How does the KSR decision affect the determination of a substantial new question of patentability?
The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly alter the standard for determining whether a substantial new question of patentability (SNQ) exists. The MPEP states: “Note that the clarification of the legal standard for determining obviousness under 35 U.S.C. 103…
Read MoreWhat is the relationship between intervening rights and the effective date of the reexamination certificate?
What is the relationship between intervening rights and the effective date of the reexamination certificate? The effective date of the reexamination certificate is crucial in determining the application of intervening rights. According to MPEP 2293: “The date of the reexamination certificate is the date of issue from which the patent claims as stated in the…
Read MoreHow do intervening rights protect third parties in patent reexamination?
How do intervening rights protect third parties in patent reexamination? Intervening rights protect third parties who have relied on the original patent claims before the reexamination. As explained in MPEP 2293: “The doctrine of intervening rights as set forth in 35 U.S.C. 252 protects the substantive rights of persons and businesses that relied on the…
Read MoreWhat are intervening rights in patent reexamination?
Intervening rights in patent reexamination are protections granted to individuals or entities who have used or prepared to use a patented invention before the patent was amended during reexamination. These rights are defined in 35 U.S.C. 307(b), which states: “Any proposed amended or new claim determined to be patentable and incorporated into a patent following…
Read MoreWhat is the timeframe for the Director to make a determination on an inter partes reexamination request?
According to 35 U.S.C. 312, the Director must make a determination on an inter partes reexamination request within 3 months of the filing date. The MPEP states: “35 U.S.C. 312 requires that the Director of the Office determine whether or not a ‘substantial new question of patentability’ affecting any claim of the patent of which…
Read MoreHow are unusual fact patterns handled in patent reexaminations with respect to Portola Packaging?
The MPEP acknowledges that cases with unusual fact patterns may occur in patent reexaminations, particularly when considering the Portola Packaging decision. In such cases: The reexamination should be brought to the attention of the Central Reexamination Unit (CRU) or Technology Center (TC) Director. The CRU or TC Director will determine the appropriate action to be…
Read MoreWhere can I find guidance on the former inter partes reexamination practice?
Guidance on the former inter partes reexamination practice can be found in two main sources: Revision 7 of the 8th Edition of the MPEP The Federal Register notice titled “Revision of Standard for Granting an Inter Partes Reexamination Request,” published on September 23, 2011 As stated in MPEP 2611, “Guidance on the former practice is…
Read MoreWhat happens if a petition for reexamination is granted after initial denial?
If a petition for reexamination is granted after an initial denial, the process moves forward. According to MPEP 2248: “If the petition is granted, the decision of the CRU Director should include a sentence setting a two-month period for filing a statement under 37 CFR 1.530; the reexamination file will then be returned to the…
Read MoreWhat is Form Paragraph 22.14 used for in patent reexamination?
Form Paragraph 22.14 is used in patent reexamination when a submission is not fully responsive to a non-final Office action. It serves to notify the patent owner of the deficiency and provides instructions on how to proceed. According to MPEP 2266.01: “Form paragraph 22.14 may be used where a bona fide response is not entirely…
Read MoreHow are foreign language documents handled in patent reexamination?
How are foreign language documents handled in patent reexamination? Foreign language documents require special handling in patent reexamination proceedings. According to MPEP 2253: “If a document in a foreign language is relied on, a translation of at least the relevant portion thereof must be submitted.“ This requirement ensures that the examiner can fully understand and…
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