What are the basic characteristics of inter partes reexamination?
Inter partes reexamination has several key characteristics as outlined in MPEP 2609: It could be requested by any third party before September 16, 2012, during the enforceability period of eligible patents. Prior art is limited to patents or printed publications under 35 U.S.C. 102 and 103. A specific standard must be met for reexamination to…
Read MoreHow does the USPTO avoid hindsight bias in obviousness determinations?
The USPTO recognizes the challenge of avoiding hindsight bias in obviousness determinations. The MPEP acknowledges: “The tendency to resort to ‘hindsight’ based upon applicant’s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis…
Read MoreHow can an attorney withdraw from representing a patent applicant?
An attorney can withdraw from representing a patent applicant by following these steps: File a request to withdraw as attorney of record with the USPTO Provide reasons for the withdrawal Sign the request Include the application number and applicant name Provide the correspondence address According to MPEP 2560, “When an attorney has been appointed, the…
Read MoreHow can an attorney withdraw from representation in a patent case?
An attorney can withdraw from representation in a patent case by following these steps: File a request to withdraw in accordance with 37 CFR 1.36. The request should include the correspondence address of the applicant or patent owner. If the applicant/owner is represented by a new attorney, include the new attorney’s registration number. The Office…
Read MoreCan an attorney file a protest on behalf of an unnamed client?
Yes, an attorney or other representative can file a protest on behalf of an unnamed real party in interest. The MPEP 1901.01 clearly states: “A protest may be filed by an attorney or other representative on behalf of an unnamed real party in interest. 37 CFR 1.291 does not require that the real party in…
Read MoreWhat is the process for getting approval for patent drawing changes in reexamination?
The process for getting approval for patent drawing changes in reexamination involves the following steps: Submit a sketch: The patent owner must submit a sketch in permanent ink showing the proposed changes or amendments. Proper labeling: The sketch should be submitted as a separate paper and clearly labeled as “Annotated Sheet.” Examiner review: The examiner…
Read MoreCan an Application Data Sheet (ADS) be submitted in a supplemental examination proceeding?
No, an Application Data Sheet (ADS) cannot be submitted in a supplemental examination proceeding. MPEP 2813 explicitly states: “An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a supplemental examination proceeding since a supplemental examination proceeding is not an ‘application.’“ This clarification is important because while ADSs are commonly used in…
Read MoreCan a supplemental examination request be made anonymously?
No, a supplemental examination request cannot be made anonymously. The MPEP 2816 clearly states: “A request for supplemental examination may be filed by the patent owner. A supplemental examination request may not be filed by a third party.” This means that only the patent owner can file a request for supplemental examination, and they must…
Read MoreHow are amendments handled in merged reissue-reexamination proceedings?
Amendments in merged reissue-reexamination proceedings are handled differently from standard reexaminations. The MPEP 2270 directs examiners to specific sections for guidance: “For entry of amendments in a merged reissue-reexamination proceeding, see MPEP § 2283 and § 2285.” This means that examiners must refer to MPEP 2283 and MPEP 2285 for specific procedures on handling amendments…
Read MoreWhen are amendments entered in a reexamination proceeding?
Amendments in a reexamination proceeding are generally entered if they comply with certain conditions. According to MPEP 2270: “Amendments submitted with a request filed under 35 U.S.C. 302, or after reexamination is ordered under 35 U.S.C. 304 or under 35 U.S.C. 257, and which comply with 37 CFR 1.530(d) – (j), will generally be entered…
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