How are prior art submissions handled after an inter partes reexamination order is issued?
Prior art submissions made after an inter partes reexamination order is issued are handled differently than those submitted before the order. According to MPEP 2646: “Any prior art citations under 37 CFR 1.501 submitted after the date of the decision ordering inter partes reexamination are stored until the reexamination is concluded. Note 37 CFR 1.902.…
Read MoreHow is prior art handled in ex parte reexamination after the order is issued?
The handling of prior art in ex parte reexamination after the order is issued is governed by specific rules. According to MPEP 2246: Prior art citations or written statements under 37 CFR 1.501 submitted after the date of the decision on the order are stored until the reexamination is concluded. After the reexamination proceeding is…
Read MoreWhat is the process for preparing an inter partes reexamination file for publication of the certificate?
The process for preparing an inter partes reexamination file for publication of the certificate involves several steps: The examiner completes an Examiner Checklist Reexamination form (PTOL-1516). The Legal Instrument Examiner (LIE) completes a Reexamination Clerk Checklist form (PTOL-1517). The case is reviewed by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology…
Read MoreHow should patent owners prepare for an interview in an ex parte reexamination proceeding?
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281: Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted. If granted, file the following at least three working days prior to the interview: An…
Read MoreHow are petitions handled in a supplemental examination proceeding?
MPEP 2813 addresses the handling of petitions in supplemental examination proceedings. According to the guidelines: “37 CFR 1.620(b) provides that the Office may hold in abeyance an action on any petition or other paper filed in a supplemental examination proceeding until after the proceeding is concluded by the electronic issuance of the supplemental examination certificate…
Read MoreWhat are the time limits for filing a petition under 37 CFR 1.377?
The time limits for filing a petition under 37 CFR 1.377 are specific and must be strictly adhered to. According to the MPEP: “Any petition filed under 37 CFR 1.377 must be filed within 2 months of the action complained of, or within such other time as may be set in the action complained of.“…
Read MoreWhat is the process for petitioning a denial of an inter partes reexamination request?
If a request for inter partes reexamination is denied, the third-party requester can petition for review. According to MPEP 2648: “The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing to order inter partes reexamination.” This petition…
Read MoreHow are PCT application files handled in patent interferences?
The MPEP 2304.01(b) provides guidance on handling Patent Cooperation Treaty (PCT) application files in interference proceedings: “Generally, a separate application file for a Patent Cooperation Treaty (PCT) application is not required for according benefit because the PCT application is included in a national stage application file that is itself either the application involved in the…
Read MoreWhat is “patentably indistinct subject matter” in the context of patent interferences?
“Patentably indistinct subject matter” refers to inventions or claims that are not substantially different from each other in terms of patentability. In the context of patent interferences, this concept is crucial. The MPEP 2308.03(c) states: “No second interference should occur between the same parties on patentably indistinct subject matter.” This means that if two parties…
Read MoreWhat are “patentably indistinct claims” in the context of interfering applications?
“Patentably indistinct claims” in the context of interfering applications refer to claims from different applications that are substantially similar or overlapping in scope. According to MPEP 2304.01(d): “Interfering claims of applications with either the same assignee or the same inventive entity are ‘patentably indistinct claims’ within the meaning of 37 CFR 1.78(f).” These claims are…
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