How are interviews conducted in ex parte reexamination proceedings?
Interviews in ex parte reexamination proceedings are conducted under specific guidelines. The MPEP 2254 states: “Interviews are permitted in an ex parte reexamination proceeding. In the ex parte reexamination proceeding, only ex parte interviews between the examiner and patent owner and/or the patent owner’s representative are permitted. Interviews between the examiner and the third party…
Read MoreWhat is the time frame for issuing a decision on inter partes reexamination?
What is the time frame for issuing a decision on inter partes reexamination? According to MPEP 2646, the Office must issue a decision on inter partes reexamination within three months following the filing date of a request. The MPEP states: “35 U.S.C. 312 and 313 require that the PTO determine whether or not to order…
Read MoreWhat happens if the fees for a supplemental examination request are insufficient?
If the fees submitted for a supplemental examination request are insufficient, the USPTO has a specific process to address this issue. According to MPEP 2812: “If the fees submitted are inadequate, … a notice will be mailed to the patent owner stating that the request lacks the necessary fees to be accorded a filing date.”…
Read MoreHow are prior art citations handled when submitted after an order for inter partes reexamination?
The handling of prior art citations submitted after an order for inter partes reexamination depends on who submits them. According to MPEP 2602: Patent owner citations: “A patent owner citation will normally be considered if it is submitted in time to do so before the reexamination certificate issues.” Third party requester citations: “A third party…
Read MoreHow are new issues raised by a third-party requester handled in reexamination?
When a third-party requester raises new issues in their reply during a reexamination proceeding, the examiner must determine whether these issues are within the scope of reexamination. MPEP 2253 provides guidance on this matter: “If the requester’s reply to the patent owner’s statement raises issues not previously presented, such issues will be treated by the…
Read MoreWhat is the typical timing for the first Office action in an inter partes reexamination?
According to MPEP 2660, the first Office action on the merits is usually mailed together with the order granting reexamination. The MPEP states: “The first Office action on the merits will ordinarily be mailed together with the order granting reexamination.” However, there are exceptions to this general practice. If it’s not possible to include the…
Read MoreWhat should the first Office action in inter partes reexamination include?
The first Office action in inter partes reexamination should be comprehensive and address all relevant issues. According to MPEP 2660, it should include: A clear statement of each ground of rejection and/or objection, with supporting reasons Determinations favorable to patentability of claims, with comprehensive reasons Responses to each argument raised in the reexamination request Any…
Read MoreHow should examiners interpret means-plus-function limitations?
According to MPEP 2182, examiners should interpret means-plus-function limitations in a manner consistent with the specification disclosure. The MPEP provides guidance on this interpretation: Consult the specification: “If the specification defines what is meant by the limitation for the purposes of the claimed invention, the examiner should interpret the limitation as having that meaning.” Exercise…
Read MoreHow does an examiner handle withdrawals of rejections in an Action Closing Prosecution (ACP)?
When an examiner withdraws a rejection in an Action Closing Prosecution (ACP) during inter partes reexamination, they must handle it carefully. According to MPEP 2671.02: For rejections initiated by the examiner: “Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the ACP as a…
Read MoreHow does the examiner handle proposed amendments during reexamination?
During reexamination, the examiner follows specific guidelines when considering proposed amendments to the specification, including claims, made by the patent owner. According to MPEP 2253: “With respect to consideration of any proposed amendments to the specification, including claims, made by the patent owner, the examiner will be guided by the provisions of 37 CFR 1.530(d)-(j).“…
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