What information is included in a Notice of Noncompliant Supplemental Examination Request?
A Notice of Noncompliant Supplemental Examination Request contains specific information to help the patent owner understand and address the issues. According to the MPEP: The notice will specify the defects found in the request, and provide a specified time, generally 15 days, within which a corrected request may be timely filed. If further explanation is…
Read MoreWhat happens if a patent owner doesn’t respond to a Notice of Noncompliant Supplemental Examination Request?
If a patent owner fails to respond to a Notice of Noncompliant Supplemental Examination Request within the specified time, there are consequences. The MPEP states: If the patent owner does not timely comply with the notice, the request for supplemental examination will not be granted a filing date and the fee for reexamination as set…
Read MoreWhat are the consequences of a patent owner failing to respond to an Office action in an inter partes reexamination?
Failing to respond to an Office action in an inter partes reexamination can have serious consequences for the patent owner. While the MPEP section provided doesn’t directly address this, it refers to another section that does: “See MPEP § 2666.10 for the consequences of the failure by the patent owner to respond to the Office…
Read MoreWhat happens if a patent owner fails to notify the Office of prior or concurrent proceedings?
If a patent owner fails to notify the Office of prior or concurrent proceedings as required by 37 CFR 1.985, there can be serious consequences. According to MPEP 2282: “Where the patent owner has not complied with the notice requirement of 37 CFR 1.985, and the reexamination proceeding is concluded by the issuance and publication…
Read MoreHow can a patent owner change the correspondence address after a patent issues?
According to MPEP 2622, a patent owner can change the correspondence address after a patent issues. The process depends on whether a reexamination proceeding is pending: 1. If a reexamination proceeding is pending, address the request to: Mail Stop “Inter Partes Reexam”Attn: Central Reexamination UnitCommissioner for PatentsP.O. Box 1450Alexandria, VA 22313-1450 2. If no reexamination…
Read MoreHow can a patent owner change the correspondence address for a patent under reexamination?
To change the correspondence address for a patent under reexamination, the patent owner should submit a request to the USPTO. The MPEP 2222 provides specific instructions for such submissions: “Where a request for ex parte reexamination has been filed:” Mail Stop “Ex Parte Reexam”Attn: Central Reexamination UnitCommissioner for PatentsP.O. Box 1450Alexandria, VA 22313-1450 For inter…
Read MoreCan a patent owner file an ex parte reexamination request?
Yes, a patent owner can file an ex parte reexamination request. The MPEP 2210 states: “If a request filed by the patent owner includes a proposed amendment in accordance with 37 CFR 1.530, excess claims fees under 37 CFR 1.20(c)(3) and (c)(4) may also apply.” This provision allows patent owners to proactively address potential patentability…
Read MoreWho can sign a submission requesting a change of correspondence address in a supplemental examination?
A submission requesting a change of correspondence address in a supplemental examination can be signed by: All of the patent owners (see MPEP § 2803) The registered attorney or agent of record in the file of the patent under supplemental examination Additionally, for applications filed on or after September 12, 2012, the MPEP states: “If…
Read MoreHow does the term “applicant” apply in reexamination under 35 U.S.C. 257?
In ex parte reexamination ordered under 35 U.S.C. 257, the term “applicant” is interpreted differently than in standard patent applications. According to MPEP 2818.01: “Any reference to ‘applicant’ in 37 CFR 1.56(b) will be read as ‘patent owner’ in the context of a supplemental examination proceeding and any resulting ex parte reexamination proceeding under 35…
Read MoreCan a supplemental examination request be made anonymously?
No, a supplemental examination request cannot be made anonymously. The MPEP 2816 clearly states: “A request for supplemental examination may be filed by the patent owner. A supplemental examination request may not be filed by a third party.” This means that only the patent owner can file a request for supplemental examination, and they must…
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