What rights does a third party requester have regarding new findings of patentability in inter partes reexamination?
In inter partes reexamination, a third party requester’s rights to comment on new findings of patentability are limited until the appeal stage, unless the patent owner responds to the finding. According to MPEP 2673.01: “The third party requester has no right to comment on and address a finding of patentability made during the reexamination proceeding…
Read MoreWhat are the third party requester’s rights after a patent owner’s submission following an ACP?
After a patent owner’s submission following an Action Closing Prosecution (ACP), the third party requester has the following rights: File one set of comments responsive to the patent owner’s submission Comments must be filed within 30 days from the date of service of the patent owner’s submission Comments are limited to responding to the patent…
Read MoreWho can represent a third party requester in an inter partes reexamination?
A third party requester in an inter partes reexamination must be represented by a registered patent practitioner. The MPEP states: “A third party requester may not be represented during a reexamination proceeding by an attorney or other person who is not registered to practice before the Office.” This means that only attorneys or agents who…
Read MoreCan a third party requester file a reply if the patent owner doesn’t file a statement?
No, a third party requester cannot file a reply if the patent owner does not file a statement in an ex parte reexamination. MPEP 2251 clearly states: “If the patent owner does not file a statement under § 1.530, no reply or other submission from the ex parte reexamination requester will be considered.” This rule…
Read MoreWhat are the service requirements for a third party requester’s reply in ex parte reexamination?
In ex parte reexamination, the third party requester must serve a copy of their reply on the patent owner. MPEP 2251 states: “Any reply by the ex parte requester must be served upon the patent owner in accordance with § 1.248.” Additionally, the MPEP directs readers to MPEP § 2266.03 for further details on service…
Read MoreWhat can a third party requester include in their reply during ex parte reexamination?
According to MPEP 2251, a third party requester’s reply in an ex parte reexamination can be quite comprehensive. The MPEP states: “The reply need not be limited to the issues raised in the statement. The reply may include additional prior art patents and printed publications and may raise any issue appropriate for reexamination.” This means…
Read MoreCan a third party requester petition to merge a reexamination proceeding with a reissue application?
A third party requester does not have the right to petition for the merger of a reexamination proceeding with a reissue application. The MPEP clearly states: The third party requester does not have a right to file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, since a…
Read MoreCan a third party requester participate in the appeal process of inter partes reexamination?
Can a third party requester participate in the appeal process of inter partes reexamination? Yes, a third party requester can participate in the appeal process of inter partes reexamination. MPEP 2674 outlines the rights and limitations of the third party requester in the appeal process: “The third party requester may file a respondent brief in…
Read MoreWhat happens if a third party requester doesn’t comment on a patent owner’s response in inter partes reexamination?
If a third party requester does not file timely written comments on a patent owner’s response in inter partes reexamination, any subsequent submission of comments on that specific response will be refused consideration. However, this does not affect the requester’s rights to comment on future patent owner responses. As stated in MPEP 2666.20: “Where a…
Read MoreCan a third party requester petition to merge a reissue application and an inter partes reexamination proceeding?
No, a third party requester does not have the right to file a petition to merge a reissue application and an inter partes reexamination proceeding. The MPEP clearly states: “The third party requester does not have a right to file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application…
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