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…

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What 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…

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Does 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…

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What 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…

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What 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…

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What 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…

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What 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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