Who decides whether to institute a derivation proceeding?
The decision to institute a derivation proceeding is made by the Director of the United States Patent and Trademark Office (USPTO). As stated in MPEP 2310.01, which cites 35 U.S.C. 135(a)(1): “Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director…
Read MoreWho can request an ex parte reexamination?
According to MPEP 2209, an ex parte reexamination can be requested by various parties: The patent owner: At any time during the enforceability of a patent. Any third party: During the period of enforceability of the patent. The Director of the USPTO: The Director can order a reexamination on their own initiative. The MPEP states,…
Read MoreCan an interference be suspended due to a concurrent reexamination proceeding?
Yes, an interference can potentially be suspended due to a concurrent reexamination proceeding, but suspension is not favored. The process for requesting such a suspension involves multiple steps: A party to the interference may file a miscellaneous motion under 37 CFR 41.121(a)(3) to suspend the interference. This motion must be presented to the administrative patent…
Read MoreWhat are the requirements for petitioning for a different filing date for an international design application?
Applicants can petition for a different filing date for an international design application in the United States under certain circumstances. MPEP 2908 outlines the requirements for such a petition, which are based on 37 CFR 1.1023(b): “Where the applicant believes the international design application is entitled under the Hague Agreement to a filing date in…
Read MoreAre there any exceptions to the prohibition on third-party participation in patent term extension proceedings?
While MPEP 2763 generally prohibits third-party participation in patent term extension proceedings, there is one potential exception mentioned: “Absent an invitation from the Director, any such submission would be inappropriate.“ This suggests that the Director of the USPTO has the discretion to invite third-party submissions in exceptional circumstances. However, such invitations are likely to be…
Read MoreWhat are the primary statutory authorities of the Director of the USPTO?
The primary statutory authorities of the Director of the United States Patent and Trademark Office (USPTO) are outlined in 35 U.S.C. 2 and 35 U.S.C. 3. These statutes define the powers, duties, and responsibilities of the Director and other officers and employees of the USPTO. Specifically, 35 U.S.C. 2 states: “Powers and duties.” This section…
Read MoreWhat is the role of the Director in withdrawing a patent application from issue?
The Director of the USPTO plays a crucial role in the process of withdrawing a patent application from issue. Key aspects of the Director’s role include: The Director has the authority to withdraw an application from issue. This authority is typically delegated to appropriate USPTO officials. The Director’s decision is based on the reasons provided…
Read MoreWho has the authority to revise the patent classification system?
According to MPEP 903.01, the authority to revise the patent classification system is vested in the Director of the United States Patent and Trademark Office (USPTO). The relevant statute, 35 U.S.C. 8, states: “The Director may revise and maintain the classification by subject matter of United States letters patent, and such other patents and printed…
Read MoreWho appoints the Director of the USPTO?
The Director of the United States Patent and Trademark Office (USPTO) is appointed by the President of the United States, with the advice and consent of the Senate. This appointment process is outlined in 35 U.S.C. 3, which is referenced in MPEP 1001. While the specific details of the appointment process are not provided in…
Read MoreWhat actions can the USPTO Director take following a Federal Circuit decision?
Following a decision by the U.S. Court of Appeals for the Federal Circuit, the USPTO Director has several options for action, depending on the nature of the decision and its implications for the case. These actions may include: Implementing the court’s decision directly Requesting a rehearing or en banc review Petitioning for certiorari to the…
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