Can a patent owner respond to an inter partes reexamination request before the determination is made?
No, the patent owner cannot respond to an inter partes reexamination request before the determination is made. The MPEP clearly states: “No input from the patent owner is considered prior to the determination.” This policy is supported by case law, as the MPEP cites: “See Patlex v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed.…
Read MoreWhat claims are considered in the determination for patent reexamination?
The determination for patent reexamination is made based on the claims that are in effect at the time of the determination. This is explicitly stated in MPEP 2644: “The determination should be made on the claims in effect at the time the determination is made. 37 CFR 1.923.” This means that examiners consider the most…
Read MoreWhat is considered when determining if a substantial new question of patentability exists?
The determination of whether a substantial new question of patentability exists is based on the patent claims in effect at the time of the determination. The MPEP states: “The patent claims in effect at the time of the determination will be the basis for deciding whether a substantial new question of patentability has been raised.”…
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