Can a product-by-process claim be anticipated by a prior art product made by a different process?

Yes, a product-by-process claim can be anticipated by a prior art product made by a different process. MPEP 2113 clearly states: “[B]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art…

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What happens if no Substantial New Question of Patentability is raised?

If the supplemental examination certificate states that no Substantial New Question of Patentability (SNQ) is raised, no further action is taken. As stated in MPEP 2817: “If, however, the supplemental examination certificate states that no substantial new question of patentability is raised in the request, then an ex parte reexamination proceeding will not be initiated…

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Can a patent undergo multiple reexaminations?

Yes, a patent can undergo multiple reexaminations. This is evident from the concept of “reexamination of a reexamination” discussed in MPEP § 2695. The section states: “…a reexamination request filed on a patent for which a reexamination certificate has already issued, or a reexamination certificate issues on a prior reexamination, while the new reexamination is…

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What issues are not considered in inter partes reexamination?

Inter partes reexamination is limited in scope and does not consider all potential issues related to patent validity. According to the MPEP, the following issues are not considered: Public use or on-sale activities Conduct issues Abandonment under pre-AIA 35 U.S.C. 102(c) Other issues not based on patents or printed publications The MPEP states: “If questions…

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How does concurrent litigation affect inter partes reexamination proceedings?

Concurrent litigation can significantly impact inter partes reexamination proceedings. The key points to consider are: The USPTO is not bound by court decisions on patent validity and will generally continue reexamination proceedings unless statutorily required to terminate them. A final court decision of invalidity will typically result in termination of the reexamination for those claims…

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Can failure to disclose material information affect patent validity?

Yes, failure to disclose material information can significantly affect patent validity. If it is discovered that an applicant or their representative knowingly withheld material information during the patent application process, it could lead to charges of inequitable conduct and potentially render the patent unenforceable. While MPEP 2001.03 does not explicitly discuss the consequences of failing…

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What are the estoppel effects of inter partes reexamination?

What are the estoppel effects of inter partes reexamination? Inter partes reexamination has significant estoppel effects that can impact future proceedings. The MPEP explains: “A third party requester is estopped from later asserting in any civil action, or in a subsequent inter partes reexamination, the invalidity/unpatentability of any claim finally determined to be valid and…

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