Where should the copy of the reexamination request be served to the patent owner?
The copy of the reexamination request must be served to the patent owner’s official correspondence address. MPEP 2220 specifies: “The service must be made on the patent owner’s correspondence address as indicated in 37 CFR 1.33(c).“ This means that the third-party requester must send the copy of the request to the address that the USPTO…
Read MoreHow are reexamination request papers initially processed by the USPTO?
The initial processing of reexamination request papers at the USPTO involves several steps: Receipt and Scanning: The papers are received in the Office of Patent Application Processing (OPAP) and scanned into the Image File Wrapper (IFW) system. Assignment to CRU or TC: The request is then forwarded to either the Central Reexamination Unit (CRU) or…
Read MoreCan a reexamination be ordered for claims not specifically requested in the reexamination request?
Generally, the USPTO’s determination in both the order for reexamination and the examination stage will be limited to the claims for which reexamination was specifically requested. However, the Office has the discretion to reexamine any claim for which reexamination has not been requested. The MPEP states: “The decision to reexamine any claim for which reexamination…
Read MoreHow does the USPTO provide notice for reexamination requests under 35 U.S.C. 302?
The USPTO provides notice for reexamination requests filed under 35 U.S.C. 302 through publication in the Official Gazette. This is particularly important when direct communication with the patent owner is not possible. MPEP 2230 states: “The publication in the Official Gazette of (A) the notice of the filing of a request for reexamination filed under…
Read MoreWhat should a third-party requester do if service of the reexamination request on the patent owner is not possible?
If a third-party requester is unable to serve the reexamination request on the patent owner despite reasonable efforts, they must take specific steps. According to MPEP 2220: “If service was not possible after a reasonable effort to do so, a duplicate copy of the request papers must be supplied to the Office together with a…
Read MoreWhat happens if a reexamination request is submitted to the wrong Technology Center?
If a reexamination request is submitted to the wrong Technology Center (TC), the following procedure applies: The TC Director will return the request papers to the Office of Patent Legal Administration (OPLA). OPLA will forward the request papers to the appropriate TC. The appropriate TC will process the request papers. This procedure is outlined in…
Read MoreWhat happens if a reexamination request is filed on a patent after it has been reissued?
When a request for reexamination is filed on a patent after it has been reissued, the reexamination will be denied. The MPEP explains: “Where a request for reexamination is filed on a patent after it has been reissued, reexamination will be denied because the patent on which the request for reexamination is based has been…
Read MoreWhat determines the official filing date of a reexamination request?
The official filing date of a reexamination request is determined based on specific criteria: The request must be in compliance with 37 CFR 1.510. The filing date is automatically assigned by the PALM EXPO 2970 system. The date assigned is based on the receipt date of the compliant request. MPEP 2226 states: “The system will…
Read MoreWhat is the procedure for handling a reexamination request filed during a pending reexamination?
What is the procedure for handling a reexamination request filed during a pending reexamination? When a reexamination request is filed during a pending reexamination, the following procedure is followed: The new request is assigned to the examiner of the pending reexamination. The examiner determines if a substantial new question of patentability is raised. If a…
Read MoreWhat happens if a request for reexamination is filed during an interference?
When a request for reexamination is filed during an interference, the following procedures apply: The request for reexamination will be processed in the normal manner, without delay or stay, especially if the third party requester is not a party to the interference. Under 37 CFR 41.8(a), the patent owner must notify the Board that a…
Read More