How are withdrawn rejections handled in inter partes reexamination?
The handling of withdrawn rejections in inter partes reexamination depends on the specific circumstances. According to MPEP 2671.01: When an examiner withdraws a rejection they originally initiated: The withdrawal should be clearly stated as a decision favorable to patentability. The third party requester may propose the withdrawn rejection in their next set of comments. When…
Read MoreWhen is an Action Closing Prosecution (ACP) issued in inter partes reexamination?
An Action Closing Prosecution (ACP) is typically issued at specific points in the inter partes reexamination process. According to MPEP 2671.02: 1. When all claims are found patentable in the first action: “When all claims are found patentable in the first action, the examiner will, at that point, issue an ACP, since the patent owner…
Read MoreWhat happens after reexamination is ordered under 35 U.S.C. 304?
After reexamination is ordered under 35 U.S.C. 304, the examiner will consider any submissions properly filed and served in accordance with 37 CFR 1.530 and 37 CFR 1.535 when preparing the first Office action. As stated in MPEP 2253: “Once reexamination is ordered under 35 U.S.C. 304, any submissions properly filed and served in accordance…
Read MoreWhat is the difference in USPTO treatment of defective sequence listings for applications filed before and after January 1, 2022?
The USPTO’s treatment of defective sequence listings differs significantly for applications filed before and after January 1, 2022. MPEP 2422.07 outlines these differences: For applications filed before January 1, 2022: “Applications filed before January 1, 2022, that are otherwise complete, but that contain defective sequence listings, will be treated as incomplete applications under 35 U.S.C.…
Read MoreHow are reexamination request papers initially processed by the USPTO?
The initial processing of reexamination request papers at the USPTO involves several steps: Receipt and Scanning: The papers are received in the Office of Patent Application Processing (OPAP) and scanned into the Image File Wrapper (IFW) system. Assignment to CRU or TC: The request is then forwarded to either the Central Reexamination Unit (CRU) or…
Read MoreWhat happens if a patent is determined to be ineligible for term extension?
If the USPTO determines that a patent is ineligible for term extension during the preliminary review process, the following action is taken: The MPEP clearly states: “In the interest of efficiency, if the patent is determined to be ineligible for patent term extension, the Office will dismiss the application rather than request a determination of…
Read MoreHow does the USPTO handle requests for reconsideration of patent term adjustment?
The USPTO handles requests for reconsideration of patent term adjustment through a manual redetermination process. As stated in the MPEP, “The Office will conduct a manual redetermination of patent term adjustment in response to a request for reconsideration of the patent term adjustment.” This process may result in: The requested amount of patent term adjustment…
Read MoreWhen does the USPTO provide notification of Patent Term Adjustment?
The USPTO’s notification process for Patent Term Adjustment (PTA) has changed due to the AIA Technical Corrections Act. As stated in MPEP 2733: “The Office will no longer provide a notification of the patent term adjustment with the mailing of the notice of allowance for any patent granted on or after January 14, 2013.” Instead,…
Read MoreHow does the USPTO provide notice for reexamination requests under 35 U.S.C. 302?
The USPTO provides notice for reexamination requests filed under 35 U.S.C. 302 through publication in the Official Gazette. This is particularly important when direct communication with the patent owner is not possible. MPEP 2230 states: “The publication in the Official Gazette of (A) the notice of the filing of a request for reexamination filed under…
Read MoreHow does the USPTO handle cases where a biological deposit becomes unavailable?
When the USPTO becomes aware that a biological deposit referenced in a patent application is unavailable, it takes the following steps: The examiner treats the application as if no deposit existed. The applicant may be required to make a replacement or supplemental deposit. The new deposit must satisfy the requirements for patentability under 35 U.S.C.…
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