How are properly submitted documents handled in inter partes reexamination?
When documents are properly submitted in accordance with 37 CFR 1.985 during inter partes reexamination, the USPTO has a specific process for handling them. According to MPEP 2686: “Any proper submission pursuant to 37 CFR 1.985 will be promptly entered into the record of the reexamination file, and will be considered by the examiner as…
Read MoreHow does the USPTO handle potential fraud discovered during supplemental examination?
The USPTO has specific procedures for handling potential fraud discovered during supplemental examination. The MPEP explains: “In accordance with 35 U.S.C. 257(e), if the Office becomes aware, during the course of a supplemental examination or ex parte reexamination ordered under 35 U.S.C. 257, that a material fraud on the Office may have been committed in…
Read MoreHow does the USPTO handle multiple copending reexamination proceedings?
The USPTO has specific procedures for handling multiple copending reexamination proceedings. According to MPEP 2686.01: “Where multiple copending reexamination proceedings have been filed for a patent, the Director of the USPTO may determine whether to merge all such proceedings.” The decision to merge proceedings is made on a case-by-case basis. Factors considered include: The status…
Read MoreWhat happens if an ex parte reexamination request is incomplete or the fee is not paid in full?
If an ex parte reexamination request is incomplete or the fee is not paid in full, the following occurs: The request is considered incomplete if: The appropriate filing fee (37 CFR 1.20(c)(1) or 37 CFR 1.20(c)(2)) and any applicable excess claim fees are not paid in full The request fails to meet all requirements of…
Read MoreWhat are the grounds for vacating an ex parte reexamination order?
An ex parte reexamination order may be vacated under rare and specific circumstances. According to MPEP 2246, “appropriate circumstances” for vacating an order under 37 CFR 1.181(a)(3) include: The reexamination order is not based on prior art patents or printed publications All claims of the patent were held invalid by a final federal court decision…
Read MoreWhat happens if a petition for inter partes reexamination is granted?
If a petition for inter partes reexamination is granted, the following steps occur according to MPEP 2648: The CRU Director signs the decision granting the petition. The decision includes a statement that an Office action will be mailed in due course. The reexamination file is forwarded to the CRU support staff for processing and mailing…
Read MoreHow often does the Director order reexamination on their own initiative?
According to MPEP 2239, reexamination ordered at the Director’s initiative is uncommon: “A decision to order reexamination at the Director’s initiative is, however, rare. Only in compelling circumstances, after a review of all the facts concerning the patent, would such a decision be made.” This indicates that while the Director has the authority to order…
Read MoreWhere can I find information about the former inter partes reexamination practice?
If you’re looking for information about the former inter partes reexamination practice, you can refer to the 9th Edition of the Manual of Patent Examining Procedure (MPEP). As stated in MPEP 2631, “Guidance on the former practice is available in the 9th Edition of the MPEP.“ It’s important to note that this information is now…
Read MoreWhat is Form Paragraph 23.04 and when is it used in patent examination?
Form Paragraph 23.04 is a standardized text used by patent examiners to require an applicant to add a claim to provoke an interference. According to MPEP 2304.04(b), this form paragraph is used when the examiner determines that a claim from another application or patent needs to be added to the current application for the purpose…
Read MoreWhat happens if the USPTO receives a FOIA request for confidential information in a patent term extension application?
If the United States Patent and Trademark Office (USPTO) receives a Freedom of Information Act (FOIA) request for confidential information in a patent term extension application, specific procedures are followed. According to MPEP 2760: “Should the Office receive a Freedom of Information Act (FOIA) request for the material, the applicant will be provided notice and…
Read More