Can a patent owner file a statement in an ex parte reexamination ordered under 35 U.S.C. 257?
No, a patent owner cannot file a statement in an ex parte reexamination ordered under 35 U.S.C. 257. This is one of the key differences from reexaminations ordered under 35 U.S.C. 302. MPEP 2823 states: “the patent owner will not have the right to file a statement pursuant to 37 CFR 1.530, and the order…
Read MoreCan a patent owner petition to merge multiple reexamination proceedings?
Yes, a patent owner can petition to merge multiple reexamination proceedings, but there are specific timing requirements. According to MPEP 2686.01: “The patent owner can file a petition to merge the proceedings at any time after the order to reexamine the second request. Note that the acceptance of a petition to merge the multiple proceedings…
Read MoreWhat happens if a patent owner files a court action to enjoin the inter partes reexamination?
If a patent owner files a court action to enjoin the inter partes reexamination, the action does not automatically stay the reexamination proceedings. According to MPEP 2686.04: “35 U.S.C. 318 provides that, once an order for inter partes reexamination has been issued, the patent owner may obtain a stay of any pending litigation which involves…
Read MoreWhat are the appeal rights for patent owners in ex parte reexamination?
Patent owners have specific appeal rights in ex parte reexamination proceedings. According to MPEP 2273, “The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134, and may seek court review under the provisions of sections 141 to 144, with respect to any decision adverse to the…
Read MoreCan a patent owner include amendments with a reexamination request?
Yes, a patent owner can include proposed amendments with a reexamination request. According to MPEP 2221, “Under 37 CFR 1.510(e), a patent owner may include a proposed amendment with his or her request.” However, it’s important to note that these amendments must comply with specific regulations: The amendments must be in accordance with 37 CFR…
Read MoreWhen can a patent owner propose amendments during the reexamination process?
A patent owner has multiple opportunities to propose amendments during the reexamination process. According to MPEP 2221, amendments can be proposed: With the initial reexamination request under 37 CFR 1.510(e) In a statement under 37 CFR 1.530(b) and (c) During the actual ex parte reexamination prosecution under 37 CFR 1.550(b) The MPEP states: “Amendments may…
Read MoreHow does ex parte reexamination differ when ordered after supplemental examination?
Ex parte reexamination ordered after supplemental examination follows most existing rules for ex parte reexamination, but with two key differences. As outlined in MPEP 2818: “An ex parte reexamination ordered as a result of a supplemental examination proceeding will be conducted in accordance with the existing rules governing ex parte reexamination, except that: (i) the…
Read MoreCan a patent owner contest a title change during reexamination?
While a patent owner can comment on a proposed title change during reexamination, the final decision rests with the examiner. The MPEP 2660.02 clearly states: “While a change in the title may be commented on by the patent owner, the final decision as to the change is that of the examiner, and the examiner’s decision…
Read MoreHow can a patent owner challenge the decision to grant an ex parte reexamination?
A patent owner has several options to challenge the decision to grant an ex parte reexamination based on a substantial new question of patentability (SNQ): Request reconsideration in the patent owner’s statement under 37 CFR 1.530. Present arguments in the response to the Office action under 37 CFR 1.111(b). Appeal to the Patent Trial and…
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