Can a reexamination be ordered for claims not specifically requested in the reexamination request?
Generally, the USPTO’s determination in both the order for reexamination and the examination stage will be limited to the claims for which reexamination was specifically requested. However, the Office has the discretion to reexamine any claim for which reexamination has not been requested. The MPEP states: “The decision to reexamine any claim for which reexamination…
Read MoreCan a reexamination be ordered for claims not specifically requested in the inter partes reexamination request?
Generally, the USPTO will limit its examination to the claims specifically requested for reexamination. However, the Office retains discretion to reexamine other claims. The MPEP states: “The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the claim(s) for which…
Read MoreHow does the USPTO handle minor defects in a supplemental examination request?
The USPTO has a specific approach to handling minor defects in supplemental examination requests. According to MPEP 2812.01: “Even if the request is determined to be defective, the Office has the discretion under 37 CFR 1.610(d) to grant a filing date. However, the Office will not generally grant a filing date to a defective request…
Read MoreHow does the USPTO handle minor defects in a corrected request for supplemental examination?
The USPTO has discretion in handling minor defects in corrected requests for supplemental examination. According to the MPEP, “If the Office determines that a corrected request only contains one or more defects of minor character, the Office may, in its sole discretion, enter the defective corrected request, correct the defect(s) sua sponte, and/or request a…
Read MoreHow does the USPTO handle excessive submissions in inter partes reexamination?
The USPTO has discretion to manage the volume of submissions in inter partes reexamination proceedings. According to MPEP 2686: “If the Office, in its sole discretion, deems the volume of the papers filed from litigations or other proceedings to be too extensive/lengthy, the Office may return, expunge or discard, at its sole discretion, all or…
Read MoreCan the USPTO examine claims not requested for reexamination under 35 U.S.C. 302?
Yes, the USPTO can examine claims not specifically requested for reexamination under 35 U.S.C. 302, but this is at the discretion of the Office. According to MPEP 2243: The decision to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302 lies within the sole discretion of the Office, to be…
Read MoreCan the USPTO examine claims not specifically requested for reexamination?
Yes, the USPTO can examine claims not specifically requested for reexamination, but it’s at their discretion. MPEP 2643 states: “The decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case.” However,…
Read MoreCan the USPTO grant a filing date to a defective supplemental examination request?
Yes, the USPTO has the discretion to grant a filing date to a defective supplemental examination request, although it is not common practice. According to MPEP 2812.01: “Even if the request is determined to be defective, the Office has the discretion under 37 CFR 1.610(d) to grant a filing date. However, the Office will not…
Read MoreIs the entry of copied patent claims in an amendment under 37 CFR 1.312 automatically allowed?
No, the entry of copied patent claims in an amendment under 37 CFR 1.312 is not automatically allowed. MPEP 714.16(a) explicitly states: “The entry of the copied patent claims is not a matter of right.” This means that the USPTO has discretion in deciding whether to accept such amendments after the notice of allowance has…
Read MoreCan a practitioner act on behalf of an applicant without a power of attorney?
Can a practitioner act on behalf of an applicant without a power of attorney? Yes, a practitioner can act on behalf of an applicant without a power of attorney in certain circumstances. According to MPEP 402.04: ‘A practitioner may in some circumstances within the discretion of the Office act without any power of attorney or…
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