What is Form Paragraph 22.14 used for in patent reexamination?
Form Paragraph 22.14 is used in patent reexamination when a submission is not fully responsive to a non-final Office action. It serves to notify the patent owner of the deficiency and provides instructions on how to proceed. According to MPEP 2266.01: “Form paragraph 22.14 may be used where a bona fide response is not entirely…
Read MoreWhat is the purpose of the first Office action in a patent reexamination?
The first Office action in a patent reexamination serves to establish the examiner’s position and should be comprehensive. According to MPEP 2262, “The examiner’s first Office action will be a statement of the examiner’s position and should be so complete that the second Office action can properly be made a final action.” This means the…
Read MoreWhen should the examiner’s first Office action be mailed in an inter partes reexamination?
In an inter partes reexamination, the examiner’s first Office action on the merits should typically be mailed together with the order for reexamination. This practice is designed to expedite the process and adhere to the “special dispatch” requirement. As stated in MPEP 2661: “In order to further the requirement for special dispatch, the examiner’s first…
Read MoreWhat is a final action in patent reexamination?
A final action in patent reexamination is typically the second Office action issued by the examiner. MPEP 2269 refers to this: “Any amendment after the second Office action, which will normally be final as provided for in MPEP § 2271, must ordinarily be restricted to the rejection or to the objection or requirement made.” A…
Read MoreHow does an examiner handle a not fully responsive submission in patent reexamination?
When an examiner encounters a not fully responsive submission in a patent reexamination, they have several options: Waive the deficiencies if they are not serious and act on the submission Accept the amendment as a response but notify the patent owner that the omission must be supplied Notify the patent owner that the response must…
Read MoreHow does the response time in ex parte reexamination differ from regular patent examination?
The response time in ex parte reexamination is generally shorter than in regular patent examination. In ex parte reexamination, MPEP 2263 specifies: “A shortened statutory period of two months will generally be set for filing a response to an Office action in an ex parte reexamination.” In contrast, regular patent examination typically allows a three-month…
Read MoreWhat is the standard response time for an Office action in ex parte reexamination?
The standard response time for an Office action in ex parte reexamination is typically two months. This is specified in MPEP 2263, which states: “A shortened statutory period of two months will generally be set for filing a response to an Office action in an ex parte reexamination.” This shortened period is designed to expedite…
Read MoreCan the response time for an ex parte reexamination Office action be extended?
Yes, the response time for an ex parte reexamination Office action can be extended. According to MPEP 2263: “An extension of time may be requested under 37 CFR 1.550(c).” This means that patent owners or their representatives can file a request for an extension of time if they need additional time to respond to the…
Read MoreWhat are the requirements for a rejection in an Office action during ex parte reexamination?
In an ex parte reexamination Office action, rejections must meet specific requirements as outlined in MPEP 2262. The key points are: Each rejection must be based on patents or printed publications. Rejections must clearly explain the reasons for rejection, citing specific sections of the references. The examiner must provide a detailed mapping of the claims…
Read MoreHow should examiners establish a clear record when rejecting claims for indefiniteness?
Examiners are required to establish a clear record when rejecting claims for indefiniteness. The MPEP provides guidance: “Examiners should note that Office policy is not to employ per se rules to make technical rejections. Examples of claim language which have been held to be indefinite set forth in MPEP § 2173.05(d) are fact specific and…
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