MPEP 1300 (allowance/issue), 1400 (correction), 1900 (protest), 2200 (reexam), 2300 (deriv), 2500 (maintenance) , 2600 (IPR), 2700 (term), 2800 (supp)

Question 1

What are relevant deadlines for a reissue application?

Answer 1

To broaden claims, you must file the reissue application within two years of issue.

Question 2

In what three ways is a reissue application different from a non-reissue continuation?

Answer 2

1. It is filed after issuance.
2. The original patent is surrendered. MPEP 1410.
3. Must resubmit the drawings. MPEP 1413

Question 3

What is the rule against recapture for a reissue application?

Answer 3

For a reissue application, you cannot broaden a claim by removing a limitation that was originally added to overcome a 102/103 rejection, “to define the invention over the art of record.”
MPEP 1412

Question 4

How do you indicate claim amendments in a reissue application?

Answer 4

1. underline additions
2. single-bracket deletions
3. 2nd round of revisions retain first round, so all revisions are seen with respect to claims in granted patent.
4. parenthetical expressions: amended, twice amended, etc. Rule 173.

Question 5

Who must sign an oath/declaration for a reissue?

Answer 5

If no broadened claims are submitted: assignee
If claims are broadened: each inventor,* plus written consent of any assignee.
* Unless owner filed original application as the “applicant” using a Substitute Statement.
MPEP 1410, rule 1.175(c)

Question 6

What does a reissue oath/declaration require that is not required for a standard patent oath/declaration?

Answer 6

(A) A statement that the applicant believes the original patent to be wholly or partly inoperative or invalid—
(1) by reason of a defective specification or drawing, or
(2) by reason of the patentee claiming more or less than patentee had the right to claim in the patent; and
(B) A statement of at least one error which is relied upon to support the reissue application, i.e., as the basis for the reissue.
MPEP 1414.01
Rule 1.175

Question 7

What are “intervening rights?”

Answer 7

Reissues: If X’s actions do not infringe on patented claim, but does infringe on a broadened reissue claim,, then X cannot be sued. X has intervening rights.

Same thing if a patent owner lets a patent lapse, X begins to sell a product that reads on lapsed claims, and then patent owner revives patent.

Question 8

How to you correct priority in a granted CON or DIV patent?

Answer 8

Certificate of Correction, provided proper claim was made in parent.

Question 9

What is a disclaimer, non-terminal?

Answer 9

Giving up selected claims of an issued patent because they are invalid without deceptive intent. Fee required. MPEP 1490.

Question 10

In an granted patent, how to you correct priority, e..g, add a missing priority claim?

Answer 10

If there is a parent application, then request a Certificate of Correction, provided proper claim was made in parent. (Reissue is OK too.)
See MPEP 216.01 I, - In re Van Esdonk and subsequent text until Roman numeral II.

Question 11

Protests: With the exception of a protest accompanied by a written consent of the applicant, when must a protest be submitted?

Answer 11

the earlier of (a) publication and (b) the date a notice of allowance,” MPEP 1901.04, Rule 1.291.

Question 12

How can you submit a protest against an application after the application has been published?

Answer 12

With consent of the applicant.

Question 13

What is the fee for filing a protest?

Answer 13

Zero, unless the same party files a 2nd or subsequent protest.

Question 14

What is the due date for a third-party preissuance submission?

Or: Where can you find this information?

Answer 14

1. Determine later of (pub + 6 months) and (first rejection)
2. Compare to allowance date.
3. Pick earlier date.
   File before this date, not on it.
   —
   Rule 1.290. U.S.C. 122(e).

Question 15

In a preissuance submission, what must you say, and what must you not say about the art being submitted?

Answer 15

say: describe relevance of each item.

not say: arguments against patentability

Question 16

When is there no fee for a preissuance submission?

Answer 16

When both (a) the number of references is at most 3, and (b) it's the first submission by party for this application.
.

Question 17

When is the latest you can file preissuance submission?

Answer 17

earlier of
(A) allowance and
(B) earlier of (publication + 6 months) and 1st rejection on merits.
U.S.C. 122.

Question 18

Who cannot file a third-party (pre-issuance) submission, and why?

Answer 18

Anyone involved with prosecution of the application. Otherwise such a person could use third-party submission instead of filing a supplemental IDS, which can require also filing an RCE.

Question 19

You pay the wrong issue fee or publication fee, what happens?

Answer 19

It is true that a general authorization is not sufficient, but paying the incorrect issue fee does allow the USPTO to look to the deposit account to correct the deficiency.
See 37 CFR 1.311 (b)(1).

