What is the patent owner’s responsibility regarding prior or concurrent proceedings in ex parte reexamination?
In an ex parte reexamination proceeding, the patent owner has a continuing responsibility to inform the USPTO about any prior or concurrent proceedings involving the patent under reexamination. This responsibility is outlined in 37 CFR 1.565(a), which states: “In an ex parte reexamination proceeding before the Office, the patent owner must inform the Office of…
Read MoreWhat information must patent owners provide regarding prior or concurrent proceedings?
According to MPEP 2686, patent owners are required to provide the Office with information about any prior or concurrent proceedings involving the patent undergoing inter partes reexamination, as well as the results of such proceedings, if known. The MPEP states: “In accordance with 37 CFR 1.985, the patent owner is required to provide the Office…
Read MoreWhat happens if a submission in an ex parte reexamination is not limited to bare notice of prior or concurrent proceedings?
The USPTO has strict guidelines for submissions in ex parte reexamination proceedings. If a submission goes beyond providing bare notice of prior or concurrent proceedings, it may be rejected. The MPEP states: “Where a submission is not limited to bare notice of the prior or concurrent proceedings (in which a patent undergoing reexamination is or…
Read MoreWhat are the notification requirements for prior or concurrent proceedings in a reissue application?
In a reissue application, the applicant has a continuing duty to notify the USPTO of any prior or concurrent proceedings involving the patent for which reissue is requested. This requirement is outlined in 37 CFR 1.178(b), which states: “In any reissue application before the Office, the applicant must call to the attention of the Office…
Read MoreHow should a patent owner notify the USPTO of prior or concurrent proceedings?
Patent owners should notify the USPTO of prior or concurrent proceedings as specified in MPEP 1418: “The patent owner has a duty to notify the Office in writing, within two months of the date of the order … of any prior or concurrent proceedings in which the patent is or was involved such as interferences,…
Read MoreWhat is Form Paragraph 14.11.01 used for in reissue applications?
Form Paragraph 14.11.01 is used by patent examiners in the first action of a reissue application to remind applicants of their continuing obligations under 37 CFR 1.178(b) and 37 CFR 1.56. The MPEP states: “Form paragraph 14.11.01 may be used to remind applicant of the duties to timely make the Office aware of (A) any…
Read More