When should the examiner’s first Office action be mailed in an inter partes reexamination?
In an inter partes reexamination, the examiner’s first Office action on the merits should typically be mailed together with the order for reexamination. This practice is designed to expedite the process and adhere to the “special dispatch” requirement. As stated in MPEP 2661: “In order to further the requirement for special dispatch, the examiner’s first…
Read MoreWhat fees are associated with supplemental examination?
The USPTO charges fees for supplemental examination, as authorized by statute. The MPEP states: “35 U.S.C. 257(d)(1) provides the Director with authority to establish fees for filing a request for supplemental examination and for considering each item of information submitted with the request.” Additionally, if an ex parte reexamination is ordered as a result of…
Read MoreCan the time period for paying excess claims fees be extended in reexamination?
Yes, the time period for paying excess claims fees in reexamination can be extended. According to MPEP 2666.04: “An extension of time to correct the fee deficiency may be requested under 37 CFR 1.956.” This means that if you receive a Notice of Defective Paper In Inter Partes Reexamination (PTOL-2069) for unpaid excess claims fees,…
Read MoreCan the three-month period for making a required deposit be extended?
No, the three-month period for making a required deposit cannot be extended. The MPEP 2411.03 clearly states: “This time period is not extendable under 37 CFR 1.136 (see 37 CFR 1.136(c)).” This means that applicants must ensure they can make the necessary deposit within the given three-month timeframe to avoid potential abandonment of their application.…
Read MoreWhat are the expectations for parties involved in inter partes reexamination proceedings?
Parties involved in inter partes reexamination proceedings are expected to conduct themselves professionally and in accordance with USPTO regulations. The MPEP 2609 states: Patent owners and third party requesters are cautioned that the reexamination statute, regulations, and published examining procedures do not countenance so-called “litigation tactics” in reexamination proceedings. The parties are expected to conduct…
Read MoreWhat is an example of a partial loss in a patent interference proceeding?
The MPEP 2308.03(a) provides a clear example of a partial loss in a patent interference proceeding: “Example: The applicant lost the interference on a count drawn to a compound, but the opponent lost on a count drawn to methods of using the compound. The applicant may continue to pursue claims to the method of using…
Read MoreHow are examiner’s amendments handled in inter partes reexamination proceedings?
Examiner’s amendments in inter partes reexamination proceedings are handled differently from regular patent applications due to the prohibition of interviews. Key points include: Examiner’s amendments can only be made without patent owner authorization. They must be included as a formal examiner’s amendment accompanying the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). The…
Read MoreCan an examiner require consolidation of interfering claims?
Yes, an examiner can require consolidation of interfering claims. The MPEP 2304.01(d) states: “The examiner may require consolidation of such claims into a single application that provides support for the patentably indistinct claims. See 35 U.S.C. 132(a).” This consolidation is typically done to streamline the examination process and address potential interferences more efficiently. However, it’s…
Read MoreCan examiners object to reproductions in published international registrations?
Generally, examiners should not object to reproductions that were published as part of an international registration on formal grounds. The MPEP 2920.04(b) states: “Reproductions published as part of the international registration have been reviewed by the International Bureau for compliance with the formal requirements of Hague Agreement Rule 9 and Part Four of the Administrative…
Read MoreWhat principles should guide an examiner in requiring a claim for interference?
According to MPEP 2304.04(b), examiners should follow several principles when considering whether to require an applicant to add a claim for interference: An interference should generally not be suggested if examination of the application is not otherwise completed. The required claim must not encompass prior art or otherwise be barred. The application must provide adequate…
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