Are third party requesters allowed to file additional papers after their reply in ex parte reexamination?
No, third party requesters are not permitted to file additional papers after their reply to the patent owner’s statement in an ex parte reexamination. MPEP 2251 clearly states: “The third party requester is not permitted to file any further papers after his or her reply to the patent owner’s statement. Any further papers will not…
Read MoreWhat are the service requirements for a patent owner’s statement in ex parte reexamination?
In ex parte reexamination, the patent owner must serve their statement on the requester if the reexamination was requested by a third party. MPEP 2249 states: “A copy of the statement must be served by the patent owner on the requester, unless the request was filed by the patent owner.” Failure to provide proof of…
Read MoreWhat should a third-party requester do if service of the reexamination request on the patent owner is not possible?
If a third-party requester is unable to serve the reexamination request on the patent owner despite reasonable efforts, they must take specific steps. According to MPEP 2220: “If service was not possible after a reasonable effort to do so, a duplicate copy of the request papers must be supplied to the Office together with a…
Read MoreHow should a patent owner serve a response on the third party requester in an inter partes reexamination?
In an inter partes reexamination, the patent owner is required to serve a copy of their response to an Office action on the third party requester. According to MPEP 2666: “A copy of the response must be served on the third party requester in accordance with 37 CFR 1.248.” The service of the response is…
Read MoreWhat are the time periods for response in ex parte reexamination proceedings?
In ex parte reexamination proceedings, specific time periods are set for responses. According to MPEP 2254: “The time periods set for response are one month (30 days) from the mailing date of the Office action for the patent owner, and one month (30 days) from the date of service for any third party requester.“ However,…
Read MoreHow are premature comments by third party requesters handled in inter partes reexamination?
Premature comments by third party requesters in inter partes reexamination are not considered and will be expunged. According to MPEP 2667: “Any comments filed by a third party requester subsequent to the request for reexamination (i.e., not part of it) and prior to the first Office action is premature and will not be considered, and…
Read MoreHow are premature appeals handled in inter partes reexamination?
Premature appeals in inter partes reexamination are not considered but are retained in the file. According to MPEP 2667: “Where a notice of appeal or notice of cross appeal is filed before a Right of Appeal Notice (RAN) has been issued, the paper will be retained in the file, but will not be considered (other…
Read MoreCan a party participate in another party’s appeal in an inter partes reexamination?
Yes, in inter partes reexamination proceedings commenced on or after November 2, 2002, both the patent owner and the third party requester can participate in each other’s appeal to the Federal Circuit. According to MPEP 2683: “The patent owner and the third party requester may each be a party to, i.e., participate in, each other’s…
Read MoreWho can participate in interviews during ex parte reexamination proceedings?
Participation in interviews during ex parte reexamination proceedings is limited to specific parties. According to MPEP 2281: “Interviews in ex parte reexamination proceedings should be conducted with the parties set forth in MPEP § 2281.01.“ This typically includes: The examiner The patent owner (if represented, then with their attorney or agent) The third party requester…
Read MoreAre micro entity fee reductions available in inter partes reexamination proceedings?
Micro entity fee reductions are available in inter partes reexamination proceedings, but with specific limitations: For patent owners: Micro entity reductions are available for certain fees. For third party requesters: Micro entity reductions are not available. As stated in the MPEP: Micro entity reductions are available to patent owners only. Specifically, micro entity and small…
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