When is reopening prosecution mandatory after Action Closing Prosecution (ACP) in inter partes reexamination?
Reopening prosecution is mandatory when the examiner decides to modify their position after receiving a submission from the patent owner pursuant to 37 CFR 1.951(a) and (b). This is necessary to give the patent owner an opportunity to address any changes adverse to their position. According to MPEP 2673.01: “The examiner should reopen prosecution where…
Read MoreWhat major events are reported in the PALM system for reexamination proceedings?
The PALM system is used to report and monitor major events in reexamination proceedings. According to MPEP 2635, some of the key events reported include: Determination Mailed-Denial of request for reexamination Determination Mailed-Grant of request for reexamination Petition for reconsideration of determination received Decision on petition mailed-Denied Decision on petition mailed-Granted Mailing of all examiner…
Read MoreCan machine translations be used for foreign language prior art documents?
Yes, examiners can use machine translations of foreign language documents in prior art rejections, but with certain considerations. The MPEP provides the following guidance: “Examiners may rely on a machine translation of a foreign language document unless the machine translation is not of sufficient quality to be adequate evidence of the contents of the document.“…
Read MoreWhat information from related litigation or trial proceedings must be disclosed to the USPTO?
According to MPEP 2001.06(c), any material information arising from litigation or trial proceedings related to the subject matter for which a patent is being sought must be disclosed to the USPTO. This includes: Evidence of possible prior public use or sales Questions of inventorship Prior art Allegations of fraud, inequitable conduct, or violation of duty…
Read MoreHow are patents and printed publications listed on a reexamination certificate?
Patents and printed publications are listed on a reexamination certificate in a specific manner. According to MPEP 2257: “The patents and printed publications will be listed on the reexamination certificate by the examiner’s amendment at the time of allowance. Such entry is made in the second or subsequent paragraph of the Reasons for Patentability and/or…
Read MoreWhat are the limitations on using official notice in patent examination?
What are the limitations on using official notice in patent examination? There are several important limitations on using official notice in patent examination: Factual basis required: The examiner must have a factual basis for taking official notice. As stated in MPEP 2144.03, “Official notice without documentary evidence to support an examiner’s conclusion is permissible only…
Read MoreWhat are the limitations on new rejections in ex parte reexamination?
What are the limitations on new rejections in ex parte reexamination? In ex parte reexamination, there are specific limitations on introducing new rejections: Pre-AIA 35 U.S.C. 303(a) and 37 CFR 1.906(c) restrict new rejections to those based on patents or printed publications. New rejections cannot be based on issues like 35 U.S.C. 112 or public…
Read MoreWhy can’t examiners use interviews or examiner’s amendments to resolve minor issues after ACP in inter partes reexamination?
In inter partes reexamination, examiners cannot use interviews or examiner’s amendments to resolve minor issues after Action Closing Prosecution (ACP) due to the presence of the third party requester and procedural restrictions. MPEP 2673.01 explains: “The examiner cannot telephone the owner to obtain the minor change(s) and then issue a RAN because interviews are not…
Read MoreHow does the level of ordinary skill in the art affect obviousness determinations?
How does the level of ordinary skill in the art affect obviousness determinations? The level of ordinary skill in the art is a critical factor in obviousness determinations under 35 U.S.C. 103. According to MPEP 2141: “The person of ordinary skill in the art is a hypothetical person who is presumed to have known the…
Read MoreHow is the level of ordinary skill in the art determined for obviousness analysis?
Determining the level of ordinary skill in the art is crucial for obviousness analysis. The MPEP provides guidance on factors that may be considered: Type of problems encountered in the art Prior art solutions to those problems Rapidity with which innovations are made Sophistication of the technology Educational level of active workers in the field…
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