What is a reexamination certificate?
A reexamination certificate is a document issued by the USPTO after the completion of a patent reexamination process. It confirms the patentability of the original patent claims, cancels any unpatentable claims, or incorporates allowed amended or new claims. The distribution of this certificate is crucial, as outlined in MPEP 2292: “An e-copy of the reexamination…
Read MoreWhat is a decision denying reexamination?
A decision denying reexamination is a formal response issued by a patent examiner when a request for inter partes reexamination fails to establish a substantial new question of patentability (SNQ) or a reasonable likelihood of prevailing (RLP) based on patents or printed publications. As stated in the MPEP: “The request for reexamination will be denied…
Read MoreHow does the USPTO handle multiple pending reexamination proceedings for the same patent?
The MPEP 2254 provides guidance on handling multiple pending reexamination proceedings for the same patent: Multiple ex parte reexamination proceedings are generally merged into a single proceeding. If an inter partes reexamination is also pending, it takes precedence over ex parte reexaminations. The USPTO may suspend one proceeding in favor of another to promote efficiency.…
Read MoreHow does the USPTO determine if an SNQ exists for patent reexamination?
The USPTO determines if a substantial new question of patentability (SNQ) exists for patent reexamination through a careful evaluation process. According to MPEP 2242: “If a reexamination request relies on references already considered by the Office, the request must demonstrate that a substantial new question of patentability is raised by the art, when the art…
Read MoreWhat are the different types of intervening rights in patent reexamination?
What are the different types of intervening rights in patent reexamination? There are two types of intervening rights in patent reexamination: Absolute intervening rights: These allow continued use or sale of specific products made before the reissue Equitable intervening rights: These may be granted by the court for products made after the reissue As stated…
Read MoreWhat happens when a reexamination proceeding is terminated?
When a reexamination proceeding is terminated, the following steps are taken according to MPEP 2294: The reexamination file is forwarded to the Central Reexamination Unit (CRU) if not already there The file is given a 420 status A copy of the PALM “Application Number Information” screen and the “Contents” screen is printed and annotated with…
Read MoreWhat is the significance of “substantially identical” claims in intervening rights?
The concept of “substantially identical” claims is crucial in determining whether intervening rights apply in patent reexamination or reissue cases: Intervening rights only apply to claims that are not substantially identical to the original claims. If a claim is substantially identical to the original, it is treated as if it was in the original patent,…
Read MoreWhat is the difference between a “substantial new question of patentability” and a “prima facie case of unpatentability”?
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242: It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new…
Read MoreWhat is a “substantial new question of patentability” in patent reexamination?
A “substantial new question of patentability” (SNQ) is the key criterion for deciding whether to order reexamination of a patent under 35 U.S.C. 302. According to the MPEP 2242, an SNQ exists when: Prior art patents or printed publications raise a substantial question of patentability for at least one claim, and The same question has…
Read MoreWhat happens if a Substantial New Question of Patentability (SNQ) is raised?
If the supplemental examination certificate states that a Substantial New Question of Patentability (SNQ) is raised, an ex parte reexamination of the patent will be ordered. As stated in MPEP 2817: “If the supplemental examination certificate states that a SNQ is raised by one or more of the items of information submitted as part of…
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