Can a third party requester file a reply if the patent owner doesn’t file a statement?
No, a third party requester cannot file a reply if the patent owner does not file a statement in an ex parte reexamination. MPEP 2251 clearly states: “If the patent owner does not file a statement under ยง 1.530, no reply or other submission from the ex parte reexamination requester will be considered.” This rule…
Read MoreWhat are the service requirements for a patent owner’s statement in ex parte reexamination?
In ex parte reexamination, the patent owner must serve their statement on the requester if the reexamination was requested by a third party. MPEP 2249 states: “A copy of the statement must be served by the patent owner on the requester, unless the request was filed by the patent owner.” Failure to provide proof of…
Read MoreWhat is the Patent Owner’s Statement in ex parte reexamination?
The Patent Owner’s Statement is a response filed by the patent owner in an ex parte reexamination proceeding. According to MPEP 2249, “If reexamination is ordered under 35 U.S.C. 304, the decision will set a period of not less than two months within which period the patent owner may file a statement and any narrowing…
Read MoreCan a patent owner file a statement in ex parte reexamination ordered under 35 U.S.C. 257?
No, a patent owner cannot file a statement in ex parte reexamination ordered under 35 U.S.C. 257. This is one of the key differences from standard ex parte reexamination. According to MPEP 2818.01: “The patent owner will not have the right to file a statement pursuant to 37 CFR 1.530, and the order will not…
Read MoreCan a patent owner file a statement before the reexamination order?
No, a patent owner cannot file a statement before the reexamination order is issued. MPEP 2249 states: “The patent owner has no right to file a statement subsequent to the filing of the request under 35 U.S.C. 302 but prior to the order for reexamination. Any such premature statement will not be acknowledged nor considered…
Read MoreWhat are the time limits for filing a patent owner’s statement in ex parte reexamination?
According to MPEP 2254, the patent owner has specific time limits for filing a statement in ex parte reexamination: The patent owner has two months from the date of the order for reexamination to file a statement. This period may be extended by up to one additional month upon request and payment of the requisite…
Read MoreWhat are the requirements for a patent owner’s statement in an inter partes reexamination request?
In an inter partes reexamination request, the patent owner’s statement must meet specific requirements as outlined in MPEP 2614: The statement should be clearly identified as a “statement by the patent owner.” It must address each substantial new question of patentability identified in the request. The statement should be limited to 50 pages, excluding evidence…
Read MoreCan a patent owner file a statement after the 2-month deadline in ex parte reexamination?
No, a patent owner cannot file a statement after the 2-month deadline in ex parte reexamination. The MPEP 2252 clearly states: “The patent owner’s statement that is filed after the 2-month period will not be considered.” This strict deadline is part of the reexamination process to ensure timely proceedings. If the patent owner misses this…
Read MoreWhat should be included in a patent owner’s statement during ex parte reexamination?
A patent owner’s statement during ex parte reexamination should address the patentability of the claims in light of the prior art cited in the request. According to MPEP 2252, the statement may include: An explanation of why the patent claims are patentable Any proposed amendments to the claims New claims proposed to be added The…
Read MoreWhat happens if a patent owner fails to file a statement in response to an ex parte reexamination request?
If a patent owner fails to file a statement in response to an ex parte reexamination request, the reexamination will proceed without the patent owner’s input at that stage. The MPEP 2252 states: “If no statement is filed by the patent owner, the reexamination will be conducted initially on the claims as they stand in…
Read More