Question 20

If the issue fee has been paid, the only way to abandon the application is to file a petition to ________.

Answer 20

Withdraw the application from issue.

Question 21

Term for a design patent is:

Answer 21

15 years.

Question 22

Term for a plant patent is:

Answer 22

Same as a utility.

Question 23

What is the maximum term extension related to delays associated with secrecy orders and/or successful appeals?

Answer 23

Five (5) years.

Question 24

How long can you defer issuance of a patent?

Answer 24

for a period of up to 1 month only, in the absence of extraordinary circumstances or requirement of the regulations (e.g., 37 CFR 1.177) which would dictate a longer period. Rule 314, MPEP 1306.01.

Question 25

You’ve paid the issue fee and then learn about a reference that possibly reads on one of the allowed claims. What’s the proper action?

Answer 25

File a petition w/ fee requesting withdrawal of application from issue so the new reference can be considered in a continuation. (Test will not include QPIDS, it’s not in MPEP yet)

Look up Withdrawal from issue, MPEP 1308, rule 1.313.

Question 26

What is required for a protest to be entered into the application’s file?

Answer 26

(1) It’s filed on time – before earlier of publication and; notice of allowance
(2) It’s served upon the applicant.

Question 27

A client wants the PTO to know about art related to a published application. What’s the best way to proceed?

Answer 27

Third-party submission, as assignee of application need not give consent, unlike a protests after publication.

MPEP 1134

Question 28

How do you change inventorship for a pending application?

How do you change inventorship on a granted patent? What information is required?

Answer 28

pending:
New ADS, fee, new oath/dec for any new inventor. Rule 1.48

granted:
* Certificate of Correction - if inventorship is not contested Petition to the Commissioner and pay a fee.
Statements from each inventor being added and from each currently named inventors.
* If inventorship is contested, file a reissue. MPEP 1402 II

MPEP 1481.02. 37 CFR 1.324, U.S.C. 256

Question 29

How to you make prior art “of record” for an issued patent? Where is this in MPEP?

Answer 29

File a Citation of Prior Art. Explain relevance of cited art or written statement of the patent owner. MPEP 2202.

Question 30

When can the party that initiated a post-grant proceeding participate in it?

Answer 30

Only in an inter partes reexamination/review. Not in ex parte reexamination (MPEP 2209)

Question 31

If your patent is under reexamination, in what circumstances can you be granted an extension of time?

Answer 31

For cause only. Pay a fee. Rule 1.550(c) MPEP 2265.

Question 32

How can you amend claims in a reexamination proceeding, if at all?

Answer 32

You can amend, but cannot broaden claims.
MPEP 2250, rule 1.121(j), no enlargement of claim scope.
(You can broaden claims in a reissue within 2 years of issue.)

Question 33

Can a request for a reexamination be withdrawn?

Answer 33

No. “After the request for reexamination, including the entire fee for requesting reexamination, is received in the Office, no abandonment, withdrawal, or striking of the request is possible, regardless of who requests the same.”

MPEP 2210.

Question 34

Which of the following are allowable in a reexamination proceeding?

(1) continuation under rule 53(b) or 53(d)
(2) an RCE
(3) an appeal

Answer 34

Appeal only.

MPEP 2272, After Final Practice.

Question 35

Your client requested of a reexamination of a patent; which is now proceeding before the PTAB. In what cases can the client attend an oral hearing regarding the patent w/ the PTAB requested by the patent owner?

Answer 35

Client can attend, unless patent owner says no. MPEP 2209, 2276.

Question 36

How much time does a patent owner have to respond to an order of reexamination?

Answer 36

Not less than two months.

MPEP 2246, U.S.C. 304

Question 37

The Director denies a request for an ex parte reexamination. What can the petitioner do, and when?

Answer 37

“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.” MPEP 2248. Rule 1.515.

Question 38

What can a reexamination be based on? What can a request for re-exam not be based on?

Answer 38

Must be based on prior patents and publications. Rule 510(a). MPEP 2214 - Content of request.
Cannot be based on alleged insufficient disclosure.

Question 39

What types of documents are allowed in a Citation of Prior Art?

Answer 39

• patents
• printed publications
• written statements of the patent owner filed in a proceeding before a Federal Court or the USPTO by the patent owner in which the patent owner took a position on the scope of any claim of the patent.

MPEP 2205, U.S.C. 301

Question 40

What applications can qualify for an interference proceeding?

