What are the four ways ex parte reexamination proceedings can be concluded?
According to MPEP 2294, ex parte reexamination proceedings can be concluded in four ways: Denial of reexamination, vacating the reexamination proceeding, or terminating the reexamination proceeding Issuance of a Reexamination Certificate under 37 CFR 1.570(b) Merging with a reissue proceeding and granting a reissue patent under 37 CFR 1.570(e) Merging with an inter partes reexamination…
Read MoreWhat is the effective date for intervening rights in patent reexamination?
The effective date for intervening rights in patent reexamination is crucial for determining when these rights begin to apply. Key points include: The effective date is the issue date of the reexamination certificate. Intervening rights do not apply retroactively to the original patent date. Actions taken after the reexamination certificate’s issue date may be subject…
Read MoreWhat is an “earlier concluded examination or review” in the context of patent reexamination?
An “earlier concluded examination or review” is a key concept in determining whether a substantial new question of patentability exists. The MPEP defines it as: The original examination of the application which matured into the patent The examination of the patent in a reissue application that has resulted in a reissue of the patent The…
Read MoreWhat is double correspondence in patent reexamination proceedings?
MPEP 2622 addresses the issue of double correspondence in patent reexamination proceedings. The section states: “Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken.“ This means that the USPTO will not send multiple copies of the same…
Read MoreWhat is reexamination ordered at the Director’s initiative?
Reexamination ordered at the Director’s initiative is a process where the Director of the USPTO can initiate an ex parte reexamination of a patent without a request being filed or a fee being paid. As stated in MPEP 2239: “The Director, at any time during the period of enforceability of a patent, may determine whether…
Read MoreWhat are the key differences in ex parte reexamination ordered under 35 U.S.C. 257?
Ex parte reexamination ordered under 35 U.S.C. 257 has several key differences from standard ex parte reexamination: The patent owner cannot file a statement under 37 CFR 1.530. Reexamination can be conducted based on any item of information, not just patents and printed publications. Additional issues beyond those raised by patents and printed publications can…
Read MoreWhat is the difference between “a substantial new question of patentability” and a “prima facie case of unpatentability”?
The MPEP distinguishes between “a substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” in the context of patent reexamination. Specifically: “It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to…
Read MoreWhat are the deadlines for requesting an oral hearing in a patent reexamination appeal?
The deadlines for requesting an oral hearing in a patent reexamination appeal are strictly defined in MPEP 2276: “[The appellant] must file a written request for such hearing accompanied by the fee set forth in 37 CFR 41.20(b)(3) within two months after the date of the examiner’s answer or supplemental examiner’s answer. The time for…
Read MoreHow do court decisions impact the determination of a substantial new question of patentability?
Court decisions can impact the determination of a substantial new question of patentability (SNQ) or reasonable likelihood that the requester will prevail (RLP), but their influence varies depending on the nature of the decision. The MPEP outlines several scenarios: Final holding of validity: A final court decision that a patent claim is not invalid doesn’t…
Read MoreWhat happens if the USPTO denies a request for inter partes reexamination?
What happens if the USPTO denies a request for inter partes reexamination? If the USPTO denies a request for inter partes reexamination, several important steps follow, as outlined in MPEP 2646: The requester is notified of the denial. The requester is given one opportunity to seek review of the denial. The patent owner is sent…
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