What happens if a reexamination is inadvertently assigned to the original examiner?
If a reexamination is inadvertently assigned to the original examiner without the required approval, the following steps apply: The patent owner or third party requester must promptly file a paper alerting the Office of this fact. This paper must be filed within two months of the first Office action or communication indicating the examiner assignment.…
Read MoreWho can sign amendments and papers on behalf of patent owners in ex parte reexamination proceedings?
In ex parte reexamination proceedings, the MPEP specifies who can sign amendments and other papers on behalf of patent owners: “Amendments and other papers filed on behalf of patent owners must be signed by the patent owners, or the registered attorney or agent of record in the patent file, or any registered attorney or agent…
Read MoreHow does the duty to disclose apply in reexamination proceedings?
The duty to disclose in reexamination proceedings is similar to that in patent applications, but applies to a slightly different group of individuals. According to the MPEP, for reexamination proceedings, the duty applies to: “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on…
Read MoreWhat is the duty of disclosure in ex parte reexamination proceedings?
The duty of disclosure in ex parte reexamination proceedings filed under 35 U.S.C. 302 applies to the patent owner, attorneys or agents representing the patent owner, and individuals substantively involved on behalf of the patent owner. This duty requires disclosing all information known to be material to patentability. As stated in MPEP 2280: “The continuing…
Read MoreWhat is the duty of disclosure in inter partes reexamination proceedings?
The duty of disclosure in inter partes reexamination proceedings is defined in 37 CFR 1.933. It requires that: “Each individual associated with the patent owner in an inter partes reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information…
Read MoreWhat are the requirements for document service in inter partes reexamination?
In inter partes reexamination, there are specific requirements for document service to ensure both parties are informed of all communications. According to MPEP 2654, which cites 35 U.S.C. 314(b)(1): “With the exception of the inter partes reexamination request, any document filed by either the patent owner or the third-party requester shall be served on the…
Read MoreHow can a patent owner designate a new attorney or agent to receive correspondence?
If a patent owner wants a different attorney or agent to receive correspondence, they must file a new power of attorney with the USPTO. The MPEP 2222 states: “If the patent owner desires that a different attorney or agent receive correspondence, then a new power of attorney must be filed.” For reexamination proceedings, patent owners…
Read MoreHow is correspondence handled for a requester in ex parte reexamination?
Correspondence handling for a requester in ex parte reexamination depends on whether the requester is the patent owner or not. According to MPEP 2213: For a requester that is not the patent owner: “All correspondence for a requester that is not the patent owner is addressed to the representative of the requester, unless a specific…
Read MoreHow can a patent owner correct a noncompliant supplemental examination request?
If a patent owner receives a Notice of Noncompliant Supplemental Examination Request, they have the opportunity to correct the request. The MPEP outlines the process: If the patent owner timely files a corrected request in response to the notice that properly addresses all of the defects set forth in the notice and that otherwise complies…
Read MoreWhat is a corrected request in supplemental examination?
A corrected request in supplemental examination is the patent owner’s one opportunity to address defects in their original supplemental examination request. As stated in the MPEP, “The patent owner has one opportunity to file a corrected request in response to a Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d)).” This corrected request must address…
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