Is restriction permitted in reexamination proceedings?
No, restriction is not permitted in reexamination proceedings. The MPEP clearly states: “With regard to reexamination proceedings, restriction is not permitted.” This means that during a reexamination of a patent, the examiner cannot require the patent owner to divide the claims into separate applications or to elect a specific group of claims for examination. All…
Read MoreHow does filing an RCE affect a merged reissue application and reexamination proceeding?
Filing a Request for Continued Examination (RCE) in a reissue application that has been merged with a reexamination proceeding does not automatically dissolve the merger. According to MPEP 1452: “Additionally, if a reissue application is merged with a reexamination proceeding (see MPEP § 1449.01), the filing of an RCE will not dissolve the merger, because…
Read MoreWhich MPEP chapters discuss reexamination procedures?
The MPEP discusses reexamination procedures in two chapters: MPEP Chapter 2200 covers ex parte reexamination MPEP Chapter 2600 covers inter partes reexamination requests (for those filed before September 16, 2012) As stated in MPEP 1400.01: “The fourth way (reexamination) is discussed in MPEP Chapter 2200 for ex parte reexamination and MPEP Chapter 2600 for inter…
Read MoreWhat is the purpose of MPEP 1510 – Reexamination?
MPEP 1510 – Reexamination serves as a brief reference point within the Design Patents chapter. It directs readers to a more comprehensive source for information on reexamination procedures. The section states: “See MPEP Chapter 2200 for practice and procedure for reexamination applications.” This indicates that while reexamination is relevant to design patents, the detailed procedures…
Read MoreWhat are the eight ways to correct or amend a patent?
According to MPEP 1400.01, there are eight ways to correct or amend a patent: Reissue Issuance of a certificate of correction Disclaimer Reexamination Supplemental examination Inter partes review Post grant review Covered business method review The MPEP states: “A patent may be corrected or amended in eight ways, namely by: (1) reissue, (2) the issuance…
Read MoreWhat is the duty to disclose information in reexamination or supplemental examination proceedings?
In reexamination or supplemental examination proceedings, there is a duty to disclose information material to patentability. According to MPEP 1418: “The duty to disclose information material to patentability in reexamination proceedings … is based on 37 CFR 1.555(a) and (b). In addition, for supplemental examination proceedings, 37 CFR 1.620(c) imposes a duty on the patent…
Read MoreHow do double patenting principles apply to reexamination proceedings?
Basic principles of double patenting do apply to reexamination proceedings. The MPEP states: “Basic principles of double patenting apply to reexamination proceedings, as explained in this chapter and in MPEP Chapters 2200 and 2600 (see especially MPEP § 2258).” This means that during a reexamination, examiners should consider double patenting issues. For detailed guidance on…
Read MoreCan a recorded terminal disclaimer be withdrawn?
A recorded terminal disclaimer may be withdrawn before the application issues as a patent or before a reexamination certificate issues. However, after a patent or reexamination certificate issues, a recorded terminal disclaimer will not be nullified. The MPEP states: If timely requested, a recorded terminal disclaimer may be withdrawn before the application in which it…
Read MoreWhat happens if submitted information is found to be material to patentability in a reexamination?
If submitted information is found to be material to patentability in a reexamination, it becomes part of the public record. MPEP § 724.04(c) states: “If any portion or all of the submitted information is found to be material to patentability, the petition to expunge will be denied and the information will thereafter become a permanent…
Read MoreWhat happens if a petition to expunge is not filed in time during a reexamination proceeding?
If a petition to expunge is not filed in a timely manner during a reexamination proceeding, the submitted materials become part of the public record. MPEP § 724.04(c) states: “If a petition to expunge is not filed prior to, or shortly after (i.e., in time to be addressed before the reexamination proceeding enters the reexamination…
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