How are withdrawn rejections handled in inter partes reexamination?
The handling of withdrawn rejections in inter partes reexamination depends on the specific circumstances. According to MPEP 2671.01: When an examiner withdraws a rejection they originally initiated: The withdrawal should be clearly stated as a decision favorable to patentability. The third party requester may propose the withdrawn rejection in their next set of comments. When…
Read MoreWho needs to file a Certificate of Service for patent reexamination?
A Certificate of Service for patent reexamination must be filed by a third-party requester when submitting a request for ex parte reexamination. This is required when the requester is not the patent owner. MPEP 2220 states: “If the requester of a request filed under 35 U.S.C. 302 is a person other than the patent owner,…
Read MoreWho can appeal a decision in an inter partes reexamination proceeding to the Federal Circuit?
For inter partes reexamination proceedings commenced on or after November 2, 2002, both the patent owner and the third party requester can appeal a decision of the Patent Trial and Appeal Board (PTAB) to the U.S. Court of Appeals for the Federal Circuit. This is stated in MPEP 2683: “A patent owner and/or a third…
Read MoreWhat is inter partes reexamination?
Inter partes reexamination is a process that allows any third party to request a review of a patent issued from an original application filed on or after November 29, 1999. This process was available for requests filed prior to September 16, 2012. The MPEP 2609 states: The inter partes reexamination statute and rules permit any…
Read MoreHow does the USPTO handle an untimely or inappropriate comment from a third party requester in inter partes reexamination?
According to MPEP 2666.10, if a third party requester files an untimely or inappropriate comment, notice of appeal, or brief in an inter partes reexamination, the USPTO will refuse consideration of the paper. Specifically: “If the third party requester files an untimely or inappropriate comment, notice of appeal or brief in an inter partes reexamination,…
Read MoreHow are unsigned papers handled in inter partes reexamination?
Unsigned papers in inter partes reexamination are generally denied consideration but retained in the file. According to MPEP 2667: “Papers filed by the patent owner which are unsigned, or signed by fewer than all of the patent owners where no attorney or agent is of record or acting in representative capacity, will be denied consideration,…
Read MoreHow is the timeliness of third party requester comments affected by service in inter partes reexamination?
The timeliness of third party requester comments in inter partes reexamination is directly affected by the service of the patent owner’s response. According to MPEP 2666.06: “35 U.S.C. 314(b)(2) mandates that, in order to be timely, a third party requester must file any written comments to the patent owner’s response (to an Office action on…
Read MoreWhat is the time limit for a third party requester to comment on a patent owner’s response in inter partes reexamination?
In inter partes reexamination, the third party requester must file comments on a patent owner’s response within a specific time frame. While the exact time limit is not explicitly stated in the provided MPEP section, it is generally 30 days from the date of service of the patent owner’s response. This can be inferred from…
Read MoreCan a third party requester get an extension of time in inter partes reexamination?
No, extensions of time are not available to third party requesters in inter partes reexamination proceedings. The MPEP explicitly states: “It should be noted that extensions of time under 37 CFR 1.956 are not available to the third party requester.” This limitation is specific to inter partes reexamination and reflects the process’s focus on the…
Read MoreCan a third party requester file supplemental comments in inter partes reexamination?
No, a third party requester is not allowed to file supplemental comments in inter partes reexamination. The MPEP clearly states: “The third party requester is not permitted to file further papers to supplement the third party requester’s written comments. Any such improper supplemental comments will not be considered, and will be returned.“ However, there is…
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