How can an appellant respond to new grounds of rejection in an Examiner’s Answer?
When an Examiner’s Answer contains new grounds of rejection, the appellant has two options to respond within two months from the date of the Examiner’s Answer. According to MPEP § 2275, these options are: Reopen prosecution: The appellant can request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR…
Read MoreDoes res judicata apply in patent reexamination proceedings?
Res judicata, or claim preclusion, generally does not apply in patent reexamination proceedings. The MPEP § 2259 states: “A rejection on the grounds of res judicata will not be appropriate in reexamination.” This is because one of the essential elements of res judicata is the involvement of the same parties, and the USPTO is not…
Read MoreWhat information do I need to check a patent’s maintenance fee status online?
To check a patent’s maintenance fee status online, you need two pieces of information: The patent number The corresponding application number The MPEP states: “Maintenance fee status information for a patent of interest can be obtained over the internet by entering the patent number and the corresponding application number in the appropriate spaces on the…
Read MoreWhat statements are required when submitting a replacement Sequence Listing XML?
When submitting a replacement Sequence Listing XML for a patent application, several statements are required according to MPEP 2416. These statements ensure compliance with USPTO regulations and maintain the integrity of the application. The required statements include: A statement that identifies the location of all additions, deletions, or replacements of sequence information in the replacement…
Read MoreWhat statement must accompany a late-submitted “Sequence Listing XML” in PCT applications?
When submitting a “Sequence Listing XML” in response to a notice from the United States International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA), applicants must include a specific statement regarding the content of the submission. MPEP 2414.05 states: “The “Sequence Listing XML” must be accompanied by a statement that the information recorded does…
Read MoreWhat documents are required for a petition to excuse unintentional delay in an international design application?
A petition to excuse unintentional delay in an international design application must be accompanied by several documents and fees as specified in 37 CFR 1.1051(a). The required documents include: A copy of any invitation from the International Bureau setting the missed time limit The required reply (unless previously filed) The petition fee A certified copy…
Read MoreHow detailed should the statement applying prior art be in an inter partes reexamination request?
The statement applying prior art in an inter partes reexamination request should be sufficiently detailed to explain how each item of prior art applies to every claim for which reexamination is requested. The MPEP 2617 states: “The particularity should be equivalent to that usually present in a prior art rejection statement in an Office action…
Read MoreWhat certifications are required in an inter partes reexamination request?
An inter partes reexamination request must include specific certifications as outlined in MPEP 2614. These certifications are crucial to ensure compliance with statutory provisions and to prevent abuse of the reexamination process. The required certifications are: Estoppel Certification (35 U.S.C. 317 and 315(e)): The request must include “A certification by the third party requester that…
Read MoreWhat is the process for requesting an oral hearing in a patent reexamination appeal?
To request an oral hearing in a patent reexamination appeal, the appellant (patent owner) must: File a written request for the hearing Pay the fee set forth in 37 CFR 41.20(b)(3) Submit the request within two months after the date of the examiner’s answer or supplemental examiner’s answer As stated in MPEP 2276, “The time…
Read MoreWhat is required when submitting a replacement “Sequence Listing XML” under 37 CFR 1.835(b)?
When submitting a replacement “Sequence Listing XML” under 37 CFR 1.835(b), the following items are required: A compliant replacement “Sequence Listing XML” file An amendment to the specification incorporating the new file by reference A statement identifying the location of all changes A statement identifying the basis for all changes A statement that no new…
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