Answer 40

One claim needs to be present in each application that has full support in a priority document (foreign or domestic) that has a filing date before March 16, 2013.(pre-AIA). MPEP 2301.04

Question 41

When are maintenance fees due?

And what about a reissue patent?

Answer 41

3.5 years, 7.5 years, and 11.5 years after grant date

Payment accepted between 3-3.5, 7-7.5, and 11-11.5 years.
MPEP 2501, 2504.

Reissue: same schedule as original utility.

Question 42

In what cases can you revive a patent that has lapsed because maintenance fee was not paid?

Answer 42

When failure to pay the fee was unintentional.

MPEP 2590, Rule 1.378.

Question 43

How are intervening rights related to maintenance fees?

Answer 43

During the lapsed period (the intervening period), there’s no patent protection. The patent shall not “abridge or affect the right” of anyone “who made, purchases, or used anything protected by the patent while the patent had lapsed.” MPEP 2591.

Question 44

Who can request a supplemental examination? Who can request an ex parte reexamination?

Answer 44

ex parte examination: anyone, including the owner.

supplemental examination: Only the patent owner.

Question 45

What are allowable references in

(a) an ex parte examination, and
(b) in a supplemental examination?

Answer 45

ex parte examination: patents and printed publication - MPEP 2202.
supplemental examination: anything the owner believes the be relevant to the patent - MPEP 2801.

Question 46

How many documents can a patent owner submit in a supplemental rexamination?

Answer 46

No more than 12. Rule 605, MPEP 2809.

Question 47

At the conclusion of a supplemental examination, what happens if the PTO concludes that a substantial new question of patentability is raised?

Answer 47

It orders an ex parte re-exam. It’s the same as standard ex parte re-exam, except that it’s not limited to patents and printed publications. And patent owner cannot file a statement. MPEP 2818.01.

Question 48

Consider a CIP application in which some claim group A have a priority date of the parent application. Claim group B have a priority date of the filing of the CIP. When does the patent term begin for each group?

Answer 48

Same for both: term ends 20 years from filing date of earliest non-provisional PCT or U.S. application for which a benefit is claimed.

“Foreign priority … is not considered in determining the term of a patent.” MPEP 2701 III

“Domestic priority under 35 U.S.C. 119(e) to one or more U.S. provisional applications is not considered in the calculation of the twenty-year term.” MPEP 2701 IV

Question 49

Of the pre-grant and post-grant challenges, which are not limited to printed publications and patents?

Answer 49

Protests only Rule 1.291. MPEP 1902

Supplemental Examination

Question 50

What is the fee for ex parte reexamination?

Answer 50

There is none!

Question 51

Can you change your mind about a reexamination request that you filed?

Answer 51

No. After the request for reexamination, including the entire fee for requesting reexamination, is received in the Office, no abandonment, withdrawal, striking of the request is possible, regardless of who requests the same.” MPEP 2210

Question 52

What is the role of an owner’s statement in a reexamination proceding?

Answer 52

“Any statement filed must clearly point out why the patent claims are believed to be patentable, considering the cited prior art patents or printed publications alone or in any reasonable combination.”

owner need not submit a statement, but can declare that no statement will be filed, which speeds up process.
MPEP 2249

Question 53

What happens to a ex parte reexamination of patent that becomes involved in litigation?

Answer 53

“If a patent in the process of ex parte reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the reexamination.”

MPEP 2286

Question 54

A patent is under reexamination, and you learn of new prior art that might be relevant, e.g., via examination of a corresponding foreign application. What should you do?

Answer 54

File an IDS citing the reference. Same as in other examinations. Rule 1.555.

Question 55

Name four reasons for filing a reissue application.

Answer 55

1. claims either too narrow or too broad.
2. inaccuracies in disclosure
3. missing or incorrect foreign priority claim
4. missing or incorrect priority/reference to prior co-pending applications.
   MPEP 1402.

Question 56

Can cancelled matter in a U.S. patent be prior art under AIA 102?

Answer 56

Yes, as a published document under 102(a)(1).

Not as 102(a)(2). MPEP 2127.

Question 57

For post-issuance examination,

(a) when is examination limited to only patents and publications?
(b) when is examiner free to look at any 102 art?

Answer 57

(a) Just ex parte reexamination

(b) reissue and supplemental examination

Question 58

How long can an patent be abandoned and still be revived?

Answer 58

No time limit. (Unless the term is up?) Rule 1.137. USC 41(c)(1)

Question 59

What cannot be expunged from an application?

