What are the three ways an inter partes reexamination proceeding can be concluded?
According to MPEP 2694, inter partes reexamination proceedings can be concluded in three ways: (A) By bringing the prosecution to an end through denial, vacating, or termination of the reexamination proceeding. (B) By issuing a reexamination certificate under 37 CFR 1.997(b). (C) By merging the reexamination proceeding with a reissue proceeding and granting a reissue…
Read MoreWhat happens if a reissue patent is granted during a pending reexamination proceeding?
When a reissue patent is granted during a pending reexamination proceeding, the reexamination will be based on the claims of the reissue patent. The MPEP states: If a reissue patent issues on the patent under reexamination after reexamination is ordered, the next action from the examiner in the reexamination should point out that further proceedings…
Read MoreWhat is the time limit for applying for a reissue patent that enlarges the scope of claims?
The time limit for applying for a reissue patent that enlarges the scope of claims is specified in 35 U.S.C. 251(d): “No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.” This two-year limitation is crucial…
Read MoreHow does a reissue patent affect the Ex Parte Reexamination Certificate?
In certain situations, the grant of a reissue patent can replace the need for an Ex Parte Reexamination Certificate. According to MPEP 2288: “If the ex parte reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.565(d), the reissued patent will constitute the ex parte reexamination certificate required by…
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 happens to a patent term extension application when a reissue patent is filed?
When a reissue patent is filed during the processing of a patent term extension application, several steps need to be taken: The Office should receive notice of the reissue filing (see MPEP § 2762). If necessary, the applicant should request a stay of action on the term extension application (see MPEP § 2765). If the…
Read MoreShould a new patent term extension application be filed for a reissue patent?
No, a new patent term extension application should not be filed for a reissue patent. Instead, a specific procedure should be followed: According to MPEP § 2766: “A whole new application for patent term extension should not be filed since any such filing would be outside the 60-day time frame within which an application must…
Read MoreHow is the patent term extension calculated for a reissue patent?
The calculation of the patent term extension for a reissue patent follows a specific rule, as outlined in MPEP § 2766: “With respect to calculating the amount of extension to which the reissued patent is entitled to receive, so long as the original patent claimed the approved product and the reissued patent claims the approved…
Read MoreWhat happens when a reexamination proceeding is merged with a reissue proceeding?
When a reexamination proceeding is merged with a reissue proceeding, MPEP 2694 outlines the following process: The proceeding is concluded under 37 CFR 1.997(e). A reissue patent is granted instead of issuing an individual reexamination certificate. The reissue patent serves as the certificate for the reexamination proceeding. The merged proceeding is processed according to MPEP…
Read MoreWhat is a reissue patent?
A reissue patent is a mechanism to correct errors in an existing patent. According to 35 U.S.C. 251, a reissue patent can be granted “Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less…
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