How should a patent owner serve a response on the third party requester in an inter partes reexamination?
In an inter partes reexamination, the patent owner is required to serve a copy of their response to an Office action on the third party requester. According to MPEP 2666: “A copy of the response must be served on the third party requester in accordance with 37 CFR 1.248.” The service of the response is…
Read MoreCan third-party comments in inter partes reexamination address issues not raised by the patent owner?
Third-party comments in inter partes reexamination are limited to addressing issues raised by the patent owner’s response. The MPEP 2666.05 states: “The third party requester comments may not address any issue that was not raised in the Office action or the patent owner’s response.” This restriction ensures that the scope of the reexamination remains focused…
Read MoreHow should a patent owner respond to rejections in an inter partes reexamination?
In an inter partes reexamination, a patent owner should respond to rejections by providing a clear and specific rebuttal. According to MPEP 2666: “Any request for reconsideration must be in writing and must distinctly and specifically point out each supposed error in the examiner’s action. A general allegation that the claims define a patentable invention,…
Read MoreWhat rights does the requester have when a patent owner corrects an omission in their response?
When a patent owner corrects an omission in their response, the requester in an inter partes reexamination has certain rights. According to MPEP 2666.30: “In this situation, the requester has thirty days from the date of service of patent owner’s corrected or supplemental response to file comments, unless only a fee (other than an excess…
Read MoreWhat happens to rejected claims if a patent owner fails to respond to an Office action in inter partes reexamination?
When a patent owner fails to respond to an Office action in inter partes reexamination, the fate of rejected claims depends on whether any claims were found patentable. According to MPEP 2666.10: If no claims were found patentable, all claims under rejection will be canceled upon issuance of the reexamination certificate. If at least one…
Read MoreWhat is the time frame for patent owners to respond in ex parte reexamination proceedings?
According to 37 CFR 1.550(b), “The patent owner in an ex parte reexamination proceeding will be given at least thirty days to respond to any Office action.” This means that patent owners have a minimum of 30 days to submit their response, which may include “further statements and/or proposed amendments or new claims to place…
Read MoreCan a patent owner respond to an inter partes reexamination request before the determination is made?
No, the patent owner cannot respond to an inter partes reexamination request before the determination is made. The MPEP clearly states: “No input from the patent owner is considered prior to the determination.” This policy is supported by case law, as the MPEP cites: “See Patlex v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed.…
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 MoreWhat is the process when a patent owner fails to respond to an Action Closing Prosecution (ACP) in inter partes reexamination?
When a patent owner fails to respond to an Action Closing Prosecution (ACP) in inter partes reexamination, the consequences are different from those of failing to respond to other Office actions. According to MPEP 2666.10: “A response to an ACP is not required. Where the patent owner does not respond to an ACP, the Office…
Read MoreWhat happens if a patent owner fails to respond to an Office action in an inter partes reexamination?
The consequences of a patent owner’s failure to respond to an Office action in an inter partes reexamination depend on the stage of the proceedings and whether any claims were found patentable: If no claims were found patentable, the prosecution will be terminated, and a certificate concluding the reexamination will be issued. If claims were…
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