What is “special dispatch” in inter partes reexamination proceedings?
“Special dispatch” is a requirement for inter partes reexamination proceedings as mandated by 35 U.S.C. 314(c). The MPEP states: “In view of the requirement for ‘special dispatch,’ all reexamination proceedings will be ‘special’ throughout their pendency in the Office.” This means that inter partes reexamination proceedings are given priority and expedited treatment throughout the entire…
Read MoreWho can sign a petition under 37 CFR 1.377?
The MPEP provides specific guidelines on who can sign a petition under 37 CFR 1.377. According to the manual: “Any petition filed under 37 CFR 1.377 must comply with the requirements of 37 CFR 1.181(b) and must be signed by an attorney or agent registered to practice before the Office, or by the patentee, the…
Read MoreWhat happens to patent applications under secrecy orders in interference proceedings?
Patent applications under secrecy orders are treated differently in interference proceedings. According to MPEP 2306: “An interference will not be declared involving a national application under secrecy order. 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…
Read MoreWhat happens when a secrecy order expires or is rescinded?
When a secrecy order expires or is rescinded, the USPTO may reconsider the need for an interference. According to MPEP 2306: “When a secrecy order expires or is rescinded, if the examination is otherwise completed in accordance with 37 CFR 41.102, then the need for an interference may be reconsidered.” This means that once the…
Read MoreWhat is the role of panel review conferences in issuing a NIRC?
Panel review conferences play a crucial role in the issuance of a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) when at least one claim is found patentable. The process involves: The examiner formulates a draft preliminary NIRC. The examiner informs their supervisor (SPRS or QAS) of the intent to issue the NIRC.…
Read MoreHow can parties request a suspension of an interference due to a reexamination proceeding?
Parties can request a suspension of an interference due to a reexamination proceeding through two main methods: Motion to Suspend Interference: A party to the interference can file a miscellaneous motion under 37 CFR 41.121(a)(3) to suspend the interference pending the outcome of a reexamination proceeding. This motion must be presented to the Administrative Patent…
Read MoreWhat should I do if I witness an ex parte communication in a patent interference?
If you witness or become aware of an ex parte communication in a patent interference, you should promptly report it to the Board. The MPEP 2307.01 states: “Once an interference is declared, any attempt by a party to communicate with the Board through the examiner or to have the examiner act in an involved patent…
Read MoreWhat are the requirements for replying to a rejection based on a deposit issue?
When replying to a rejection based on a deposit issue, applicants must meet specific requirements as outlined in MPEP 2411.02. The key requirements include: Providing a statement that the deposit has been made and that all restrictions on access will be removed upon grant of a patent. Supplying the deposit accession number and any other…
Read MoreWhat regulations apply to a converted international design application?
Once an international design application is converted to a U.S. design application under 35 U.S.C. Chapter 16, it becomes subject to the regulations that govern standard U.S. design patent applications. The MPEP explicitly states: “An international design application converted under 37 CFR 1.1052 is subject to the regulations applicable to a design application filed under…
Read MoreWhat happens if the Deputy Commissioner refuses to issue a reexamination order?
If the Deputy Commissioner for Patents decides not to issue a reexamination order after considering a potential case, the matter is handled discreetly. According to MPEP 2239: “If the Deputy Commissioner for Patents who oversees the Office of Petitions refuses to issue an order for reexamination, no record of any consideration of the matter will…
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