Who typically conducts an inter partes reexamination?
Typically, the same patent examiner who decided to grant the reexamination request conducts the examination. As stated in MPEP § 2655: “The examination is ordinarily conducted by the same patent examiner who made the decision that the reexamination request should be granted.” This ensures continuity and familiarity with the case throughout the reexamination process. To…
Read MoreCan copies of copending reexamination proceedings be submitted during reexamination?
No, copies of copending reexamination proceedings should not be submitted during a reexamination. The MPEP 2656 clearly states: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide the application/proceeding serial/control number and its…
Read MoreHow should patent owners submit amendments in a Reexamination of a Reexamination?
When submitting amendments in a Reexamination of a Reexamination, patent owners must present changes as if the modifications from the previous reexamination certificate are part of the original patent. MPEP 2295 states: “Any amendment to the claims (or specification) of the reexamination proceeding must be presented as if the changes made to the patent text…
Read MoreCan a reexamination proceed if the patent owner can’t be contacted?
Yes, a reexamination can proceed even if the patent owner cannot be contacted. The USPTO has provisions in place to ensure that the process continues through the use of constructive notice. MPEP 2230 clearly states: “If all efforts to correspond with the patent owner fail, the reexamination proceeding will proceed without actual notice to the…
Read MoreHow are properly filed submissions under 37 CFR 1.565(a) handled in ex parte reexamination?
When a submission is properly filed under 37 CFR 1.565(a) in an ex parte reexamination proceeding, the USPTO has a specific process for handling it. According to the MPEP: “Any proper submission pursuant to 37 CFR 1.565(a) will be promptly entered into the record of the reexamination file, and will be considered by the examiner…
Read MoreHow is a patent title change implemented during reexamination?
A change in the patent title during reexamination can only be implemented through a specific procedure. According to MPEP 2660.02: “A change in the title in a reexamination can only be effected via a formal examiner’s amendment accompanying the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) at the time that the prosecution…
Read MoreWhat are the limitations on amendments after the second Office action in patent reexamination?
After the second Office action in patent reexamination, which is typically final, there are limitations on amendments. MPEP 2269 states: “Any amendment after the second Office action, which will normally be final as provided for in MPEP § 2271, must ordinarily be restricted to the rejection or to the objection or requirement made.” This means…
Read MoreCan a patent owner amend their patent during reexamination?
Yes, a patent owner can amend their patent during reexamination. According to MPEP 2269: “The patent owner may respond to such Office action with or without amendment and the patent under reexamination will be reconsidered, and so on repeatedly unless the examiner has indicated that the action is final.” However, it’s important to note that…
Read MoreWhat happens if new prior art is discovered after the Notice of Intent to Issue Reexamination Certificate (NIRC)?
If new prior art is discovered after the Notice of Intent to Issue Reexamination Certificate (NIRC) has been issued, special procedures must be followed. The MPEP 2257 states: “If any prior art of record has been newly discovered by the examiner since the Notice of Intent to Issue Reexamination Certificate (NIRC) has been issued, the…
Read MoreHow does MPEP § 2648 relate to the reassignment of examiners in reexamination?
MPEP § 2648 is referenced in the context of examiner reassignment during reexamination. As stated in MPEP § 2655: “However, if a petition under 37 CFR 1.927 is granted overturning a refusal to order reexamination of all of the claims requested to be reexamined, the reexamination proceeding will normally be conducted by another examiner. See…
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