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…

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What 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…

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Can 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…

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Can 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.”…

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Are 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…

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Can 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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