How should patent owners document interviews in ex parte reexamination proceedings?
Patent owners are required to document interviews in ex parte reexamination proceedings as follows: A complete written statement of the reasons presented at the interview must be filed. The statement should explain why the interview warrants favorable action. It must be filed either as a separate paper within one month of the interview or as…
Read MoreWhat are the requirements for document service in inter partes reexamination?
In inter partes reexamination, there are specific requirements for document service to ensure both parties are informed of all communications. According to MPEP 2654, which cites 35 U.S.C. 314(b)(1): “With the exception of the inter partes reexamination request, any document filed by either the patent owner or the third-party requester shall be served on the…
Read MoreWhat is reexamination ordered at the Director’s initiative?
Reexamination ordered at the Director’s initiative is a process where the Director of the USPTO can initiate an ex parte reexamination of a patent without a request being filed or a fee being paid. As stated in MPEP 2239: “The Director, at any time during the period of enforceability of a patent, may determine whether…
Read MoreWhat is the difference between filing papers for supplemental examination and ex parte reexamination?
The main differences in filing papers for supplemental examination and ex parte reexamination are: Mailing Address: Supplemental examination papers go to “Mail Stop Supplemental Examination,” while ex parte reexamination papers go to “Mail Stop Ex Parte Reexam.” Marking: Papers should be marked “SUPPLEMENTAL EXAMINATION” or “EX PARTE REEXAMINATION” respectively. Control Number: Each proceeding is assigned…
Read MoreWhat is the current status of inter partes reexamination requests?
As of September 16, 2012, no new requests for inter partes reexamination can be filed. The Manual of Patent Examining Procedure (MPEP) Section 2614 states: “No requests for inter partes reexamination may be filed on or after September 16, 2012.” This change was part of the America Invents Act (AIA) which replaced inter partes reexamination…
Read MoreWho reviews the petition for a denied inter partes reexamination request?
According to MPEP 2648, the review process for a petition from a denied inter partes reexamination request is as follows: The petition, along with the reexamination file, is forwarded to the office of the Central Reexamination Unit (CRU) Director. The CRU Director conducts a de novo review of the examiner’s determination. The CRU Director’s decision…
Read MoreHow are patent drawings corrected in inter partes reexamination?
In inter partes reexamination, patent drawings are corrected in the same manner as in ex parte reexamination. The process is outlined in 37 CFR 1.530(d)(3), which states: “Any change to the patent drawings must be submitted as a sketch on a separate paper showing the proposed changes in red for approval by the examiner. Upon…
Read MoreHow can a patent owner correct information about a replacement or supplemental biological deposit?
To correct information about a replacement or supplemental biological deposit, a patent owner must request a certificate of correction. The MPEP specifies: “A replacement or supplemental deposit made in connection with a patent, whether or not made during the pendency of an application for reissue patent or a reexamination proceeding or both, shall not be…
Read MoreWhat happens if defects in inter partes reexamination submissions are not corrected?
If defects in inter partes reexamination submissions are not corrected in response to the notice, the submission will not be entered. For patent owners, failure to file a timely and appropriate response may result in termination or limitation of the reexamination proceeding. According to the MPEP 2666.50: “If, in response to the notice, the defect…
Read MoreWhat are the consequences of unauthorized participation by a protestor?
While the MPEP Section 1907 does not explicitly outline the consequences of unauthorized participation by a protestor, it emphasizes the importance of preventing such interactions: “Office personnel must exercise care to ensure that substantive matters relating to the application are not discussed ex parte with protestor or communicated in writing ex parte to protestor.” Unauthorized…
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