What is the applicability of the inter partes reexamination procedure described in MPEP 2661?

The inter partes reexamination procedure described in MPEP 2661 is specifically applicable to requests filed before September 16, 2012. This is clearly stated in the editor’s note at the beginning of the section: “[Editor Note: Applicable only to a request for inter partes reexamination filed prior to September 16, 2012]” This limitation is important because…

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Can informal amendments be accepted in inter partes reexamination proceedings?

No, informal amendments are not accepted in inter partes reexamination proceedings. The MPEP 2685 explicitly states: “An informal amendment by the patent owner will not be accepted, because that would be tantamount to an ex parte interview.” This policy ensures that all communications and amendments are formally submitted and properly recorded, maintaining the integrity and…

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How can an applicant express disagreement with a requirement to add a claim for interference?

While an applicant must comply with a requirement to add a claim under 37 CFR 41.202(c), they can still express disagreement with the requirement. According to MPEP 2304.04(b), an applicant can express disagreement in several ways: Identifying a claim already in its application, or another of its applications, that provides a basis for the proposed…

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How are reasons for patentability provided in a NIRC?

Reasons for patentability must be provided for every claim identified as patentable in the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC), unless all claims are canceled. The process involves: Indicating why the claims found patentable are clearly patentable over cited patents or printed publications. Using a manner similar to indicating reasons for…

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What happens if a third party submits information regarding a patent term extension proceeding?

According to MPEP 2763, any submissions made by third parties regarding patent term extension proceedings will not be considered by the USPTO. The section clearly states: “Submissions by third parties not requested by the Office will be returned, or otherwise disposed of, without consideration.“ This policy is enforced to maintain the ex parte nature of…

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