What happens if an inter partes reexamination is merged with an ex parte reexamination?
When an inter partes reexamination is merged with an ex parte reexamination, the merged proceeding is conducted according to inter partes reexamination procedures. The MPEP states: “If an inter partes reexamination is merged with an ex parte reexamination, the merged proceeding will be conducted as an inter partes reexamination with the participation of the ex…
Read MoreWhat is the procedure for mailing Office actions to third party requesters in inter partes reexamination?
In inter partes reexamination proceedings, the USPTO has a specific procedure for mailing Office actions to third party requesters. The MPEP outlines: All actions in an inter partes reexamination proceeding will have a copy mailed to the third party requester. A transmittal form PTOL-2070 must be used in providing the third party requester with a…
Read MoreWhat happens if a third party requester’s comments are received late in inter partes reexamination?
If a third party requester’s comments are received after the 30-day deadline in inter partes reexamination, they will not be considered. The MPEP 2666.40 is clear on this matter: “Comments by the third party requester filed after the 30-day period will not be considered.” This strict adherence to the timeline ensures that the reexamination process…
Read MoreWhat happens to late-filed papers in inter partes reexamination?
Late-filed papers in inter partes reexamination are generally retained in the file but not considered. According to MPEP 2667: “Where patent owner has filed a paper which was filed after the period for response set by the Office, the paper will be retained in the file but will not be considered.” Similarly, for third party…
Read MoreWhat happens if a reexamination is inadvertently assigned to the original examiner?
If a reexamination is inadvertently assigned to the original examiner without the required approval, the following steps apply: The patent owner or third party requester must promptly file a paper alerting the Office of this fact. This paper must be filed within two months of the first Office action or communication indicating the examiner assignment.…
Read MoreWhat happens if a third party requester submits improper comments in inter partes reexamination?
If a third party requester submits improper comments in inter partes reexamination, the examiner will take specific actions. The MPEP states: “If the written comments are improper, the examiner should return the written comments (the entire paper) with an explanation of what is not proper; if the comments have been scanned into the Image File…
Read MoreWhat happens if only a fee is needed to complete a patent owner’s response in inter partes reexamination?
In inter partes reexamination, if only a fee (other than an excess claims fee to support an amendment) is needed to complete a patent owner’s response, the third party requester is not allowed to file comments after the fee is submitted. As stated in MPEP 2666.20: “However, where only a fee (other than an excess…
Read MoreWhat is the time limit for a third party requester to reply in an ex parte reexamination?
According to MPEP 2251, a third party requester has two months from the date of service of the patent owner’s statement to file a reply. This time limit is set by 35 U.S.C. 304 and cannot be extended. The MPEP states: “If the patent owner files a statement in a timely manner, the third party…
Read MoreHow is correspondence handled for a third party requester in inter partes reexamination?
Correspondence for a third party requester in inter partes reexamination is typically addressed to the representative of the requester. According to MPEP 2613: “All correspondence for a third party requester is addressed to the representative of the requester, unless a specific indication is made to forward correspondence to another address.” This means that the USPTO…
Read MoreWhat is a Certificate of Service in patent reexamination?
A Certificate of Service in patent reexamination is a document that must be attached to a request for ex parte reexamination when the requester is not the patent owner. It certifies that a copy of the request has been served to the patent owner. According to MPEP 2220, “The third party requester must set forth…
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