Can a third party requester appeal a decision in an ex parte reexamination?
No, a third party requester in an ex parte reexamination cannot seek judicial review of a decision. The MPEP 2279 clearly states: “A third party requester of an ex parte reexamination may not seek judicial review.” This principle is supported by case law, specifically Yuasa Battery v. Comm’r, 3 USPQ2d 1143 (D.D.C. 1987). However, it’s…
Read MoreHow does the extension of time practice differ for third-party requested reexaminations?
The extension of time practice for third-party requested ex parte reexaminations differs from patent owner requested or Director ordered reexaminations in several ways: “No cause” extensions for up to two months are not available. All requests must be filed on or before the day on which action by the patent owner is due. All requests…
Read MoreCan third parties submit petitions or documents regarding patent term adjustment?
No, third parties are not allowed to submit petitions or documents concerning patent term adjustment under 35 U.S.C. 154(b). The Manual of Patent Examining Procedure (MPEP) Section 2736 clearly states: “No submission or petition on behalf of a third party concerning patent term adjustment under 35 U.S.C. 154(b) will be considered by the Office. Any…
Read MoreHow does awaiting third-party approval affect the completeness of an invention?
Awaiting approval from a third-party organization, such as Underwriters’ Laboratories, typically does not extend the experimental use period if the inventor already considers the invention complete. The MPEP states: If the examiner concludes from the evidence of record that the inventor was satisfied that an invention was in fact “complete,” awaiting approval by the inventor…
Read MoreCan third-party activities qualify as experimental use in patent law?
Experimental use is personal to the inventor and generally does not extend to independent third-party activities. The MPEP states: “Where an inventor presents evidence of experimental activity by such other party, the evidence will not overcome the prima facie case of unpatentability based upon the activity of such party unless the activity was under the…
Read MoreHow does the concept of “teaching away” apply in patent obviousness cases?
“Teaching away” is a concept in patent law that can be used to rebut a prima facie case of obviousness. According to MPEP 2144.05: “A prima facie case of obviousness may also be rebutted by showing that the art, in any material respect, teaches away from the claimed invention.” Teaching away occurs when a person…
Read MoreHow does the suppression and concealment doctrine affect inventorship in patent law?
The suppression and concealment doctrine can significantly impact inventorship in patent law. According to the MPEP: “The result of applying the suppression and concealment doctrine is that the inventor who did not conceal (but was the de facto last inventor) is treated legally as the first to invent, while the de facto first inventor who…
Read MoreHow does supplemental examination affect patent enforceability?
Supplemental examination can have a significant impact on patent enforceability. According to the MPEP: “35 U.S.C. 257(c) specifies the effect of a supplemental examination under 35 U.S.C. 257(a) and any resulting ex parte reexamination under 35 U.S.C. 257(b) on the enforceability of the patent.” Generally, if information is considered, reconsidered, or corrected during supplemental examination,…
Read MoreWhat constitutes sufficient evidence of reduction to practice in patent law?
Sufficient evidence of reduction to practice is crucial in patent law, especially when establishing priority or defending against challenges. The MPEP 2138.05 provides guidance on what constitutes adequate evidence: “In order to establish an actual reduction to practice, the inventor must prove that: (1) he or she constructed an embodiment or performed a process that…
Read MoreWhat is required for a showing of sufficient cause in an extension request?
A showing of sufficient cause for an extension request in ex parte reexamination proceedings requires: A full statement of the reasons for the extension. An explanation of what action the patent owner has taken to provide a response as of the date of the request. A justification for why the requested additional time is needed.…
Read More