Can a patent owner incorporate by reference a paper from another proceeding in a supplemental examination request?
No, a patent owner cannot incorporate by reference a paper from another proceeding to satisfy the detailed explanation requirement in a supplemental examination request. The MPEP clearly states: “A request for supplemental examination must stand on its own. A request for supplemental examination cannot be made, and the requirements for a detailed explanation pursuant to…
Read MoreWhat constitutes a final decision by the Patent Trial and Appeal Board?
The MPEP provides specific criteria for what constitutes a final decision by the Patent Trial and Appeal Board (PTAB). According to MPEP 2301.02, a decision is considered final for the purposes of judicial review under these conditions: “Final means, with regard to a Board action, final for the purposes of judicial review. A decision is…
Read MoreWhat is the extent of the duty of disclosure?
The duty of disclosure extends to all dealings with the United States Patent and Trademark Office (USPTO), not just interactions with patent examiners. This comprehensive obligation includes proceedings before various departments within the USPTO. As stated in MPEP 2001.03: “This duty ‘in dealing with’ and ‘to’ the Office extends, of course, to all dealings which…
Read MoreDoes the duty of disclosure apply to proceedings before the Patent Trial and Appeal Board?
Yes, the duty of disclosure applies to proceedings before the Patent Trial and Appeal Board (PTAB). The obligation to disclose material information extends beyond interactions with patent examiners and includes all dealings with the United States Patent and Trademark Office (USPTO). MPEP 2001.03 explicitly states: “For example, the duty would extend to proceedings before the…
Read MoreWhat are the expectations regarding conduct in ex parte reexamination proceedings?
The USPTO has specific expectations regarding conduct in ex parte reexamination proceedings. As stated in MPEP 2209: “Parties are cautioned that the reexamination statute, regulations, and published examining procedures do not countenance so-called ‘litigation tactics’ in reexamination proceedings. The parties are expected to conduct themselves accordingly.“ This means that participants should adhere to the established…
Read MoreWhat information must an attorney provide to a client when withdrawing from a patent proceeding?
When withdrawing from a patent proceeding, an attorney must provide specific information to the client. As per MPEP 2223, the practitioner must certify that they have: “notified the client of any responses that may be due and the time frame within which the client must respond.” This requirement ensures that the client is aware of…
Read MoreHow are citations processed during an ex parte reexamination proceeding?
During an ex parte reexamination proceeding, the processing of citations is governed by 37 CFR 1.502, as referenced in MPEP 2202. The key points are: Citations by the patent owner under 37 CFR 1.555 and by an ex parte reexamination requester under 37 CFR 1.510 or 1.535 are entered into the reexamination file during the…
Read MoreWhat are the requirements for an attorney or agent to withdraw from a patent proceeding?
According to MPEP 2223, for a practitioner to withdraw from a patent and/or reexamination proceeding, they must certify that they have: Given reasonable notice to the client, prior to the expiration of the response period, of their intention to withdraw Delivered all papers and property (including funds) to which the client is entitled Notified the…
Read MoreWhat must an attorney deliver to a client when withdrawing from a patent proceeding?
When withdrawing from a patent proceeding, an attorney must deliver specific items to the client. According to MPEP 2223, the practitioner must certify that they have: “delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled” This requirement ensures that the…
Read MoreWhat types of third-party submissions are accepted during inter partes reexamination?
During an inter partes reexamination proceeding, the USPTO generally does not enter third-party submissions filed after the date of the order into the reexamination file or patent file, unless the third party is a reexamination requester. However, MPEP 2686 states: “[T]he Office will, at any time, accept from any parties, for entry into the reexamination…
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