What happens if a patent owner fails to respond in an ex parte reexamination?
If a patent owner fails to respond to an Office action or interview statement in an ex parte reexamination, there are serious consequences. According to 37 CFR 1.550(d): “If the patent owner fails to file a timely and appropriate response to any Office action or any written statement of an interview required under ยง 1.560(b),…
Read MoreWhat constitutes a submission not fully responsive to a non-final Office action in inter partes reexamination?
A submission is considered not fully responsive when it’s a bona fide attempt to respond to an examiner’s Office action filed within the permissible response period, but through oversight or inadvertence, omits a necessary point. As stated in MPEP 2666.30: “A response by the patent owner will be considered not fully responsive to a non-final…
Read MoreCan a patent owner receive multiple notifications for omissions in their response?
Generally, a patent owner will not receive multiple notifications for the same omission in their response. However, there are circumstances where multiple notifications may occur. According to MPEP 2666.30: “Once an inadvertent omission is brought to the attention of the patent owner, the question of inadvertence no longer exists. Therefore, a second written notification action…
Read MoreWhat is the difference between minor and serious deficiencies in a patent owner’s response?
The MPEP 2666.30 distinguishes between minor and serious deficiencies in a patent owner’s response: 1. Minor deficiencies: These are less significant omissions that don’t severely impact the examination process. For example, “fails to treat every rejection, objection, or requirement.” In such cases, the examiner may “simply act on the amendment and issue a new Office…
Read MoreWhat is the timeline for patent owner response completion and third party comments in inter partes reexamination?
In inter partes reexamination, the patent owner typically has 30 days or one month (whichever is longer) to complete their response. After the patent owner completes the response, the examiner waits two months before taking action. This allows time for third party requester comments, which are due within 30 days of the date of service…
Read MoreWhat are the rules for extending time in inter partes reexamination?
The rules for extending time in inter partes reexamination are governed by 37 CFR 1.956. Key points include: Extensions are granted only for sufficient cause and for a reasonable time. Requests must be filed on or before the day action is due. Filing a request does not automatically grant an extension. Requests must be accompanied…
Read MoreWhat happens after the patent owner responds and third party comments in an inter partes reexamination?
After the patent owner responds and any third party comments are received, the patent under reexamination is reconsidered. The MPEP states: “The patent owner and the third party requester will be notified as to any claims rejected, any claims found patentable and any objections or requirements made.” This process continues until the examiner determines the…
Read MoreWhat happens if only a fee is needed to complete a patent owner’s response in inter partes reexamination?
In inter partes reexamination, if only a fee (other than an excess claims fee to support an amendment) is needed to complete a patent owner’s response, the third party requester is not allowed to file comments after the fee is submitted. As stated in MPEP 2666.20: “However, where only a fee (other than an excess…
Read MoreHow are excess claims fees handled in inter partes reexamination?
In inter partes reexamination, excess claims fees are handled differently from other fees. If a patent owner fails to pay excess claims fees: The new claim “package” in the patent owner’s original request is not entered until the excess claims fee is paid. The third party requester cannot comment on the new claim “package” until…
Read MoreWhat are the rules for responding to Office actions in ex parte reexamination proceedings?
In ex parte reexamination proceedings, the rules for responding to Office actions are governed by 37 CFR 1.550(a) and 37 CFR 1.111. Key points include: Patent owners are typically given 2 months to respond to an Office action. Extensions of time are only available under 37 CFR 1.550(c). The certificate of mailing, certificate of transmission,…
Read More