What statements are required when amending a “Sequence Listing XML”?
When amending a “Sequence Listing XML”, three key statements are required: A statement identifying the location of all changes A statement identifying the basis for all changes A statement that no new matter is introduced As specified in MPEP 2414.03: A statement that identifies the location of all additions, deletions, or replacements of sequence information…
Read MoreHow can a patent owner request reopening of prosecution after a new ground of rejection?
To request reopening of prosecution after a new ground of rejection, the patent owner must: File a response within one month of the Board’s decision (extensions available under 37 CFR 1.956) Submit an appropriate amendment of the newly rejected claim(s) and/or new evidence relating to the new ground(s) of rejection According to MPEP 2682, “Under…
Read MoreWhat happens if a reexamination request is filed on a patent after it has been reissued?
When a request for reexamination is filed on a patent after it has been reissued, the reexamination will be denied. The MPEP explains: “Where a request for reexamination is filed on a patent after it has been reissued, reexamination will be denied because the patent on which the request for reexamination is based has been…
Read MoreWhat are the options for patent owners after an Action Closing Prosecution (ACP) in inter partes reexamination?
After an Action Closing Prosecution (ACP) in inter partes reexamination, the patent owner has the following options: File written comments limited to the issues raised in the reexamination proceeding Present a proposed amendment to the claims According to MPEP 2672, “The patent owner submission under 37 CFR 1.951(a) of comments and/or proposed amendment must be…
Read MoreCan a patent owner amend claims before the first Office action in inter partes reexamination?
No, a patent owner cannot amend claims before the first Office action in inter partes reexamination. MPEP 2660 clearly states: “Ordinarily, there will be no patent owner amendment to address in the first Office action of the inter partes reexamination, because 37 CFR 1.939(b) prohibits a patent owner amendment prior to first Office action.” This…
Read MoreWhat are the limitations on amendments after the second Office action in patent reexamination?
After the second Office action in patent reexamination, which is typically final, there are limitations on amendments. MPEP 2269 states: “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.” This means…
Read MoreCan a patent owner amend their patent during reexamination?
Yes, a patent owner can amend their patent during reexamination. According to MPEP 2269: “The patent owner may respond to such Office action with or without amendment and the patent under reexamination will be reconsidered, and so on repeatedly unless the examiner has indicated that the action is final.” However, it’s important to note that…
Read MoreWhat are intervening rights in patent reexamination?
Intervening rights in patent reexamination are protections granted to individuals or entities who have used or prepared to use a patented invention before the patent was amended during reexamination. These rights are defined in 35 U.S.C. 307(b), which states: “Any proposed amended or new claim determined to be patentable and incorporated into a patent following…
Read MoreWhat constitutes a defective paper in ex parte reexamination?
A defective paper in ex parte reexamination, also known as an “informal submission,” can have various defects even if the substance is complete. The MPEP 2266.02 lists several examples of defects: Lack of proof of service Unsigned paper Paper signed by a non-practitioner who is not of record Patent owner’s amendment not complying with 37…
Read MoreHow can a patent owner correct information about a replacement or supplemental biological deposit?
To correct information about a replacement or supplemental biological deposit, a patent owner must request a certificate of correction. The MPEP specifies: “A replacement or supplemental deposit made in connection with a patent, whether or not made during the pendency of an application for reissue patent or a reexamination proceeding or both, shall not be…
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