Can a third-party requester comment on a patent owner’s response to a new ground of rejection?
Yes, a third-party requester can comment on a patent owner’s response to a new ground of rejection issued by the Patent Trial and Appeal Board (PTAB) in an inter partes reexamination. According to MPEP 2681: Where the owner has filed a response requesting reopening of prosecution under paragraph (b)(1) of this section, any requester, within…
Read MoreHow can a party seek review of a PTAB decision in inter partes reexamination?
Parties seeking review of a Patent Trial and Appeal Board (PTAB) decision in inter partes reexamination have several options, depending on the nature of the issue. According to MPEP 2681: For procedural matters: File a petition to the USPTO The petition must show a convincing error, abuse of discretion, or policy issue For substantive matters:…
Read MoreIs there a fee associated with filing a respondent brief in inter partes reexamination?
Yes, there is a fee required for filing a respondent brief in inter partes reexamination. The MPEP states: “A fee as set forth in 37 CFR 41.20(b)(2) is required when the respondent brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a).” This fee is mandatory and must be paid…
Read MoreWhat is the time limit for filing a respondent brief in an inter partes reexamination?
According to 37 CFR 41.66(b), a respondent must file their brief within one month from the date of service of the appellant’s brief. The MPEP states: “Once an appellant’s brief has been properly filed, any brief must be filed by respondent within one month from the date of service of the appellant’s brief. The time…
Read MoreWhat are the required contents of a respondent brief in an inter partes reexamination?
The contents of a respondent brief are outlined in 37 CFR 41.68(b)(1). Key components include: Real Party in Interest statement Related Appeals, Interferences, and trials Status of claims Status of amendments Summary of claimed subject matter Issues to be reviewed on appeal Argument Evidence appendix Related proceedings appendix Certificate of service The MPEP emphasizes: “The…
Read MoreWhat is the function of the PTOL-2066 form in inter partes reexamination?
The PTOL-2066 form is used for issuing the “Right of Appeal Notice” in inter partes reexamination proceedings. According to MPEP 2696, this form is associated with “37 CFR 1.953”. The Right of Appeal Notice is a crucial document that informs the parties involved in the reexamination of their right to appeal the examiner’s decision. This…
Read MoreWhat happens when the PTAB issues a new ground of rejection in an inter partes reexamination?
When the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection in an inter partes reexamination, it triggers specific procedures outlined in MPEP 2681: The decision is considered non-final for judicial review. The patent owner has one month to choose one of two options: Reopen prosecution by filing a response with amendments…
Read MoreWhat are the possible outcomes of a Patent Trial and Appeal Board decision in an inter partes reexamination?
According to MPEP 2681, the Patent Trial and Appeal Board (PTAB) can issue several types of decisions in an inter partes reexamination: Affirm the examiner’s decision Reverse the examiner’s decision Remand the proceeding to the examiner for further consideration Issue a new ground of rejection The MPEP states: The Patent Trial and Appeal Board, in…
Read MoreCan the PTAB recommend claim amendments to make a claim patentable in inter partes reexamination?
No, the Patent Trial and Appeal Board (PTAB) does not have the authority to recommend claim amendments to make a claim patentable in inter partes reexamination. MPEP 2681 explicitly states: Unlike the practice for applications and ex parte reexaminations, the rules do not provide for the Board in its decision to include a statement that…
Read MoreWhat are the appeal rights for patent owners in ex parte reexamination?
Patent owners have specific appeal rights in ex parte reexamination proceedings. According to MPEP 2273, “The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134, and may seek court review under the provisions of sections 141 to 144, with respect to any decision adverse to the…
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