What is a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC)?
A Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) is a document prepared by the examiner upon conclusion of an ex parte reexamination proceeding. The NIRC informs the patent owner and any third party requester that the reexamination prosecution has been terminated. According to MPEP 2287, “Upon conclusion of the ex parte reexamination…
Read MoreWhat should be included in a non-ACP Office action in inter partes reexamination?
A non-ACP Office action in inter partes reexamination should be comprehensive and address all issues related to the patent or printed publications. According to MPEP 2671.01, the action should include: A clear statement of the examiner’s position A comprehensive address of all issues related to patents or printed publications Clear explanations for each ground of…
Read MoreHow does an examiner handle new grounds of rejection in inter partes reexamination?
In inter partes reexamination, examiners must carefully consider how to handle new grounds of rejection. According to MPEP 2671.01: “An action will not normally close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.” This means that:…
Read MoreHow are multiple dependent claims treated in reexamination certificates?
Multiple dependent claims receive special treatment when preparing a reexamination certificate. The treatment differs between the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) and the Examiner’s Checklist. MPEP 2287 provides detailed guidance on this topic. For the NIRC, the addition or deletion of a claim in multiple dependency is viewed as adding…
Read MoreWhat should I know about multiple copending reexamination proceedings?
The MPEP 2241 mentions multiple copending reexamination proceedings and directs readers to additional resources for more information: “See the last portion of MPEP § 2240 and also see MPEP § 2283 for multiple copending reexamination proceedings.” This reference indicates that there are specific procedures and considerations when dealing with multiple reexamination proceedings for the same…
Read MoreDoes the discovery of potential material fraud halt supplemental examination?
No, the discovery of potential material fraud does not halt the supplemental examination or any resulting reexamination. According to MPEP 2819: “If the Office becomes aware, during the course of supplemental examination or of any reexamination ordered under 35 U.S.C. 257 as a result of the supplemental examination proceeding, that a material fraud on the…
Read MoreWhat happens if a protest is filed after the time limit specified in 37 CFR 1.291?
If a protest is filed after the time limit specified in 37 CFR 1.291, it will generally not be entered or considered by the USPTO. However, there are two exceptions to this rule: Written Consent of the Applicant: If the protest is accompanied by the written consent of the applicant, it may be entered and…
Read MoreIs evidence required to support the existence of a joint research agreement?
Generally, evidence supporting the existence of a joint research agreement is not required, but the applicant may choose to provide it. The MPEP states: “As is the case with establishing common ownership, the applicant may, but is not required to, present evidence supporting the existence of the joint research agreement. Furthermore, the Office will not…
Read MoreWhat happens if a joint inventor refuses to join a patent application?
If a joint inventor refuses to join a patent application, the law provides a solution. According to 35 U.S.C. 116(b): “If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and…
Read MoreHow is a Certificate of Extension of Patent Term issued?
The process of issuing a Certificate of Extension of Patent Term involves several steps: The Director determines the patent’s eligibility for extension based on the application. If eligible and requirements are met, a certificate is issued under seal. The certificate is recorded in the official patent file. Notification of issuance is published in the Official…
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