What is the purpose of the first Office action in a patent reexamination?
The first Office action in a patent reexamination serves to establish the examiner’s position and should be comprehensive. According to MPEP 2262, “The examiner’s first Office action will be a statement of the examiner’s position and should be so complete that the second Office action can properly be made a final action.” This means the…
Read MoreCan the decision on a petition from denial of reexamination be appealed?
No, the decision on a petition from denial of reexamination cannot be appealed. MPEP 2248 clearly states: “This decision is final and nonappealable. See 35 U.S.C. 303(c) and 37 CFR 1.515(c). No further communication on this matter will be acknowledged or considered.” This means that once the CRU Director makes a decision on the petition,…
Read MoreWhat is a final action in patent reexamination?
A final action in patent reexamination is typically the second Office action issued by the examiner. MPEP 2269 refers to this: “Any amendment after the second Office action, which will normally be final as provided for in MPEP § 2271, must ordinarily be restricted to the rejection or to the objection or requirement made.” A…
Read MoreWhat fees are associated with requesting an oral hearing in a patent reexamination appeal?
Requesting an oral hearing in a patent reexamination appeal involves specific fees as outlined in MPEP 2276: The primary fee is set forth in 37 CFR 41.20(b)(3) and must be submitted with the written request for the oral hearing. If the appellant wishes to petition for a closed hearing, an additional petition fee as set…
Read MoreAre extensions of time available for responding to an Examiner’s Answer in patent reexamination?
Extensions of time for responding to an Examiner’s Answer in patent reexamination proceedings are available, but they are subject to specific rules. According to MPEP § 2275: “Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of…
Read MoreWhat are the exceptions to finding an SNQ in patent reexamination?
There are specific exceptions to finding a substantial new question of patentability (SNQ) in patent reexamination. The MPEP 2242 outlines these exceptions: “A prior art patent or printed publication cannot be properly applied as a ground for reexamination if it is merely cumulative to, or less relevant than, prior art patents or printed publications already…
Read MoreWhat is an Examiner’s Answer in patent reexamination proceedings?
An Examiner’s Answer is a written response provided by the primary examiner to an appeal brief in a patent reexamination proceeding. According to MPEP § 2275, “The primary examiner may, within such time as may be directed by the Director, furnish a written answer to the appeal brief.” The Examiner’s Answer addresses the arguments presented…
Read MoreHow does an examiner handle a not fully responsive submission in patent reexamination?
When an examiner encounters a not fully responsive submission in a patent reexamination, they have several options: Waive the deficiencies if they are not serious and act on the submission Accept the amendment as a response but notify the patent owner that the omission must be supplied Notify the patent owner that the response must…
Read MoreWhat is the fee for filing an ex parte reexamination request?
What is the fee for filing an ex parte reexamination request? The fee for filing an ex parte reexamination request varies depending on the entity size. As of September 2022: For large entities: $6,500 For small entities: $3,250 For micro entities: $1,625 These fees are subject to change. Always check the current USPTO fee schedule…
Read MoreWhat is the fee structure for requesting ex parte reexamination under 35 U.S.C. 302?
The fee structure for requesting ex parte reexamination under 35 U.S.C. 302 depends on the filing date and the nature of the request: For requests filed on or after January 16, 2018: A reduced fee under 37 CFR 1.20(c)(1) for “streamlined” requests (40 or fewer pages and meeting specific requirements) A higher fee under 37…
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