What are the exceptions to immediate action on reissue applications?
While reissue applications generally receive immediate attention, there are two main exceptions where they may be suspended or delayed: Litigation: If the reissue application is involved in ongoing litigation. Pending PTAB Trial: If there is a pending trial before the Patent Trial and Appeal Board (PTAB). The MPEP 1442 specifies that “A pending trial before…
Read MoreWhat is the general policy regarding reissue applications with concurrent litigation?
Generally, action in reissue applications with concurrent litigation is suspended sua sponte to avoid duplicating effort. The Manual of Patent Examining Procedure (MPEP) states: “To avoid duplicating effort, action in reissue applications in which there is an indication of concurrent litigation will generally be suspended sua sponte.” This policy helps streamline the process and prevents…
Read MoreHow are reissue applications classified in the Issue Classification sheet?
Reissue applications have a specific requirement for classification on the Issue Classification sheet. The MPEP 1302.10 states: In all reissue applications, the number of the original patent which is being reissued should be placed in the box provided therefor below the box for the applicant’s name. This means that for reissue applications, in addition to…
Read MoreWhat happens if a reissue application is not ready for publication as a patent at the time the Notice of Allowance is mailed?
If a reissue application is not ready for publication as a patent at the time the Notice of Allowance is mailed, the following process occurs: The application is withdrawn from issue. The application is returned to the examiner. Appropriate corrective action is taken by the examiner. A new Notice of Allowance is mailed when the…
Read MoreHow are reissue applications examined compared to original applications?
Reissue applications are examined in the same manner as original, non-reissue, non-provisional applications. This is explicitly stated in 37 CFR 1.176, which says that a reissue application, “including all the claims therein, is subject to ‘be examined in the same manner as a non-reissue, non-provisional application.’” This means that examiners will apply the same level…
Read MoreCan withdrawn claims be reinstated after a restriction requirement?
Yes, withdrawn claims can be reinstated after a restriction requirement under certain conditions. The MPEP 809 provides guidance on this process: “Where such withdrawn claims have been canceled by applicant pursuant to the restriction requirement, upon the allowance of the linking claim(s), the examiner must notify applicant that any canceled, nonelected claim(s) which depends from…
Read MoreWhat regulations govern remands in patent examination?
Several regulations govern remands in patent examination. MPEP 1211 cites the following regulations: 37 CFR 41.35(c) and (e): These regulations pertain to the Director’s and Board’s authority to remand cases. 37 CFR 41.40(a): This regulation relates to tolling of the time period to file a reply brief. 37 CFR 41.50(e): This regulation specifies that a…
Read MoreWhen can an applicant request a refund for additional species claims in a transitional application?
According to MPEP 803.03(b), an applicant can request a refund for additional species claims in a transitional application when these claims are no longer withdrawn from consideration due to being fully embraced by an allowable generic claim. The MPEP states: Whenever claims drawn to an additional species in a transitional application for which applicant paid…
Read MoreHow are copies of references supplied in design patent applications?
For information on how copies of references are supplied to applicants in design patent applications, MPEP 1513 directs us to another section: “With respect to copies of references being supplied to applicant in a design patent application, see MPEP § 707.05(a).” This cross-reference suggests that the procedure for providing reference copies in design patent applications…
Read MoreWhere can I find detailed information about reexamination procedures for design patents?
For detailed information about reexamination procedures, including those applicable to design patents, you should refer to MPEP Chapter 2200. MPEP 1510 specifically directs readers: “See MPEP Chapter 2200 for practice and procedure for reexamination applications.” This means that while reexamination is relevant to design patents, the comprehensive guidelines and procedures are consolidated in Chapter 2200,…
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