Can the title of a patent be changed during reexamination?
Normally, the title of a patent does not need to be changed during reexamination. However, in rare instances, it may be necessary. The MPEP 2660.02 states: “In those very rare instances where a change of the title does become necessary, the examiner should point out the need for the change as early as possible in…
Read MoreWho can sign amendments and other papers in a patent reexamination proceeding?
According to MPEP 2622, amendments and other papers filed in a reexamination proceeding must be signed by specific individuals. The section states: “Amendments filed in a reexamination proceeding, and other papers filed in a reexamination or supplemental examination proceeding, on behalf of the patent owner must be signed by the patent owner, or if there…
Read MoreWhat is the correct address for correspondence in patent reexamination proceedings?
According to MPEP 2622, the correct address for all notices, official letters, and other communications for patent owners in reexamination proceedings is the correspondence address for the patent being reexamined. This is specified in 37 CFR 1.33(c), which states: “All notices, official letters, and other communications for the patent owner or owners in a reexamination…
Read MoreCan a patent owner file papers on behalf of a third party in an inter partes reexamination?
No, a patent owner cannot file papers on behalf of a third party in an inter partes reexamination. The MPEP is clear on this matter: “The patent owner cannot file papers on behalf of a third party.” If a third party paper is submitted as part of a patent owner’s response, the entire submission will…
Read MoreWhat is the time limit for a patent owner to respond to an Office action in an inter partes reexamination?
The patent owner is typically given a period of two months to respond to an Office action in an inter partes reexamination. As stated in the MPEP, “The patent owner will normally be given a period of two months to respond to an Office action.” It’s important to note that extensions of time are limited…
Read MoreWhat are the content restrictions for a patent owner’s rebuttal brief?
The content restrictions for a patent owner’s rebuttal brief in an inter partes reexamination are outlined in MPEP 2678, which references 37 CFR 41.71(b): “(1) The rebuttal brief of the owner may be directed to the examiner’s answer and/or any respondent brief. (2) The rebuttal brief of the owner shall not include any new or…
Read MoreCan a patent owner file citations of prior art against their own patent?
Yes, a patent owner can file citations of prior art against their own patent. According to MPEP 2202: “The patent owner may file citations of prior art for entry in the patent file.” This provision allows patent owners to proactively address potential prior art that might affect the validity of their patent. By submitting such…
Read MoreCan a patent owner request ex parte reexamination?
Yes, a patent owner can request ex parte reexamination. According to MPEP 2212: “The patent owner can ask for reexamination which will be limited to an ex parte consideration of prior art patents or printed publications.“ However, if the patent owner wishes to have a wider consideration of issues by the USPTO, including matters such…
Read MoreWhat is the official correspondence address for a patent owner in reexamination proceedings?
In reexamination proceedings, the official correspondence address for the patent owner is typically the address of record in the file of the patent being reexamined. The MPEP specifies: Usually, the official correspondence address of the patent owner, which is of record in the file of the patent, is the mailing address of patent owner’s legal…
Read MoreWhat is the correspondence address used for patent owners in ex parte reexamination?
In ex parte reexamination, the correspondence address for the patent owner is typically the official correspondence address of record in the file of the patent being reexamined. The MPEP section 2264 provides guidance on this: “Usually, the official correspondence address of the patent owner, which is of record in the file of the patent, is…
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