When can a protest be filed in a patent application?
According to MPEP 1901, protests must be filed within specific time frames: With the exception of a protest accompanied by a written consent of the applicant, all protests must be submitted prior to the publication of the application or the date a notice of allowance is given or mailed, whichever occurs first. Additionally, for reissue…
Read MoreCan a reissue application be used to submit previously withheld information?
Can a reissue application be used to submit previously withheld information? While a reissue application can be used to submit previously withheld information, it cannot cure or remedy the original withholding if it constituted inequitable conduct. The MPEP 2012 states: “In cases where an applicant seeks to use a reissue application to submit previously withheld…
Read MoreCan a protest be filed in a reissue application?
Yes, a protest can be filed in a reissue application, but there are specific timing considerations. According to MPEP 1901.04: “A protest may be filed in a reissue application throughout the pendency of the reissue application prior to the date a notice of allowance is given or mailed subject to the timing constraint of the…
Read MoreCan a reissue application be used to correct inequitable conduct?
Can a reissue application be used to correct inequitable conduct? No, a reissue application cannot be used to correct inequitable conduct. The Manual of Patent Examining Procedure (MPEP) 2012 clearly states: “A reissue application cannot be employed to ‘repair’ the effect of inequitable conduct or other fraud perpetrated on the Office, despite claims to the…
Read MoreWhat is the impact of a reissue application on a pending inter partes reexamination?
When a reissue application is filed for a patent that is undergoing inter partes reexamination, it can have significant implications for the reexamination process. According to MPEP 2686.04: “If a reissue application is filed on a patent for which a reexamination proceeding is pending, the reexamination proceeding is suspended until the reissue application is resolved.”…
Read MoreWhat happens if a reissue application is filed during a reexamination proceeding?
What happens if a reissue application is filed during a reexamination proceeding? When a reissue application is filed during a reexamination proceeding, the following actions are taken: The reexamination proceeding is suspended. The reissue application is examined. The reexamination proceeding is terminated if the reissue patent is granted. If the reissue application is abandoned, the…
Read MoreHow are reexamination requests handled when there’s a pending reissue application?
When a reissue application is pending and a reexamination request is filed for the same patent, the handling process depends on whether reexamination has been ordered: If reexamination has been ordered: The Office of Patent Legal Administration (OPLA) should be notified for merger consideration. If merged, the reissue is generally assigned to the examiner who…
Read MoreWhat are the reasons for filing a petition for stay in a patent term extension application?
Patent owners may file a petition for stay in a patent term extension application when there are unresolved issues relating to the patent that need to be addressed before the extension can be granted. MPEP 2765 states: “Such issues could include, but are not limited to, involvement in an interference, an appeal of a trial…
Read MoreHow can a patentee become eligible to suggest an interference?
A patentee can become eligible to suggest an interference by filing a reissue application. This process effectively transforms the patentee into an applicant, granting them the ability to suggest an interference. As stated in MPEP 2304.03: “A patentee may not suggest an interference unless it becomes an applicant by filing a reissue application.” The steps…
Read MoreCan a patent owner request ex parte reexamination?
Yes, a patent owner can request ex parte reexamination. According to MPEP 2212: “The patent owner can ask for reexamination which will be limited to an ex parte consideration of prior art patents or printed publications.“ However, if the patent owner wishes to have a wider consideration of issues by the USPTO, including matters such…
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