What is the process for denying a request for reexamination?
When a request for reexamination is denied, the following process is followed: The examiner prepares a decision denying the reexamination request if no substantial new question of patentability is found. Form paragraph 22.02 is used as the introductory paragraph in the decision. The examiner responds to each argument based on patents or printed publications. A…
Read MoreCan a protest be submitted after a notice of allowance has been issued?
No, a protest cannot be submitted after a notice of allowance has been issued. According to MPEP 1901.04: “A protest submitted on or after the date a notice of allowance under 37 CFR 1.311 was given or mailed will not be entered and will be discarded pursuant to 37 CFR 1.291(g).“ This means that any…
Read MoreHow should patent owners respond to the first Office action in inter partes reexamination?
Patent owners should provide a complete and thorough response to the first Office action in inter partes reexamination. MPEP 2660 emphasizes the importance of a comprehensive response: “Accordingly, the first action should include a statement cautioning the patent owner that a complete response should be made to the action.” Key points for patent owners: Address…
Read MoreCan a patent owner submit prior art citations in their own reexamination proceeding?
Can a patent owner submit prior art citations in their own reexamination proceeding? Yes, according to MPEP 2602, a patent owner can submit prior art citations in their own reexamination proceeding. The MPEP states: “The patent owner may file citations of patents or printed publications in the patent file for subsequent use in the patent.”…
Read MoreWhat options does a patent owner have after receiving an Action Closing Prosecution (ACP)?
After receiving an Action Closing Prosecution (ACP) in an inter partes reexamination, the patent owner has specific options as outlined in MPEP 2671.02: File written comments: “Pursuant to 37 CFR 1.951(a), the patent owner may once file written comments limited to the issues raised in the reexamination proceeding and/or present a proposed amendment to the…
Read MoreHow should patent examiners treat reference characters in claims?
Patent examiners should treat reference characters in claims as helpful cross-references that do not affect the claim’s scope. According to MPEP 2173.05(s), “Generally, the presence or absence of such reference characters does not affect the scope of a claim.“ Examiners should: Consider the claim language independently of the reference characters. Use the reference characters to…
Read MoreCan a patent examiner suggest amendments to claims to address written description issues?
Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward. The MPEP 2163.04 states: “When appropriate, suggest amendments to the claims which can be supported by the application’s written…
Read MoreHow should patent examiners review responses to utility rejections?
When reviewing responses to utility rejections, patent examiners are instructed to conduct a comprehensive evaluation. The MPEP provides specific guidance: “If the applicant responds to the prima facie rejection, the Office personnel should review the original disclosure, any evidence relied upon in establishing the prima facie showing, any claim amendments, and any new reasoning or…
Read MoreHow do patent examiners apply the concept of implicit disclosure?
Patent examiners apply the concept of implicit disclosure by considering both the explicit teachings of a reference and the reasonable inferences that a person skilled in the art would draw from it. As stated in MPEP 2144.01, examiners should take into account “not only specific teachings of the reference but also the inferences which one…
Read MoreHow 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…
Read More