What is the process for petitioning a denial of an inter partes reexamination request?
If a request for inter partes reexamination is denied, the third-party requester can petition for review. According to MPEP 2648: “The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing to order inter partes reexamination.” This petition…
Read MoreWhat is the process for petitioning a denial of an ex parte reexamination request?
If a request for ex parte reexamination under 35 U.S.C. 302 is denied, the requester can petition for review. According to MPEP 2248: “The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination. Any such petition…
Read MoreCan you petition a partial grant of a reexamination request?
Yes, you can petition a partial grant of a reexamination request. MPEP 2248 explains: “If an order granting reexamination includes a determination that the third party requester has not raised a substantial new question of patentability (SNQ) for one claim, but has raised a SNQ for at least one other claim, then third party requester…
Read MoreShould a new patent term extension application be filed for a reissue patent?
No, a new patent term extension application should not be filed for a reissue patent. Instead, a specific procedure should be followed: According to MPEP § 2766: “A whole new application for patent term extension should not be filed since any such filing would be outside the 60-day time frame within which an application must…
Read MoreWhat is the process for reviewing a decision refusing to accept and record a maintenance fee payment?
The process for reviewing a decision refusing to accept and record a maintenance fee payment is outlined in 37 CFR 1.377. This regulation provides a mechanism for patentees who are dissatisfied with the refusal of the Patent and Trademark Office to accept and record a maintenance fee filed prior to patent expiration. According to the…
Read MoreCan a requester challenge a basis for granting reexamination?
While a requester can petition against a denial of reexamination, challenging a basis for granting reexamination is more limited. According to MPEP 2648: “37 CFR 1.927 applies only to challenging a basis for denying of reexamination; it does not apply to challenging a basis for granting of reexamination.” However, there is a specific circumstance where…
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 MoreCan the 2-month delay period be waived for reissue applications with stayed litigation?
Yes, the 2-month delay period can be waived for reissue applications with stayed litigation. The MPEP 1442.03 states: “In reissue applications with ‘stayed litigation,’ the Office will entertain petitions under 37 CFR 1.182, which are accompanied by the fee under 37 CFR 1.17(f), to not apply the 2-month delay period stated in MPEP § 1441.”…
Read MoreAre informal memoranda in USPTO petitions sent to petitioners?
No, informal memoranda prepared by examiners in response to USPTO petitions are not sent to petitioners. This is in contrast to formal statements, which are typically mailed to petitioners. MPEP 1002.01 explicitly states: “If an informal memorandum is requested, no copy thereof is mailed to the petitioner by the examiner.“ This difference in procedure highlights…
Read MoreCan an applicant prevent the examiner from reopening prosecution after an appeal brief is filed?
An applicant cannot directly prevent an examiner from reopening prosecution after an appeal brief is filed. However, there are certain limitations and potential actions an applicant can take: Limited circumstances: Examiners should only reopen prosecution in specific situations, as outlined in MPEP 1207.04. Petition option: If the applicant believes the reopening is improper, they can…
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