What is the time limit for deciding on a reexamination request under 35 U.S.C. 302?
According to MPEP 2241, the determination of whether or not to reexamine must be made within 3 months following the filing date of a request. This is based on 35 U.S.C. 303(a) and 37 CFR 1.515(a). The MPEP states: “The determination of whether or not to reexamine must be made within 3 months following the…
Read MoreWhat are the format requirements for amendments in reexamination proceedings?
Amendments in reexamination proceedings must adhere to specific format requirements. MPEP 2221 states: “Any such amendment must be in accordance with 37 CFR 1.530(d) through (j). See MPEP § 2250 as to the format and requirements of an amendment in a reexamination proceeding.” To ensure compliance, patent owners should carefully review 37 CFR 1.530(d) through…
Read MoreWhat is the purpose of supplemental examination?
Supplemental examination is a process in patent law that allows patent owners to request the United States Patent and Trademark Office (USPTO) to consider, reconsider, or correct information believed to be relevant to their patent. This process is primarily used to address potential issues of inequitable conduct or other patentability concerns that may have arisen…
Read MoreHow are prior art citations processed during inter partes reexamination?
The processing of prior art citations during inter partes reexamination is governed by 37 CFR 1.902. The regulation states: “Citations by the patent owner in accordance with § 1.933 and by an inter partes reexamination third party requester under § 1.915 or § 1.948 will be entered in the inter partes reexamination file.” However, the…
Read MoreWhat are the requirements for applying pre-AIA 35 U.S.C. 103(b)?
There are several key requirements for applying pre-AIA 35 U.S.C. 103(b): The biotechnological process and composition of matter must be in the same application or separate applications with the same effective filing date. Both must be owned or assigned to the same person when the process was invented. The patent issued on the process must…
Read MoreWhat notices are issued regarding compliance with Portola Packaging in reexaminations?
The MPEP outlines specific notices that should be issued regarding compliance with the Portola Packaging decision in reexaminations ordered before November 2, 2002: If the prosecution of an ongoing reexamination is terminated to comply with Portola Packaging, the Notice of Intent to Issue Ex Parte Reexamination Certificate should state:“The prosecution of this reexamination is terminated…
Read MoreWhat is a petition for stay in processing of a patent term extension application?
A petition for stay in processing of a patent term extension application is a request made by a patent owner to temporarily halt the processing of their patent term extension application. This is typically done when there are unresolved issues relating to the patent, such as involvement in an interference, an appeal of a trial…
Read MoreWhat are the requirements for petitioning for a different filing date for an international design application?
Applicants can petition for a different filing date for an international design application in the United States under certain circumstances. MPEP 2908 outlines the requirements for such a petition, which are based on 37 CFR 1.1023(b): “Where the applicant believes the international design application is entitled under the Hague Agreement to a filing date in…
Read MoreHow can a patentee become eligible to suggest an interference?
A patentee can become eligible to suggest an interference by filing a reissue application. This process effectively transforms the patentee into an applicant, granting them the ability to suggest an interference. As stated in MPEP 2304.03: “A patentee may not suggest an interference unless it becomes an applicant by filing a reissue application.” The steps…
Read MoreWhat happens to a patent term extension application when a reissue patent is filed?
When a reissue patent is filed during the processing of a patent term extension application, several steps need to be taken: The Office should receive notice of the reissue filing (see MPEP § 2762). If necessary, the applicant should request a stay of action on the term extension application (see MPEP § 2765). If the…
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