What are the key differences between ex parte reexamination ordered under 35 U.S.C. 257 and 35 U.S.C. 302?
There are several key differences between ex parte reexamination ordered under 35 U.S.C. 257 (as a result of supplemental examination) and 35 U.S.C. 302: Patent owner’s statement rights Timing of patent amendments Basis for reexamination Scope of issues considered Definition of material information According to MPEP 2823: “Ex parte reexamination ordered under 35 U.S.C. 257,…
Read MoreWhat are the four ways ex parte reexamination proceedings can be concluded?
According to MPEP 2294, ex parte reexamination proceedings can be concluded in four ways: Denial of reexamination, vacating the reexamination proceeding, or terminating the reexamination proceeding Issuance of a Reexamination Certificate under 37 CFR 1.570(b) Merging with a reissue proceeding and granting a reissue patent under 37 CFR 1.570(e) Merging with an inter partes reexamination…
Read MoreWhat is considered ex parte communication in patent protests?
Ex parte communication in the context of patent protests refers to any one-sided or private communication between a protestor and USPTO personnel regarding substantive matters of a patent application. The MPEP Section 1907 provides guidance on this issue: “Office personnel must exercise care to ensure that substantive matters relating to the application are not discussed…
Read MoreWhat evidence can be submitted to support allegations of public use or sale in a patent protest?
When submitting a protest based on alleged public use or sale, various forms of evidence can be provided. The MPEP states: “In a protest based on an alleged public use or sale, evidence of such public use or sale may be submitted along with affidavits or declarations identifying the source(s) of the evidence and explaining…
Read MoreWhat is the legal concept of estoppel in patent interference proceedings?
In patent interference proceedings, estoppel is a legal concept that prevents a party from raising an issue if they have already lost on that issue during the interference. This principle is outlined in MPEP 2308.03(a), which states: “A party is barred (estopped) from raising an issue if the party lost on the issue during the…
Read MoreWhat happens if an amendment enlarges the scope of claims in a reexamination?
When an amendment enlarges the scope of claims in a reexamination, it is handled in a specific manner. According to MPEP 2270: “Where an amendment enlarges the scope of the claims of the patent, the amendment will be entered; however the appropriate claims will be rejected under 35 U.S.C. 305.” This means that while the…
Read MoreCan supplemental examination papers be filed electronically?
Yes, supplemental examination papers can be filed electronically. According to MPEP 2807: “Papers filed in a supplemental examination proceeding may be filed electronically via EFS-Web. See MPEP § 2806, subsection I.” This means that the USPTO allows for electronic submission of supplemental examination papers through their Electronic Filing System-Web (EFS-Web). For more detailed information on…
Read MoreWhat happens if a duplicate maintenance fee payment is submitted for a patent?
When a duplicate maintenance fee payment is submitted for a patent, the USPTO’s handling depends on whether the payment complies with 37 CFR 1.366(c). The MPEP states: “If the duplicate payment does not comply with 37 CFR 1.366(c) by not containing both the patent number and the corroborating application number, the Office will return the…
Read MoreDoes an assignment automatically revoke a previous power of attorney in patent cases?
No, an assignment does not automatically revoke a previous power of attorney in patent cases. The MPEP 2560 clearly states: “It should be noted that an assignment does not act as a revocation of power of attorney for authorization previously given.” This means that even if the ownership of a patent or patent application changes,…
Read MoreWhat documents are considered prior to examination in ex parte reexamination?
According to MPEP 2252, only specific documents are considered prior to examination in ex parte reexamination. The MPEP states: “No submissions other than the statement pursuant to § 1.530 and the reply by the ex parte reexamination requester pursuant to § 1.535 will be considered prior to examination.” This means that only the patent owner’s…
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