How is a reexamination proceeding concluded with a Reexamination Certificate?
A reexamination proceeding can be concluded with the issuance of a Reexamination Certificate under 37 CFR 1.570(b). According to MPEP 2294, the process involves: Processing the reexamination as set forth in MPEP § 2287 Review by the CRU Supervisory Patent Reexamination Specialist (SPRS) or TC Quality Assurance Specialist (QAS) The MPEP states: “The proceeding may…
Read MoreHow should an examiner handle claim charts in a reexamination Office action?
When handling claim charts in a reexamination Office action, examiners should follow these guidelines from MPEP 2262: “Where the request for reexamination includes material such as a claim chart to explain a proposed rejection in order to establish the existence of a substantial new question of patentability, the examiner may bodily incorporate the claim chart…
Read MoreWhat is a Certificate of Service in patent reexamination?
A Certificate of Service in patent reexamination is a document that must be attached to a request for ex parte reexamination when the requester is not the patent owner. It certifies that a copy of the request has been served to the patent owner. According to MPEP 2220, “The third party requester must set forth…
Read MoreWhat is the significance of a ‘bona fide attempt’ in patent reexamination responses?
A ‘bona fide attempt’ in patent reexamination responses refers to a genuine effort by the patent owner to advance the reexamination proceeding to final action, even if the response contains minor deficiencies. According to MPEP 2266.01: “Where a patent owner submission responds to the rejections, objections, or requirements in a non-final Office action and is…
Read MoreWhat are the requirements for an attorney or agent to withdraw from a patent reexamination proceeding?
According to MPEP 2623, for a practitioner to withdraw from a patent and/or reexamination proceeding, they must comply with 37 CFR 11.116. The practitioner(s) must certify that they have: Given reasonable notice to the client, prior to the expiration of the response period, of their intention to withdraw from employment Delivered all papers and property…
Read MoreWhat additional requirements are there for amendments in reexamination?
Amendments in reexamination must meet several additional requirements: They must comply with the formal requirements of 37 CFR 1.52(a) and (b). Amendments must include all fees required by 37 CFR 1.20(c), including excess claim fees if applicable. Each amendment must set forth the status of all patent claims and all added claims as of the…
Read MoreWhat activities are protected by intervening rights in patent reexamination?
Intervening rights in patent reexamination protect specific activities carried out before the issuance of a reexamination certificate. According to 35 U.S.C. 307(b), these activities include: Making the patented invention Purchasing the patented invention Using the patented invention within the United States Importing the patented invention into the United States Making substantial preparation for any of…
Read MoreWhat is the significance of 37 CFR 1.515(c) in patent reexamination?
37 CFR 1.515(c) is a regulation that allows for a petition to challenge an examiner’s determination in a reexamination proceeding. The MPEP § 2255 states: “However, if a petition under 37 CFR 1.515(c) is granted after an examiner’s determination that found the request did not raise any SNQ, the reexamination will generally be conducted by…
Read MoreWhat is the role of Technology Center Directors in patent reexamination?
Technology Center Directors play a crucial role in certain patent reexamination cases. According to MPEP 1003, they are involved in unusual fact situations in patents that establish: There is a “compelling reason” to order reexamination At least one claim in the patent is prima facie unpatentable over prior patents and/or printed publications The MPEP specifically…
Read MoreWhat is the purpose of a title report in patent reexamination?
Title reports play a specific role in patent reexamination procedures. The MPEP mentions: For example, a title report is requested by the Reexamination Preprocessing Staff when a request for reexamination is filed. This suggests that title reports are used to verify the current owner of a patent when a reexamination is initiated, ensuring that the…
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