What is the patent owner’s responsibility regarding prior or concurrent proceedings in ex parte reexamination?
In an ex parte reexamination proceeding, the patent owner has a continuing responsibility to inform the USPTO about any prior or concurrent proceedings involving the patent under reexamination. This responsibility is outlined in 37 CFR 1.565(a), which states: “In an ex parte reexamination proceeding before the Office, the patent owner must inform the Office of…
Read MoreWhat are the expectations for parties involved in inter partes reexamination proceedings?
Parties involved in inter partes reexamination proceedings are expected to conduct themselves professionally and in accordance with USPTO regulations. The MPEP 2609 states: Patent owners and third party requesters are cautioned that the reexamination statute, regulations, and published examining procedures do not countenance so-called “litigation tactics” in reexamination proceedings. The parties are expected to conduct…
Read MoreWhat happens if defects in inter partes reexamination submissions are not corrected?
If defects in inter partes reexamination submissions are not corrected in response to the notice, the submission will not be entered. For patent owners, failure to file a timely and appropriate response may result in termination or limitation of the reexamination proceeding. According to the MPEP 2666.50: “If, in response to the notice, the defect…
Read MoreWhat are the consequences of failing to correct defective papers in ex parte reexamination?
Failing to correct defective papers in ex parte reexamination can have serious consequences. According to MPEP 2266.02: “If, in response to the notice, the defect still is not corrected, the submission will not be entered. If the failure to comply with the notice results in a patent owner failure to file a timely and appropriate…
Read MoreWhat are the patent owner’s responsibilities regarding notification of concurrent proceedings?
The patent owner has specific responsibilities to notify the USPTO of concurrent proceedings involving their patent: In the reissue application, the patent owner should file a Notification of Concurrent Proceedings pursuant to 37 CFR 1.178(b) as early as possible. In the reexamination proceeding, the patent owner should file a Notification of Concurrent Proceedings pursuant to…
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