What is the Patent Trial and Appeal Board’s role in patent interferences?
The Patent Trial and Appeal Board (PTAB) plays a significant role in patent interferences. According to MPEP 2304, after an Interference Practice Specialist (IPS) reviews a suggested interference, they may refer it to the Board: “…the examiner must consult with an Interference Practice Specialist (IPS), who may then refer the suggested interference to the Board.”…
Read MoreWhat is the role of the Patent Trial and Appeal Board in derivation proceedings?
The Patent Trial and Appeal Board (PTAB) plays a crucial role in derivation proceedings. According to MPEP 2310.01, which cites 35 U.S.C. 135(b): “In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named…
Read MoreHow is a patent interference defined and administered?
Patent interference is a specific type of contested case before the Patent Trial and Appeal Board. The MPEP 2301.02 provides the following definition and administration guidelines: “A patent interference is a contested case subject to the procedures set forth in subpart D of this part.” Furthermore, regarding the administration of patent interferences: “Patent interferences shall…
Read MoreWhat is the role of an Interference Practice Specialist (IPS) in patent interferences?
An Interference Practice Specialist (IPS) plays a crucial role in the interference process. According to MPEP 2304: “In either circumstance, the examiner must consult with an Interference Practice Specialist (IPS), who may then refer the suggested interference to the Board.” The IPS serves as an expert consultant for examiners when an interference is suggested. They…
Read MoreWhat replaced inter partes reexamination after September 16, 2012?
While MPEP 2620 doesn’t explicitly state the replacement for inter partes reexamination, it’s important to note that after September 16, 2012, inter partes review (IPR) became the new procedure under the America Invents Act. The MPEP section states: “No requests for inter partes reexamination may be filed on or after September 16, 2012.” This change…
Read MoreWhat replaced inter partes reexamination in the patent system?
Inter partes reexamination was replaced by inter partes review as part of the America Invents Act (AIA). While not explicitly stated in MPEP Section 2619, this change is implied by the statement: “No requests for inter partes reexamination may be filed on or after September 16, 2012.” Inter partes review, introduced by the AIA, offers…
Read MoreWhat constitutes a final decision by the Patent Trial and Appeal Board?
The MPEP provides specific criteria for what constitutes a final decision by the Patent Trial and Appeal Board (PTAB). According to MPEP 2301.02, a decision is considered final for the purposes of judicial review under these conditions: “Final means, with regard to a Board action, final for the purposes of judicial review. A decision is…
Read MoreWhat is the extent of the duty of disclosure?
The duty of disclosure extends to all dealings with the United States Patent and Trademark Office (USPTO), not just interactions with patent examiners. This comprehensive obligation includes proceedings before various departments within the USPTO. As stated in MPEP 2001.03: “This duty ‘in dealing with’ and ‘to’ the Office extends, of course, to all dealings which…
Read MoreCan an examiner reject claims authorized by the PTAB during an interference?
Yes, an examiner can reject claims that were authorized by the Patent Trial and Appeal Board (PTAB) during an interference, even after they have been entered into the application. The MPEP 2308.02 clearly states: “The decision authorizing entry of the added or amended claim does not prevent the examiner from rejecting the claim during further…
Read MoreWhat are ex parte communications in patent interference proceedings?
Ex parte communications in patent interference proceedings refer to private communications about the case with a Board member or Board employee assigned to the proceeding, without the presence or knowledge of the other party. These communications are strictly prohibited in inter partes proceedings, including interferences. As stated in MPEP 2307.01: “An ex parte communication about…
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