What does the completeness review in reexamination entail?
The completeness review is a crucial part of the reexamination process, ensuring that all aspects of the case have been thoroughly addressed. MPEP 2689 states that the CRU SPRS or TC QAS will: “(B) do a completeness review of the action to ensure that all issues and arguments raised by all parties are appropriately developed,…
Read MoreCan collateral estoppel be applied against the USPTO in reexamination proceedings?
No, collateral estoppel (issue preclusion) generally cannot be applied against the USPTO in reexamination proceedings based on a district court holding in an infringement proceeding. This principle was established in the case of In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007). According to MPEP § 2659: “In In…
Read MoreCan collateral estoppel apply in patent reexamination proceedings?
Collateral estoppel, or issue preclusion, can apply in certain circumstances during patent reexamination proceedings. According to MPEP § 2259: “If the claims in a reexamination proceeding present the same issue(s) as claims that were finally held invalid by a federal court in a proceeding involving a different patent in the same patent family, collateral estoppel…
Read MoreWhat happens to citations submitted after a reexamination request is filed?
When citations are submitted after a reexamination request has been filed, they are handled as follows: The citations are placed in the reexamination file They are considered by the examiner during the reexamination proceeding The citations are not given a control number They are not listed as a separate citation entry in the patent’s Image…
Read MoreHow can a patent owner change the correspondence address for a patent under reexamination?
To change the correspondence address for a patent under reexamination, the patent owner should submit a request to the USPTO. The MPEP 2222 provides specific instructions for such submissions: “Where a request for ex parte reexamination has been filed:” Mail Stop “Ex Parte Reexam”Attn: Central Reexamination UnitCommissioner for PatentsP.O. Box 1450Alexandria, VA 22313-1450 For inter…
Read MoreCan the original examiner be assigned to a reexamination proceeding?
Generally, the original examiner is not assigned to a reexamination proceeding. The MPEP states, It is the policy of the Office that the CRU SPRS will assign the reexamination request to an examiner different from the examiner(s) who examined the patent application. However, there are exceptions to this rule: When the original examiner is the…
Read MoreCan the original examiner be assigned to a reexamination request?
Generally, the original examiner is not assigned to a reexamination request. The MPEP states, “It is the policy of the Office that the CRU SPRS will assign the reexamination request to an examiner different from the examiner(s) who examined the patent application.” However, exceptions can be made in rare cases where the original examiner is…
Read MoreHow is a decision by the Board of Patent Appeals and Interferences (BPAI) processed in reexamination?
How is a decision by the Board of Patent Appeals and Interferences (BPAI) processed in reexamination? When the Board of Patent Appeals and Interferences (BPAI) issues a decision in a reexamination proceeding, the following steps are taken: The decision is scanned into the Image File Wrapper (IFW). The decision is forwarded to the Central Reexamination…
Read MoreWhen can the Board assume jurisdiction in patent proceedings?
The Board of Patent Appeals and Interferences (BPAI) has broad authority to assume jurisdiction in various patent-related proceedings. According to MPEP 2312: “The Board may assume jurisdiction of any application, including those involved in reexamination proceeding(s) or reissue application(s), or any issued patent in which a petition for derivation has been filed.” This means the…
Read MoreWho can sign amendments and other papers in a reexamination proceeding?
In a reexamination proceeding, amendments and other papers must be signed by specific individuals as outlined in MPEP 2222: The patent owner All owners if there is more than one An attorney or agent of record in the patent file A registered attorney or agent not of record who acts in a representative capacity under…
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