What are the requirements for a rejection in an Office action during ex parte reexamination?
In an ex parte reexamination Office action, rejections must meet specific requirements as outlined in MPEP 2262. The key points are: Each rejection must be based on patents or printed publications. Rejections must clearly explain the reasons for rejection, citing specific sections of the references. The examiner must provide a detailed mapping of the claims…
Read MoreWhere should ex parte reexamination requests be mailed?
Ex parte reexamination requests should be mailed to a specific address at the USPTO. According to MPEP 2226, mail related to ex parte reexamination should be marked as follows: “Mail Stop Ex Parte Reexam” This special marking ensures that the mail is directed to the appropriate office for initial processing. It’s important for patent attorneys…
Read MoreWhat are the requirements for filing an ex parte reexamination request?
Filing an ex parte reexamination request requires several key elements as outlined in 37 CFR 1.510(b): A statement pointing out each substantial new question of patentability based on prior patents and printed publications. An identification of every claim for which reexamination is requested, with a detailed explanation of how the cited prior art applies to…
Read MoreWhat is the fee for filing an ex parte reexamination request?
What is the fee for filing an ex parte reexamination request? The fee for filing an ex parte reexamination request varies depending on the entity size. As of September 2022: For large entities: $6,500 For small entities: $3,250 For micro entities: $1,625 These fees are subject to change. Always check the current USPTO fee schedule…
Read MoreAre there any circumstances where the ex parte reexamination fee can be refunded?
Are there any circumstances where the ex parte reexamination fee can be refunded? The USPTO has specific rules regarding refunds of ex parte reexamination fees. According to MPEP 2215: “If the Director decides not to institute reexamination under 35 U.S.C. 303(c), the reexamination filing fee will be refunded in accordance with 37 CFR 1.26(c).” However,…
Read MoreCan I submit an ex parte reexamination request by fax?
No, you cannot submit an ex parte reexamination request by fax. The MPEP clearly states: “A request for ex parte reexamination may not be sent by facsimile transmission (FAX). See 37 CFR 1.6(d)(5).” This prohibition also applies to corrected or completed requests sent in response to a notice of non-compliance. However, subsequent correspondence in ex…
Read MoreHow are Ex Parte Reexamination Certificates numbered?
Ex Parte Reexamination Certificates are numbered using a specific system that includes both ordinal numbers and ‘kind codes’. The MPEP explains: The ex parte reexamination certificate number will always be the patent number of the original patent followed by a two-character “kind code” suffix. The first letter of the “kind code” suffix is “B” for…
Read MoreWhat happens if an ex parte reexamination certificate is not issued within 3 months?
According to MPEP 2288, if an ex parte reexamination certificate is not issued within 3 months from the day the patent owner’s statement (or the time for filing such a statement expires), the requester may seek court intervention. The MPEP states: “If the reexamination certificate is not issued within that period, the requester may seek…
Read MoreWhat information is included in an Ex Parte Reexamination Certificate?
An Ex Parte Reexamination Certificate contains several key pieces of information about the reexamined patent. According to the MPEP, the certificate includes: The title “Ex Parte Reexamination Certificate” An ordinal number (e.g., “235th”) The original patent number followed by a two-character kind code The date of issuance The title of the invention The name of…
Read MoreHow are new and amended claims presented in an Ex Parte Reexamination Certificate?
The Ex Parte Reexamination Certificate has a specific format for presenting new and amended claims. The MPEP states: Any new claims will be printed in the certificate completely in italics, and any amended claims will be printed in the certificate with italics and bracketing indicating the amendments thereto. This formatting helps to clearly distinguish between…
Read More