What is the requirement for serving prior art or Section 301 written statements on a patent owner?
When a person other than the patent owner submits prior art patents, printed publications, or Section 301 written statements to a patent file, they must serve a copy of this submission on the patent owner. This requirement ensures that the patent owner is fully informed about the contents of their patent file wrapper/file history. The…
Read MoreHow can a patent owner satisfy the duty of disclosure in an inter partes reexamination?
According to 37 CFR 1.933(a), a patent owner can satisfy the duty of disclosure in an inter partes reexamination by: “The duty to disclose all information known to be material to patentability in an inter partes reexamination proceeding is deemed to be satisfied by filing a paper in compliance with the requirements set forth in…
Read MoreWho is responsible for compliance with the duty of disclosure in inter partes reexamination?
The responsibility for compliance with the duty of disclosure in inter partes reexamination rests with specific individuals. According to 37 CFR 1.933(b): “The responsibility for compliance with this section rests upon the individuals designated in paragraph (a) of this section, and no evaluation will be made by the Office in the reexamination proceeding as to…
Read MoreWhat are the time periods for response in ex parte reexamination proceedings?
In ex parte reexamination proceedings, specific time periods are set for responses. According to MPEP 2254: “The time periods set for response are one month (30 days) from the mailing date of the Office action for the patent owner, and one month (30 days) from the date of service for any third party requester.“ However,…
Read MoreWhat are the requirements for a submission of patents and publications to be included in the reexamination certificate?
For a submission of patents and publications to be included in the reexamination certificate, it must meet specific requirements. MPEP 2257 outlines these requirements: “A submission of patents and/or publications is entitled to entry and citation in the reexamination certificate (that will be issued) when it complies with 37 CFR 1.98 and is submitted:” By…
Read MoreWho receives copies of the reexamination decision and prior art documents?
According to MPEP 2245, after a reexamination decision is processed: A copy of the decision is mailed to the patent owner If applicable, a copy is also sent to any third party involved in the reexamination Any required copies of prior art documents are included with the mailing The MPEP states: “A copy of the…
Read MoreWhat is the significance of mailing copies of prior art documents with reexamination decisions?
Mailing copies of prior art documents along with reexamination decisions is a crucial part of the patent reexamination process. As stated in MPEP 2245: “A copy of the decision is then mailed to the patent owner and to any third party, along with any required copies of prior art documents.“ The significance of this practice…
Read MoreWhat happens to premature responses by patent owners in reexamination proceedings?
Premature responses by patent owners in reexamination proceedings are not considered and are expunged from the file. According to MPEP 2267: “Where the patent owner is NOT the requester, any response or amendment filed by owner prior to an order to reexamine is premature, will not be considered, and will be expunged.” This rule is…
Read MoreHow are premature responses by patent owners handled in inter partes reexamination?
Premature responses by patent owners in inter partes reexamination are not considered and will be expunged. According to MPEP 2667: “Any response/comments as to materials of record or any amendment filed by the patent owner prior to the first Office action is premature and will not be considered, and will be expunged.” This is based…
Read MoreHow are premature appeals handled in inter partes reexamination?
Premature appeals in inter partes reexamination are not considered but are retained in the file. According to MPEP 2667: “Where a notice of appeal or notice of cross appeal is filed before a Right of Appeal Notice (RAN) has been issued, the paper will be retained in the file, but will not be considered (other…
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