How does the USPTO handle the timing of reexamination proceedings?
The USPTO is required to conduct reexamination proceedings with special dispatch. MPEP 2821 references 35 U.S.C. 305, which states: “Reexamination will be conducted with special dispatch within the Office.“ This requirement ensures that reexamination proceedings are handled promptly and efficiently. The MPEP also cites the case of Ethicon v. Quigg, 849 F.2d 1422 (Fed. Cir.…
Read MoreWho makes the decision to merge or stay concurrent reissue and reexamination proceedings?
The decision to merge a reissue application examination and an inter partes reexamination proceeding, or to stay one of them, is made by the Office of Patent Legal Administration (OPLA). As stated in the MPEP: “The decision as to whether the reissue application examination and the reexamination proceeding are to be merged, or which of…
Read MoreCan supplemental examination proceedings be merged with other proceedings?
Generally, the USPTO does not merge supplemental examination proceedings with other proceedings. The MPEP 2821 states: “As a general rule, the Office will not merge a supplemental examination proceeding with any other supplemental examination proceeding.“ However, the Office reserves the right to merge or consolidate proceedings as circumstances warrant. The decision to merge is typically…
Read MoreAre interviews permitted in merged reissue and inter partes reexamination proceedings?
No, interviews discussing the merits of the case are not permitted in merged reissue and inter partes reexamination proceedings. The MPEP states: “Pursuant to 37 CFR 1.955, an interview which discusses the merits of a proceeding is not permitted in an inter partes reexamination proceeding. Thus, in a merged proceeding of an inter partes reexamination…
Read MoreHow are fees handled in merged reissue and reexamination proceedings?
In merged reissue and reexamination proceedings, only a single fee needs to be paid for actions that would normally require a fee in each separate proceeding. The MPEP clarifies: “Where the proceedings have been merged and a paper is filed which requires payment of a fee (e.g., excess claims fee, extension of time fee, petition…
Read MoreCan examiners other than supervisory patent examiners assign applications?
Yes, examiners other than supervisory patent examiners can be given the responsibility of assigning applications. The MPEP 909.02(b) provides guidance on this: “If an examiner other than the supervisory patent examiner is given the responsibility of assigning applications, time so spent may, at the TC Director’s discretion, be charged to ‘Other Time- Classify (non-PGPub) and…
Read MoreWhat is the role of a primary examiner in rejecting previously allowed claims?
The primary examiner plays a crucial role in the process of rejecting previously allowed claims. According to MPEP 706.04: “An Office action rejecting a previously allowed claim must be signed by a primary examiner.” The primary examiner must consider all the facts before making such a rejection They are responsible for exercising great care in…
Read MoreWhat is the requirement for separate papers when corresponding with the USPTO?
The USPTO requires that different matters be submitted in separate papers to ensure efficient processing. This requirement is outlined in MPEP 501, which cites 37 CFR 1.4(c): Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to…
Read MoreCan I hand-carry documents to the USPTO?
Yes, you can hand-carry certain documents to the USPTO, but there are specific guidelines and limitations. According to MPEP 501: Patent-related papers may be hand-carried to the Office in Alexandria, VA. Correspondence cannot be hand-carried to the Regional Offices. If the correspondence is hand-carried to the Office, with limited exceptions (see MPEP § 502, subsection…
Read MoreHow does the USPTO handle correspondence with a Certificate of Mailing or Transmission?
The USPTO has specific procedures for handling correspondence with a Certificate of Mailing or Transmission: All papers received by mail are date stamped with the actual date of receipt, regardless of any Certificate of Mailing. For papers with a Certificate of Mailing or Transmission, the date on the certificate is used to determine if the…
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