Can a Certificate of Extension be issued if the patent term cannot be extended?
No, a Certificate of Extension cannot be issued if the patent term cannot be extended, even if the patent is otherwise eligible for extension. According to MPEP 2759, which cites 37 CFR 1.780: “No certificate of, or order granting, an extension will be issued if the term of the patent cannot be extended, even though…
Read MoreWhat is the role of the Central Reexamination Unit (CRU) in processing reexamination requests?
The Central Reexamination Unit (CRU) plays a crucial role in processing reexamination requests: Reviews request papers for compliance with 37 CFR 1.510. Enters compliant requests into the PALM EXPO 2970 system. Generates and mails notices of filing dates for compliant requests. Returns non-compliant requests to the sender with explanations. Handles the initial processing of most…
Read MoreCan a patent owner appeal an Action Closing Prosecution (ACP)?
No, a patent owner cannot appeal an Action Closing Prosecution (ACP) in an inter partes reexamination. The MPEP 2671.02 clearly states: “Although an Action Closing Prosecution (ACP) has many attributes similar to a ‘final rejection’ made in an ex parte reexamination proceeding or in a non-provisional application, it is not a final action, and, as…
Read MoreWhat happens if all claims are disclaimed in a patent under reexamination?
When all claims in a patent under reexamination are disclaimed, a special type of reexamination certificate is issued to reflect this fact. According to MPEP 2287: “If all of the claims are disclaimed in a patent under reexamination, a certificate under 37 CFR 1.570 will be issued indicating that fact.” This means that even if…
Read MoreWhat is an Action Closing Prosecution (ACP) in inter partes reexamination?
An Action Closing Prosecution (ACP) is a type of Office action in inter partes reexamination that signifies the examiner’s intention to close prosecution. According to MPEP 2671.01, an ACP is typically issued when: The examiner has considered the issues a second or subsequent time The examiner has determined the patentability of all claims However, the…
Read MoreCan I withdraw my Pre-Appeal Brief Request?
Can I withdraw my Pre-Appeal Brief Request? Yes, you can withdraw your Pre-Appeal Brief Request. The MPEP states, Applicants may request to withdraw the appeal by filing a request for continued examination (RCE) under 37 CFR 1.114 with the appropriate fee. (MPEP 1204.02) Here are some key points about withdrawing a Pre-Appeal Brief Request: Filing…
Read MoreWhen is a C* classification challenge typically initiated?
A C* classification challenge is typically initiated upon the receipt of an amendment to a patent application. The Manual of Patent Examining Procedure (MPEP) 909.01(c) states: “Upon the receipt of an amendment which makes a C* classification challenge necessary, steps should be taken promptly in accordance with the C* classification challenge outlined in MPEP §…
Read MoreHow does the USPTO handle applications where a generic claim is found allowable?
When a generic claim is found allowable in a patent application, the USPTO follows specific procedures as outlined in MPEP 808.01(a): “In all applications where a generic claim is found allowable, the application should be treated as indicated in MPEP § 809 and § 821.04(a).“ This means that when a generic claim is allowable, the…
Read MoreHow does the USPTO handle “election by original presentation”?
The USPTO handles “election by original presentation” when an applicant adds claims to a new invention after receiving an Office action on the original claims. The examiner will treat the newly added claims as if they were part of a separate application. Specifically: The examiner will issue a restriction requirement using form paragraph 8.04. The…
Read MoreHow does the USPTO handle benefit claims in patent application publications for applications filed before and after September 16, 2012?
The USPTO treats benefit claims in patent application publications differently depending on whether the application was filed before or after September 16, 2012. The MPEP states: “For applications filed on or after September 16, 2012, the publication did not include the benefit claim to a prior-filed nonprovisional application where the specific reference was timely submitted…
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