What information must be included in a Certificate of Service for patent reexamination?
A Certificate of Service for patent reexamination must include specific information to be valid. According to MPEP 2220: The name and address of the party served (i.e., the patent owner) The method of service used The MPEP states: “The third party requester must set forth on the certificate of service the name and address of…
Read MoreWhat documents are required when submitting a request for reexamination of a patent?
When submitting a request for reexamination of a patent, the following documents are required: A copy of the printed patent in double column format, including the front page Any disclaimer, certificate of correction, or reexamination certificate issued for the patent Any relevant federal court decision, complaint in a pending civil action, or interference or derivation…
Read MoreWhat is the process for requesting an oral hearing in a patent reexamination appeal?
To request an oral hearing in a patent reexamination appeal, the appellant (patent owner) must: File a written request for the hearing Pay the fee set forth in 37 CFR 41.20(b)(3) Submit the request within two months after the date of the examiner’s answer or supplemental examiner’s answer As stated in MPEP 2276, “The time…
Read MoreHow can an appellant request a closed oral hearing in a patent reexamination appeal?
To request a closed oral hearing in a patent reexamination appeal, the appellant must follow a specific process outlined in MPEP 2276: File a petition under 37 CFR 41.3 requesting that the hearing not be open to the public Present sufficient reasons to justify the closed hearing Pay the petition fee set forth in 37…
Read MoreHow does the “reasonable likelihood that the requester will prevail” standard differ from the SNQ standard?
The “reasonable likelihood that the requester will prevail” (RLP) standard was introduced for reexaminations filed between September 16, 2011, and September 16, 2012. This standard is considered more stringent than the “substantial new question of patentability” (SNQ) standard. According to the MPEP, which cites House Rep. 112-98: “The threshold for initiating an inter partes review…
Read MoreWhat is the purpose of submitting written statements in patent reexamination proceedings?
The purpose of submitting written statements in patent reexamination proceedings is to provide additional context or explanation related to prior art citations. According to MPEP 2202: “The written statement should be directed to the pertinence of the cited prior art.” These statements can help clarify the relevance of cited prior art to the patent under…
Read MoreAre oral hearings in patent reexamination appeals open to the public?
Generally, oral hearings in patent reexamination appeals are open to the public as observers. However, the appellant can request a closed hearing under certain conditions. According to MPEP 2276: “Where the appeal involves reexamination proceedings, oral hearings are open to the public as observers (subject to the admittance procedures established by the Board), unless the…
Read MoreHow does a prior adverse decision by the USPTO affect the determination of a substantial new question of patentability?
A prior adverse decision by the USPTO can significantly impact the determination of a substantial new question of patentability (SNQ) in a reexamination proceeding. The MPEP provides guidance on this issue: Prior adverse decisions on the same prior art: If the USPTO has previously made an adverse decision on patentability based on the same prior…
Read MoreCan I make a biological material deposit after a patent has been issued?
No, you cannot make an original biological material deposit after a patent has been issued. The Manual of Patent Examining Procedure (MPEP) 2406 clearly states: “Insofar as the rules do not permit post-issuance original deposits, the failure to make an original deposit in an application cannot be cured by filing a reissue application or instituting…
Read MoreHow does the Portola Packaging decision affect patent reexaminations?
The In re Portola Packaging Inc. decision significantly impacted patent reexaminations ordered before November 2, 2002. The key effects are: Old art generally cannot be the sole basis for a rejection in these reexaminations. If prior art was previously relied upon to reject a claim or its relevance to patentability was actually discussed on the…
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