How does the Official Gazette distinguish between different types of reexamination certificates?
The Official Gazette clearly indicates the type of certificate being issued. According to MPEP 2291: “The notice will clearly indicate the type of certificate, e.g., an ex parte reexamination certificate (for proceedings ordered under 35 U.S.C. 304), an inter partes reexamination certificate, a supplemental examination certificate, or an ex parte reexamination certificate from reexamination ordered…
Read MoreWhat is the difference between filing papers for supplemental examination and ex parte reexamination?
The main differences in filing papers for supplemental examination and ex parte reexamination are: Mailing Address: Supplemental examination papers go to “Mail Stop Supplemental Examination,” while ex parte reexamination papers go to “Mail Stop Ex Parte Reexam.” Marking: Papers should be marked “SUPPLEMENTAL EXAMINATION” or “EX PARTE REEXAMINATION” respectively. Control Number: Each proceeding is assigned…
Read MoreWhat is the difference between reexaminations ordered under 35 U.S.C. 304 and 35 U.S.C. 257?
The MPEP distinguishes between reexaminations ordered under different statutory provisions: 1. Reexaminations ordered under 35 U.S.C. 304: These are standard ex parte reexaminations The certificate states “Reexamination Request” before the filing date and number They continue an established ordinal numbering sequence 2. Reexaminations ordered under 35 U.S.C. 257: These result from a supplemental examination proceeding…
Read MoreWhat are the key differences in ex parte reexamination ordered under 35 U.S.C. 257?
Ex parte reexamination ordered under 35 U.S.C. 257 has several key differences from standard ex parte reexamination: The patent owner cannot file a statement under 37 CFR 1.530. Reexamination can be conducted based on any item of information, not just patents and printed publications. Additional issues beyond those raised by patents and printed publications can…
Read MoreWhat is required in a detailed explanation for a supplemental examination request?
A detailed explanation for a supplemental examination request must include: An explanation of how each item of information may be applied to the claims for which supplemental examination is requested. For each claim, either what the item of information teaches or which teachings may be important for determining patentability. Citations to specific portions or figures…
Read MoreWhat types of questions can the CRU SPRS discuss with third parties about supplemental examination?
The Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) can only discuss general procedural matters about supplemental examination with third parties. According to MPEP 2803.01: “Only questions on strictly general procedural matters regarding supplemental examination, i.e., not directed to any specific supplemental examination proceeding, may be discussed by the CRU SPRS with that party.”…
Read MoreWhat are the specific criteria for determining a substantial new question of patentability in supplemental examination?
The criteria for determining a substantial new question of patentability (SNQ) in supplemental examination are outlined in MPEP 2816.02. The key factors include: Whether the information presented in the request raises a new, non-cumulative technological teaching that was not present in the patent examination If the information suggests a reasonable likelihood that the examiner would…
Read MoreWhat is the criteria for making a determination in a supplemental examination request?
The criteria for making a determination on a supplemental examination request is whether any of the items of information submitted raise a substantial new question of patentability (SNQ) affecting at least one claim of the patent. This is stated in 35 U.S.C. 257(a). The MPEP states: The SNQ standard in supplemental examination proceedings is identical…
Read MoreHow does the USPTO count items of information in a supplemental examination request?
The USPTO has specific guidelines for counting items of information in a supplemental examination request, as outlined in MPEP 2809: The Office counts the number of items presented, not the number of issues raised or grounds for consideration. A single reference raising multiple issues under different statutes (e.g., 35 U.S.C. 102, 103, and 112) is…
Read MoreHow are corrections to factual information handled in Supplemental Examination?
When a supplemental examination request includes an item of information limited to the correction of factual information, it should also include one or more additional items of information that potentially provide evidence that the patentability of the claims depends upon the factual information to be corrected. The MPEP provides an example: The request includes a…
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