How does the examiner’s decision granting a reexamination request differ from determining patentability?
The examiner’s decision granting a reexamination request focuses on whether there is a substantial new question of patentability (SNQ) or a reasonable likelihood that the requester will prevail (RLP), rather than determining the ultimate patentability of the claims. According to MPEP 2646: “In the decision on the request, the examiner does not decide the ultimate…
Read MoreWhat are the examiner’s obligations regarding claim interpretation in reexamination?
What are the examiner’s obligations regarding claim interpretation in reexamination? In reexamination proceedings, examiners have specific obligations regarding claim interpretation. The MPEP 2253 states: “Claims in reexamination proceedings are to be given their broadest reasonable interpretation consistent with the specification, and limitations appearing in the specification are not to be read into the claims.“ This…
Read MoreHow does the examiner handle proposed amendments during reexamination?
During reexamination, the examiner follows specific guidelines when considering proposed amendments to the specification, including claims, made by the patent owner. According to MPEP 2253: “With respect to consideration of any proposed amendments to the specification, including claims, made by the patent owner, the examiner will be guided by the provisions of 37 CFR 1.530(d)-(j).“…
Read MoreWhat principles should guide an examiner in requiring a claim for interference?
According to MPEP 2304.04(b), examiners should follow several principles when considering whether to require an applicant to add a claim for interference: An interference should generally not be suggested if examination of the application is not otherwise completed. The required claim must not encompass prior art or otherwise be barred. The application must provide adequate…
Read MoreWhat is the Ex parte Whitelaw doctrine in patent examination?
The Ex parte Whitelaw doctrine is a specific ground for rejecting patent claims that are substantially duplicative. As explained in MPEP 2173.05(n): “Also, it is possible to reject one claim over an allowed claim if they differ only by subject matter old in the art. This ground of rejection is set forth in Ex parte…
Read MoreWhat is required in a request for ex parte reexamination under 35 U.S.C. 302?
A request for ex parte reexamination under 35 U.S.C. 302 must include: An identification of every claim for which reexamination is requested A detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested As stated in the MPEP, “The third sentence of 35 U.S.C.…
Read MoreHow does ex parte reexamination affect intervening rights?
Ex parte reexamination can affect intervening rights in the following ways: If claims are amended or new claims are added during reexamination, intervening rights may apply to these changed or new claims. Intervening rights only apply to claims that are not substantially identical to the original claims. The effective date for intervening rights is the…
Read MoreHow are claim amendments marked up in ex parte reexamination?
How are claim amendments marked up in ex parte reexamination? In ex parte reexamination, claim amendments must be properly marked up to show changes. According to MPEP 2250: Deleted matter must be enclosed in brackets. Added matter must be underlined. For original patent claims, the claim number and status identifier must be included. New claims…
Read MoreWhat information is included in an Ex Parte Reexamination Certificate?
An Ex Parte Reexamination Certificate contains several key pieces of information about the reexamined patent. According to the MPEP, the certificate includes: The title “Ex Parte Reexamination Certificate” An ordinal number (e.g., “235th”) The original patent number followed by a two-character kind code The date of issuance The title of the invention The name of…
Read MoreHow are new and amended claims presented in an Ex Parte Reexamination Certificate?
The Ex Parte Reexamination Certificate has a specific format for presenting new and amended claims. The MPEP states: Any new claims will be printed in the certificate completely in italics, and any amended claims will be printed in the certificate with italics and bracketing indicating the amendments thereto. This formatting helps to clearly distinguish between…
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