How is information material to patentability defined in ex parte reexamination under 35 U.S.C. 257?
In ex parte reexamination proceedings resulting from supplemental examination under 35 U.S.C. 257, the definition of information material to patentability is specific. According to MPEP 2823: “information material to patentability will be defined by 37 CFR 1.56(b) for an ex parte reexamination proceeding resulting from a supplemental examination proceeding“ This means that the standard definition…
Read MoreWhat happens if material fraud is discovered during supplemental examination?
What happens if material fraud is discovered during supplemental examination? If the Office becomes aware of a material fraud on the Office during supplemental examination or reexamination ordered under 35 U.S.C. 257, the following steps are taken: The supplemental examination or reexamination proceeding will continue. The matter will be referred to the U.S. Attorney General…
Read MoreDoes the discovery of potential material fraud halt supplemental examination?
No, the discovery of potential material fraud does not halt the supplemental examination or any resulting reexamination. According to MPEP 2819: “If the Office becomes aware, during the course of supplemental examination or of any reexamination ordered under 35 U.S.C. 257 as a result of the supplemental examination proceeding, that a material fraud on the…
Read MoreHow does pending litigation affect the timing of supplemental examination requests?
Pending litigation can extend the period during which a patent owner can file a request for supplemental examination. The MPEP 2808 states: “Specifically, if litigation is instituted within the statute of limitations (see 35 U.S.C. 286), requests for supplemental examination may be filed after the statute of limitations has expired, as long as the patent…
Read MoreHow should items of information be listed in a supplemental examination request?
According to MPEP 2811, the list of items of information in a supplemental examination request must meet specific requirements: The list must include each item of information submitted with or as part of the request. Where appropriate, the list must meet the requirements of 37 CFR 1.98(b), including publication dates and identification details for U.S.…
Read MoreCan a legal representative file a request for supplemental examination?
Yes, a legal representative of the patent owner can file a request for supplemental examination on behalf of the patent owner. As stated in MPEP 2803: “A legal representative of the patent owner may file a request for supplemental examination on behalf of the patent owner.” For more details on this process, refer to MPEP…
Read MoreHow many items of information can be included in a supplemental examination request?
According to MPEP 2809, each request for supplemental examination is limited to no more than twelve items of information. This limit is specified in 37 CFR 1.605(a). However, the MPEP clarifies that this limit does not prevent patent owners from obtaining review of additional items: “37 CFR 1.605(a) also permits the filing of more than…
Read MoreWhat is an “item of information” in supplemental examination?
An “item of information” is defined in MPEP 2809 as “a document submitted as part of a supplemental examination request that contains information believed to be relevant to the patent, that the patent owner is requesting the Office to consider, reconsider, or correct.” This definition is based on 37 CFR 1.605(b). Examples of items of…
Read MoreAre interviews allowed during supplemental examination proceedings?
No, interviews are strictly prohibited during supplemental examination proceedings. This is clearly stated in 37 CFR 1.620(e): “Interviews are prohibited in a supplemental examination proceeding.” The MPEP explains that this prohibition is in place to help the Office process supplemental examination requests within the statutory three-month period. Any request for an interview filed during a…
Read MoreAre interviews allowed in ex parte reexamination resulting from supplemental examination?
Yes, interviews are generally permitted in ex parte reexamination proceedings that result from a supplemental examination. The MPEP states: “Interviews conducted in connection with any ex parte reexamination ordered under 35 U.S.C. 257 as a result of the supplemental examination proceeding are governed by the regulations governing ex parte reexamination proceedings.” This means that while…
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