How do I update my address for patent correspondence with the USPTO?
How do I update my address for patent correspondence with the USPTO? To update your address for patent correspondence with the USPTO: Use the Change of Correspondence Address Form PTO/AIA/122 for applications filed on or after September 16, 2012. Use Form PTO/SB/122 for applications filed before September 16, 2012. Submit the form to the USPTO’s…
Read MoreHow are unsigned papers handled in inter partes reexamination?
Unsigned papers in inter partes reexamination are generally denied consideration but retained in the file. According to MPEP 2667: “Papers filed by the patent owner which are unsigned, or signed by fewer than all of the patent owners where no attorney or agent is of record or acting in representative capacity, will be denied consideration,…
Read MoreHow does the USPTO handle undelivered orders in inter partes reexamination?
The USPTO has a specific policy for handling undelivered orders in inter partes reexamination to ensure the process continues without unnecessary delays. According to MPEP 2654: “Reexamination will proceed even if the order is returned undelivered. As pointed out in MPEP § 2630, the notice under 37 CFR 1.11(c) is constructive notice to the patent…
Read MoreWhat is the time period given to a patent owner to correct an omission in their response?
When a patent owner’s submission is not fully responsive due to an omission, the examiner typically provides a new time period for correction. According to MPEP 2666.30: “The patent owner should be notified of the deficiency and the correction needed, and given a new time period for response (usually one month) pursuant to 37 CFR…
Read MoreWhat are the service requirements for a third party requester’s reply in ex parte reexamination?
In ex parte reexamination, the third party requester must serve a copy of their reply on the patent owner. MPEP 2251 states: “Any reply by the ex parte requester must be served upon the patent owner in accordance with § 1.248.” Additionally, the MPEP directs readers to MPEP § 2266.03 for further details on service…
Read MoreCan third parties participate in a supplemental examination proceeding?
No, third parties are prohibited from participating in supplemental examination proceedings. MPEP 2813 clearly states this prohibition based on statutory and regulatory requirements: “In accordance with 35 U.S.C. 257(a), any party other than the patent owner is prohibited from filing papers or otherwise participating in any manner in the supplemental examination proceeding. See 37 CFR…
Read MoreCan a patent owner rely on a third party’s paper for the detailed explanation in a supplemental examination request?
No, a patent owner cannot rely on a paper drafted by a third party, including a patent examiner, to provide the detailed explanation required in a supplemental examination request. The MPEP clearly states: “The detailed explanation must reflect the opinion of the patent owner, and not that of a third party (including a patent examiner).”…
Read MoreCan a patent owner file a supplemental response in an inter partes reexamination?
Yes, a patent owner can file a supplemental response in an inter partes reexamination, but it must meet specific requirements. According to MPEP 2666, “Pursuant to 37 CFR 1.945(b), any supplemental response to the Office action in an inter partes reexamination proceeding must be accompanied by a showing of sufficient cause why the supplemental response…
Read MoreWhat are the requirements for granting a filing date to a supplemental examination request?
For a supplemental examination request to be granted a filing date, it must comply with specific regulations. According to 37 CFR 1.610(d), as quoted in the MPEP: The filing date of a request for supplemental examination will not be granted if the request is not in compliance with §§ 1.605, 1.615, and this section, subject…
Read MoreWhat is supplemental examination and how does it relate to ex parte reexamination?
Supplemental examination is a proceeding introduced by the America Invents Act (AIA) that allows patent owners to request the USPTO to consider, reconsider, or correct information relevant to their patent. If a substantial new question of patentability is raised, an ex parte reexamination will be ordered. The MPEP explains: “Section 12 of the AIA added…
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