How does the USPTO treat admissions under the AIA?
The United States Patent and Trademark Office (USPTO) continues to treat admissions by applicants as prior art under the America Invents Act (AIA). This approach is consistent with pre-AIA practice. According to MPEP 2152.03: “The Office will continue to treat admissions by the applicant as prior art under the AIA.” This means that any statement…
Read MoreWhat is the timeframe for the USPTO to decide on a supplemental examination request?
According to MPEP 2815, the USPTO has a specific timeframe to decide on a supplemental examination request. The manual states: “Within three months after the filing date of a request for supplemental examination, the Office will determine whether a substantial new question of patentability affecting any claim of the patent is raised by any of…
Read MoreWhat is the time frame for the USPTO to issue a supplemental examination certificate?
The USPTO has a specific time frame for issuing a supplemental examination certificate. According to MPEP 2816: “The Office will issue a supplemental examination certificate within three months of the filing date of the request.” This three-month period is statutorily mandated by 35 U.S.C. 257(a). The certificate will indicate whether the items of information presented…
Read MoreCan the USPTO make telephone calls during inter partes reexamination proceedings?
The USPTO may, in its sole discretion, make limited telephone calls during inter partes reexamination proceedings. According to MPEP 2685, “The Office may, in its sole discretion, telephone a party as to matters of completing or correcting the record of a file, where the subject matter discussed does not go to the merits of the…
Read MoreCan the USPTO suspend an inter partes reexamination due to ongoing litigation?
Yes, the USPTO can suspend an inter partes reexamination due to ongoing litigation, but this is rare. The key points are: The Director has authority to suspend for “good cause” under 35 U.S.C. 314(c). Suspension is considered on a case-by-case basis. The potential for termination under 35 U.S.C. 317(b) may provide “good cause” for suspension.…
Read MoreWhat is the time frame for the USPTO to determine if a Substantial New Question (SNQ) of patentability is raised in a supplemental examination request?
According to MPEP 2816, the USPTO is required to make a determination within three months following the filing date of a request for supplemental examination. Specifically, the MPEP states: “35 U.S.C. 257(a) and 37 CFR 1.620(b) require that, within three months following the filing date of a request for supplemental examination, the Office will determine…
Read MoreHow does the USPTO conclude a supplemental examination proceeding?
A supplemental examination proceeding concludes with the issuance of a specific document. According to MPEP 2815: “A supplemental examination proceeding concludes with the issuance of a supplemental examination certificate, indicating the results of the examiner’s determination.” This certificate serves as the official record of the examiner’s determination regarding whether a substantial new question of patentability…
Read MoreWhat are the submission options for ASCII plain text sequence listings to the USPTO?
According to MPEP 2422.03(a), there are several options for submitting ASCII plain text sequence listings to the USPTO: Via EFS-Web (now Patent Center) as a text file. On a compact disc (CD) or Digital Video Disc (DVD). As part of a patent application filing via EFS-Web. The MPEP states: “ASCII plain text files are permitted…
Read MoreWhat is the USPTO’s stance on rejecting patent claims for “aggregation”?
According to the Manual of Patent Examining Procedure (MPEP) 2173.05(k), patent claims should not be rejected on the grounds of “aggregation.” The MPEP states: “A claim should not be rejected on the ground of ‘aggregation.’” This guidance is based on legal precedents, including In re Gustafson and In re Collier, which established that rejections for…
Read MoreHow does the USPTO handle the timing of reexamination proceedings?
The USPTO is required to conduct reexamination proceedings with special dispatch. MPEP 2821 references 35 U.S.C. 305, which states: “Reexamination will be conducted with special dispatch within the Office.“ This requirement ensures that reexamination proceedings are handled promptly and efficiently. The MPEP also cites the case of Ethicon v. Quigg, 849 F.2d 1422 (Fed. Cir.…
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