Can a protestor participate in the patent examination process?
The participation of a protestor in the patent examination process is limited. According to MPEP 1901: The degree of participation allowed a protestor is solely within the discretion of the Director of the USPTO. Furthermore, the MPEP clarifies: A protestor does not, by the mere filing of a protest, obtain the “right” to argue the…
Read MoreWhat’s the difference between withdrawing a patent term extension application and responding to an election requirement?
There’s a significant difference between withdrawing a patent term extension application and responding to an election requirement. The MPEP 2764 notes: “This is a different situation as compared to MPEP § 2761 where the withdrawal is in response to a requirement for election and not an express withdrawal under 37 CFR 1.770.” Key differences include:…
Read MoreWhat options does a patent owner have after receiving an Action Closing Prosecution (ACP)?
After receiving an Action Closing Prosecution (ACP) in an inter partes reexamination, the patent owner has specific options as outlined in MPEP 2671.02: File written comments: “Pursuant to 37 CFR 1.951(a), the patent owner may once file written comments limited to the issues raised in the reexamination proceeding and/or present a proposed amendment to the…
Read MoreWhen is a panel review conference required in ex parte reexamination?
A panel review conference is generally required before issuing a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) in ex parte reexamination proceedings. However, there are exceptions to this requirement. According to MPEP 2287: “A panel review conference must be held in each instance where a NIRC is about to be issued, unless…
Read MoreWhat is the panel review conference in inter partes reexamination?
The panel review conference is a quality control measure in inter partes reexamination. According to MPEP 2660: “Upon receipt of a patent owner response to the action (and third party requester comments where permitted) by the CRU, or upon the expiration of the time to submit same, the examiner will be internally notified. The examiner…
Read MoreHow are issues outside the scope of reexamination handled in inter partes proceedings?
In inter partes reexamination proceedings, issues that fall outside the scope of reexamination are noted but not considered. According to MPEP 2671.01: “If questions not within the scope of reexamination proceedings (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under 35 U.S.C. 102) have been newly raised by…
Read MoreWhat is the role of the Office of Patent Application Processing (OPAP) in ex parte reexamination?
The Office of Patent Application Processing (OPAP) plays a crucial role in the initial stages of ex parte reexamination. According to MPEP 2226: “The opening of all mail marked “Mail Stop Ex Parte Reexam,” and all initial clerical processing of requests for reexamination, will be performed in the Office of Patent Application Processing (OPAP).” OPAP…
Read MoreWhat is the process for preparing an Office action in inter partes reexamination?
The process for preparing an Office action in inter partes reexamination involves several steps and considerations. According to MPEP 2671.01, the process includes: Notification of the examiner upon receipt of a patent owner response (and third party requester comments, if applicable). Preparation for and setting up of a panel review conference (as per MPEP §…
Read MoreWhat are the key components of an Office action cover sheet in inter partes reexamination?
In inter partes reexamination, the Office action cover sheet plays a crucial role in organizing and presenting information. According to MPEP 2671.01, the key components of an Office action cover sheet are: Use of Form PTOL-2064 as the cover sheet Date of the communication(s) to which the Office action is responsive Response period given to…
Read MoreWhat is the Notice of Final Determination in patent term extension?
The Notice of Final Determination is a document issued by the USPTO after reviewing the regulatory agency’s information and calculating the eligible length of patent term extension. According to MPEP 2758, this notice: States the length of extension for which the application is eligible Provides the calculations used to determine the extension length Gives the…
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