How does the USPTO handle refunds for duplicate maintenance fee payments?
The USPTO has a specific process for handling refunds of duplicate maintenance fee payments. According to MPEP 2532: “If the first payment was properly processed, the Office will return the duplicate payment to the second fee submitter. In this event the returned payment will be accompanied by identification of the first fee submitter.“ This means…
Read MoreHow should USPTO personnel report time spent on reexamination activities?
According to the Manual of Patent Examining Procedure (MPEP) Section 2638, all USPTO personnel are required to report all time spent on reexamination activities accurately. The MPEP states: “It is essential that all time expended on reexamination activities be reported accurately. Thus, all USPTO personnel should report all time spent on reexamination on their individual…
Read MoreHow does the USPTO handle a request for reexamination of a patent that has already been reissued?
The USPTO has a specific policy for handling reexamination requests for patents that have already been reissued. The MPEP states: “Where a request for reexamination is filed on a patent after a reissue patent for that patent has already issued, reexamination will be denied, because the patent on which the request for reexamination is based…
Read MoreHow are reexamination request papers initially processed by the USPTO?
The initial processing of reexamination request papers at the USPTO involves several steps: Receipt and Scanning: The papers are received in the Office of Patent Application Processing (OPAP) and scanned into the Image File Wrapper (IFW) system. Assignment to CRU or TC: The request is then forwarded to either the Central Reexamination Unit (CRU) or…
Read MoreWhat is the Office policy regarding reexamination when there has been a federal court decision on the merits of a patent?
The Office policy regarding reexamination when there has been a federal court decision on the merits of a patent is outlined in MPEP § 2642 and MPEP § 2686.04. These sections provide guidance on how to handle requests for reexamination and the subsequent examination phase in such cases. According to MPEP § 2659, “Claims finally…
Read MoreHow does the USPTO treat claims held “not invalid” by a federal court in reexamination?
The USPTO may still reexamine claims that have been held “not invalid” by a federal court. According to MPEP § 2259: “Claims finally held as ‘not invalid’ by a federal court, after all appeals, may still be subject to reexamination.” This means that even if a court has upheld the validity of certain claims, the…
Read MoreCan a reexamination be ordered for claims not specifically requested in the reexamination request?
Generally, the USPTO’s determination in both the order for reexamination and the examination stage will be limited to the claims for which reexamination was specifically requested. However, the Office has the discretion to reexamine any claim for which reexamination has not been requested. The MPEP states: “The decision to reexamine any claim for which reexamination…
Read MoreCan a reexamination be ordered for claims not specifically requested in the inter partes reexamination request?
Generally, the USPTO will limit its examination to the claims specifically requested for reexamination. However, the Office retains discretion to reexamine other claims. The MPEP states: “The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the claim(s) for which…
Read MoreWhat activities are included in USPTO reexamination time reporting?
The MPEP 2238 provides guidance on the range of activities that should be included in time reporting for reexaminations: “Even activities such as supervision, copying, typing, and docketing should be included.” This means that USPTO personnel should report time spent on both direct examination tasks and supporting activities related to reexamination proceedings. To learn more:…
Read MoreWhat activities should be included in USPTO personnel’s Time and Attendance Reports for reexamination?
According to MPEP 2638, USPTO personnel should include all activities related to reexamination in their Time and Attendance Reports. The section specifically states: “Even activities such as supervision, copying, typing, and docketing should be included.” This means that in addition to direct examination work, administrative and support tasks related to reexamination should also be reported.…
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