is discovered after the Notice of Intent to Issue Reexamination Certificate (NIRC)?
If new prior art is discovered after the Notice of Intent to Issue Reexamination Certificate (NIRC) has been issued, special procedures must be followed. The MPEP 2257 states: “If any prior art of record has been newly discovered by the examiner since the Notice of Intent to Issue Reexamination Certificate (NIRC) has been issued, the…
Read MoreHow are new claims numbered in patent reexamination?
Numbering of new claims in patent reexamination follows these rules: Original patent claims retain their numbers, even if canceled. New claims are numbered sequentially starting after the last original patent claim number. If new claims are canceled, their numbers are not reused for other new claims. At the time of the Notice of Intent to…
Read MoreWhat happens if an inter partes reexamination certificate is not printed in a timely manner?
According to MPEP 2688, if the inter partes reexamination certificate is not printed in a timely manner after the expiration of the 3-month period following the issue date of the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC), the following actions are taken: The Office of Patent Legal Administration (OPLA) may be contacted…
Read MoreHow are reasons for patentability provided in a NIRC?
Reasons for patentability must be provided for every claim identified as patentable in the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC), unless all claims are canceled. The process involves: Indicating why the claims found patentable are clearly patentable over cited patents or printed publications. Using a manner similar to indicating reasons for…
Read MoreHow is Form PTOL-465 used in ex parte reexamination?
Form PTOL-465 is the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) used in ex parte reexamination proceedings. The MPEP 2296 states that this form is “used to notify the parties that prosecution has been terminated and that a reexamination certificate will be issued.” It serves as an important notification that the reexamination…
Read MoreHow are examiner’s amendments handled in inter partes reexamination proceedings?
Examiner’s amendments in inter partes reexamination proceedings are handled differently from regular patent applications due to the prohibition of interviews. Key points include: Examiner’s amendments can only be made without patent owner authorization. They must be included as a formal examiner’s amendment accompanying the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). The…
Read MoreWhat happens if no amendments or new claims are proposed during ex parte reexamination?
If no amendments or new claims are proposed during ex parte reexamination, the process concludes with specific actions. According to MPEP 2287: “If no amendments have been proposed and no claims have been added, (A) and (B) above are carried out and (C) through (G) are omitted.” This means that the examiner will prepare a…
Read MoreHow are dependent claims treated after a Board decision in reexamination?
The treatment of dependent claims after a Board decision in reexamination depends on the status of the independent claim and whether the claims were amended: If a rejected amended independent claim has a dependent claim that was previously objected to as being allowable except for its dependency, both claims will be canceled. If an unamended…
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