Can patent claims be broadened during inter partes reexamination?
No, patent claims cannot be broadened during inter partes reexamination. The MPEP 2609 explicitly states: The scope of the patent claims cannot be enlarged by amendment; This limitation is a crucial aspect of the reexamination process. It ensures that the reexamination focuses on reviewing the validity of existing claims rather than expanding patent rights. Patent…
Read MoreWhat actions take place at the Board during a derivation proceeding?
Actions at the Board during a derivation proceeding are beyond the scope of MPEP Chapter 2300. The MPEP 2314 states: “Action at the Board during a derivation proceeding is beyond the scope of this Chapter.” For detailed information on Board actions during derivation proceedings, refer to the following resources: 37 CFR part 42, subpart E…
Read MoreCan audio or video recordings be submitted as items of information in supplemental examination?
According to MPEP 2809, audio or video recordings cannot be directly submitted as items of information in supplemental examination. The MPEP states: “The Office does not currently have the capability of retaining records in unwritten form. For this reason, any audio or video recording must be submitted in the form of a written transcript in…
Read MoreHow is a representative appointed in an international design application?
A representative can be appointed in an international design application through two main methods: In the international application itself: The MPEP states, The naming of the representative in the international application at the time of filing shall constitute an appointment of such representative. This is based on Rule 3(2) of the Hague Agreement. In a…
Read MoreHow should the Application Data Sheet (ADS) be prepared when correcting inventorship?
When preparing an Application Data Sheet (ADS) to correct inventorship in an international design application, it’s important to follow specific formatting requirements. The MPEP 2920.01 states: “The ADS submitted with a request under 37 CFR 1.48(a) must identify the information being changed with underlining for insertions and strike-through or brackets for text removed. See MPEP…
Read MoreWhat are the requirements for a reexamination requester to remain anonymous?
For reexamination requesters who wish to remain anonymous, MPEP 2203 provides specific guidance: A real party in interest that wishes to remain anonymous when filing a request for reexamination under 37 CFR 1.510 can do so by utilizing the services of a registered practitioner. In such an instance, the registered practitioner submitting a request for…
Read MoreCan amendments be submitted with a supplemental examination request?
No, amendments cannot be submitted with a supplemental examination request. MPEP 2809 clearly states: “No amendment may be filed in a supplemental examination proceeding. 37 CFR 1.620(f). Any paper containing an amendment that is filed in a supplemental examination proceeding is an unauthorized paper, and will be expunged from the file if inadvertently entered.” However,…
Read MoreHow are amendments handled in international design applications?
Amendments in international design applications are subject to specific rules and procedures. According to MPEP 2920.04(b): “Amended reproductions that are submitted directly to the Office pursuant to 37 CFR 1.121 are not subject to review by the International Bureau and thus may be objected to under 37 CFR 1.1026 as to matters of form where…
Read MoreWhat happens if all patent claims are canceled in an Inter Partes Reexamination?
If all patent claims are canceled as a result of an inter partes reexamination, the USPTO will issue a certificate reflecting this outcome. According to MPEP 2688: “If a certificate issues which cancels all of the claims of the patent, no further Office proceedings will be conducted with regard to that patent or any reissue…
Read MoreWhat happens after a reply brief is filed in response to an Examiner’s Answer?
After a reply brief is filed in response to an Examiner’s Answer, the jurisdiction over the appeal passes to the Board. According to MPEP § 2275: “After receipt of a reply brief in compliance with 37 CFR 41.41 or the expiration of the time in which to file such a reply brief (37 CFR 41.35),…
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