When is the decision to merge or stay concurrent proceedings made?
The decision to merge or stay concurrent reissue application and ex parte reexamination proceedings is not made immediately. According to the MPEP: A decision whether or not to merge the reissue application examination and the ex parte reexamination proceeding, or to stay one of the two proceedings, will not be made prior to the mailing…
Read MoreCan a patent owner or third party requester petition to vacate an order granting reexamination?
Generally, neither the patent owner nor the third party requester can petition to vacate an order granting reexamination based on the substantive determination of a substantial new question of patentability (SNQ) or reasonable likelihood of prevailing (RLP). As stated in MPEP 2646: “A substantive determination by the Director of the Office to institute reexamination pursuant…
Read MoreCan a patent owner file a statement before the reexamination order?
No, a patent owner cannot file a statement before the reexamination order is issued. MPEP 2249 states: “The patent owner has no right to file a statement subsequent to the filing of the request under 35 U.S.C. 302 but prior to the order for reexamination. Any such premature statement will not be acknowledged nor considered…
Read MoreHow is the patent owner notified of an inter partes reexamination order?
When an inter partes reexamination is ordered, the patent owner is notified through official channels. According to MPEP 2640: “If reexamination is ordered, the Director will simultaneously (1) send the patent owner a copy of the order to reexamine and the statement pursuant to 37 CFR 1.943(a) … and (2) notify the third party requester…
Read MoreHow is an ex parte reexamination ordered under 35 U.S.C. 257?
An ex parte reexamination under 35 U.S.C. 257 is ordered following a supplemental examination proceeding that finds a substantial new question of patentability. The process is as follows: A supplemental examination certificate is issued with reasons for the substantial new question of patentability. The examiner prepares an order for ex parte reexamination. The order may…
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