How does the USPTO handle requests for supplemental examination that only include correction of factual information?
When a request for supplemental examination only includes information limited to the correction of factual information (such as correcting a foreign priority or domestic benefit claim), it generally does not raise a substantial new question of patentability (SNQ) by itself. The MPEP states: An item of information limited to a correction of factual information, alone,…
Read MoreHow does the USPTO handle supplemental examination requests involving domestic benefit claims?
The USPTO has specific procedures for handling supplemental examination requests involving domestic benefit claims. These procedures depend on whether the request is solely for correcting a benefit claim or includes additional items of information. For requests solely correcting a benefit claim, the MPEP states: If the only information provided with the request is solely directed…
Read MoreCan an applicant suggest an interference for an application under a secrecy order?
Yes, an applicant can suggest an interference for an application under a secrecy order, but the USPTO will not act on it immediately. According to MPEP 2306: “An applicant whose application is under secrecy order may suggest an interference (§ 41.202(a) of this title), but the Office will not act on the request while the…
Read MoreWhat is required for a showing of sufficient cause in an extension request?
A showing of sufficient cause for an extension request in ex parte reexamination proceedings requires: A full statement of the reasons for the extension. An explanation of what action the patent owner has taken to provide a response as of the date of the request. A justification for why the requested additional time is needed.…
Read MoreHow should a petition under 37 CFR 1.377 be addressed and submitted?
The MPEP provides specific instructions for addressing and submitting a petition under 37 CFR 1.377: “Any petition under 37 CFR 1.377 should be marked on the front page of the communication to the attention of the Office of Petitions and addressed as follows: Mail Stop PetitionCommissioner for PatentsP.O. Box 1450Alexandria, Virginia 22313-1450″ It’s crucial to…
Read MoreWhat are the differences between “streamlined” and “non-streamlined” ex parte reexamination requests?
The main differences between “streamlined” and “non-streamlined” ex parte reexamination requests are: Filing Fee: Streamlined requests: Lower fee under 37 CFR 1.20(c)(1) Non-streamlined requests: Higher fee under 37 CFR 1.20(c)(2) Page Limit: Streamlined requests: 40 or fewer pages Non-streamlined requests: More than 40 pages Formatting Requirements: Streamlined requests: Must meet specific formatting requirements (e.g., line…
Read MoreCan a patent owner petition to stay a reexamination proceeding because of an interference?
Yes, a patent owner can petition to stay a reexamination proceeding because of an interference, but there are specific rules and timing considerations: Any petition filed prior to the first Office action in the reexamination proceeding will not be considered and will be returned or expunged. The patent owner may file a petition to stay…
Read MoreWhat are status reports in the context of patent reexamination, and why are they important?
Status reports in patent reexamination are weekly computer-generated reports that provide updates on the events and progress of reexamination proceedings. According to MPEP 2635: “Various weekly reports can be generated for the event reporting discussed above. The primary purpose of these computer outputs is to assure that reexaminations are, in fact, processed with ‘special dispatch’.”…
Read MoreWhat is the “special dispatch” requirement for inter partes reexamination proceedings?
The “special dispatch” requirement for inter partes reexamination proceedings is a statutory mandate that these proceedings be conducted quickly. Key points include: It’s required by 35 U.S.C. 314(c). It applies to all aspects of the reexamination, including appeals. The Director can make exceptions for “good cause.” It’s a factor in decisions about suspending proceedings due…
Read MoreWhat does “special dispatch” mean in the context of reexamination proceedings?
“Special dispatch” in the context of reexamination proceedings refers to the expedited handling and processing of these cases by the United States Patent and Trademark Office (USPTO). This term is derived from 35 U.S.C. 305 and is further explained in MPEP 2261. The MPEP states: “In view of the requirement for ‘special dispatch,’ reexamination proceedings…
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