Who can appeal a decision in an inter partes reexamination proceeding to the Federal Circuit?
For inter partes reexamination proceedings commenced on or after November 2, 2002, both the patent owner and the third party requester can appeal a decision of the Patent Trial and Appeal Board (PTAB) to the U.S. Court of Appeals for the Federal Circuit. This is stated in MPEP 2683: “A patent owner and/or a third…
Read MoreWhat is the definition of a contested case in patent law?
According to MPEP 2301.02, a contested case is defined as: “[A] Board proceeding other than an appeal under 35 U.S.C. 134 or a petition under § 41.3. An appeal in an inter partes reexamination is not a contested case.” In simpler terms, a contested case is a proceeding before the Patent Trial and Appeal Board…
Read MoreWhat is a threshold issue in a patent interference?
A threshold issue in a patent interference is a critical concept that can potentially end the proceeding early. The MPEP 2301.02 defines it as follows: “Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference. Threshold issues may include: (1) No interference-in-fact, and…
Read MoreCan a third-party requester comment on a patent owner’s response to a new ground of rejection?
Yes, a third-party requester can comment on a patent owner’s response to a new ground of rejection issued by the Patent Trial and Appeal Board (PTAB) in an inter partes reexamination. According to MPEP 2681: Where the owner has filed a response requesting reopening of prosecution under paragraph (b)(1) of this section, any requester, within…
Read MoreHow can a party seek review of a PTAB decision in inter partes reexamination?
Parties seeking review of a Patent Trial and Appeal Board (PTAB) decision in inter partes reexamination have several options, depending on the nature of the issue. According to MPEP 2681: For procedural matters: File a petition to the USPTO The petition must show a convincing error, abuse of discretion, or policy issue For substantive matters:…
Read MoreWhat regulations govern the conduct of derivation proceedings?
The conduct of derivation proceedings is governed by regulations prescribed by the Director of the United States Patent and Trademark Office (USPTO). According to MPEP 2310.01, which cites 35 U.S.C. 135(b): “The Director shall prescribe regulations setting forth standards for the conduct of derivation proceedings, including requiring parties to provide sufficient evidence to prove and…
Read MoreHow does an examiner refer additional parties to an ongoing interference?
When an examiner discovers additional parties that may need to be included in an ongoing interference, they must follow a specific referral process. The MPEP 2307.04 states: “If so, the examiner should consult with an Interference Practice Specialist (IPS) and prepare a referral of the suggested interference to the Board in the same way that…
Read MoreWhat is the purpose of a derivation proceeding?
The purpose of a derivation proceeding is twofold, as outlined in MPEP 2310: “A derivation proceeding is a trial proceeding under 35 U.S.C. 135 conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier…
Read MoreWhat is the role of the Patent Trial and Appeal Board (PTAB) in derivation proceedings?
The Patent Trial and Appeal Board (PTAB) plays a central role in derivation proceedings. As stated in MPEP 2310: “A derivation proceeding is a trial proceeding under 35 U.S.C. 135 conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the…
Read MoreWhat happens when the PTAB issues a new ground of rejection in an inter partes reexamination?
When the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection in an inter partes reexamination, it triggers specific procedures outlined in MPEP 2681: The decision is considered non-final for judicial review. The patent owner has one month to choose one of two options: Reopen prosecution by filing a response with amendments…
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