Can a patent owner file a supplemental response in an inter partes reexamination?

Yes, a patent owner can file a supplemental response in an inter partes reexamination, but it must meet specific requirements. According to MPEP 2666, “Pursuant to 37 CFR 1.945(b), any supplemental response to the Office action in an inter partes reexamination proceeding must be accompanied by a showing of sufficient cause why the supplemental response…

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What is the role of a specification in international design applications?

The specification in international design applications plays a crucial role in describing the design and providing necessary information. According to MPEP 2920.05(d): “The examiner should determine whether the specification complies with the relevant requirements. Deficiencies in the specification may be addressed in an Office action.” Key points about the specification include: It must include a…

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How should a patent owner respond to rejections in an inter partes reexamination?

In an inter partes reexamination, a patent owner should respond to rejections by providing a clear and specific rebuttal. According to MPEP 2666: “Any request for reconsideration must be in writing and must distinctly and specifically point out each supposed error in the examiner’s action. A general allegation that the claims define a patentable invention,…

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How are priority claims handled in international design applications?

Priority claims in international design applications are an important aspect of the examination process. The MPEP 2920.05(e) provides guidance on how these claims are handled: “The examiner should determine whether any priority claim made in the international design application is proper. Priority claims are reviewed for compliance with the relevant requirements during both formalities review…

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What happens if a patent owner fails to respond to an Office action in an inter partes reexamination?

The consequences of a patent owner’s failure to respond to an Office action in an inter partes reexamination depend on the stage of the proceedings and whether any claims were found patentable: If no claims were found patentable, the prosecution will be terminated, and a certificate concluding the reexamination will be issued. If claims were…

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How do examiners handle undue multiplicity in patent applications?

Patent examiners handle undue multiplicity in patent applications through a specific procedure outlined in MPEP 2173.05(n): The examiner contacts the applicant by telephone, explaining that the claims are unduly multiplied. The examiner requests that the applicant select a specified number of claims for examination. If the applicant complies, the examiner makes an undue multiplicity rejection…

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How should a patent examiner respond to an applicant’s reply to a written description rejection?

When an applicant replies to a written description rejection, the patent examiner must follow a specific process as outlined in MPEP 2163.04: Review the entire record, including amendments, arguments, and any evidence submitted by the applicant. If the whole record now demonstrates that the written description requirement is satisfied, do not repeat the rejection in…

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