Answer 59

Information forming part of the original disclosure (i.e., written specification including the claims, drawings, and any preliminary amendment present on the filing date of the application) will not be expunged from the application file.
Rule 1.59.

Question 60

When can you submit a request for supplemental examination?

Answer 60

Any time during the enforceability of the patent, which extends six years after expiration.
MPEP 2808, Rule 1.601.

Question 61

How do you request an interview during

(a) reexamination
(b) supplemental examination hearing?

Answer 61

(a) Just like normal prosecution. MPEP 2281

(b) No interviews during supplemental examination.can’t. MPEP 2814. … No amendments, either! 2813.01.

Question 62

When can you file a reissue to add new claims?

When can you file a reissue to broaden claims?

Answer 62

add new: any time, but no recapture.
MPE 1412

broaden: Within two years and if you haven’t given up those claims, e.g., via a restriction or amendment.
MPEP 1412.03

Question 63

In a derivation proceeding between a pre-AIA examined application and a post-AIA examined applicant, which rules apply for determining who the proper inventor is?

Answer 63

Pre-AIA.

Question 64

Derivations: What is the time period to initiate a derivation proceeding?

Answer 64

The petitioner must initiates the derivation within one year from the first publication of the respondent’s claim to the allegedly derived invention.
U.S.C. 135(a)(2). Rule 42.403.

Question 65

Derivations: How can the the respondent, who allegedly derived the claimed invention from a petition, make his/her side heard?

Answer 65

Submit a rebuttal to the PTAB. U.S.C. 135(b).

Question 66

Derivations: In a derivation, can both parties be owners of respective patents on the disputed claims?

Answer 66

No. Only a patent applicant can petition for a derivation.

“Petitioner means a patent applicant who petitions for a determination that another party named in an earlier-filed patent application allegedly derived a claimed invention from an inventor named in the petitioner’s application and filed the earlier application without authorization.”
Rule 42.401.

Question 67

Derivations: What must petitioner provide when filing a petition for a derivation proceeding?

Answer 67

Evidence, in an affidavit, that respondent derived claimed invention from petitioner w/o authorization. This implies the the petitioner conceived of the invention first.
U.S.C. 135(a)(2). Rule 42.405(c)

Question 68

Derivations: Who has the burden of proof in the derivation proceeding?

Answer 68

The petitioner. U.S.C. 135(a)

Question 69

Derivations:
What is required to get a filing date for the petition?
When is the deadline?

Answer 69

What: The petition.
A fee per rule 42.15

when: within a year of publication. 42.403.

Question 70

Derivations: What should you do if your petition for a derivation is incomplete?

Answer 70

Remedy the deficiency within a month or before statutory deadline (one year from publication of respondent’s claim), whichever is first.

CFR 42.407(b)

Question 71

Derivations: How can parties to a derivation proceeding terminate the proceeding?

Answer 71

Settlement (U.S.C. 135(e)), or arbitration (U.S.C. 135(f))

Question 72

Derivations: When parties of a derivation proceeding agree to settle, what is the PTAB’s role?

Answer 72

“the Board is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Office practice.” Rule 42. 74

Question 73

Can a party of a derivation proceeding have the settlement treated as business confidential? And where is this stated?

Answer 73

Yes. U.S.C. 135. and Rule 42.74(c)

This seems like a random question.

Question 74

How* does one file a protest?
How* does one file a third-party preissuance submission?

• How in terms of getting information to the Patent Office

Answer 74

protest: By mail! Not electronically, not even via EFS. MPEP 1901.03
third-party preissuance submission: mail or via EFS-Web. MPEP 1134.01 IV.D

Question 75

All pre- and post-grant challenges require serving the patent applicant/owner except for ________.

Answer 75

Third-party preissuance submission. 1134.01

Post-grant review does require serving patent owner: Rule 42.205. Service of Petition.

Question 76

Of all the pre-grant and post-grant challenges to an application or patent, which are limited to § 102 and § 103 ground of rejection?

Answer 76

Ex Parte Reexam
IPR
(and obviously Citation of Prior Art)

Question 77

Derivation Proceeding: Can either party appeal the outcome?

Answer 77

No. 35 U.S.C. 135 (a)(4)

Question 78

1. For which post-grant proceedings is the threshold standard a substantial new question of patentability (SNQ) ?
2. If an SNQ is found, what happens?

Answer 78

1. Supplemental Examination and Ex Parte Reexam
2. For supplemental examination, an ex parte reexam is ordered, but not limited to patents and publications. 2818.01

For Ex Parte Reexam, the reexam proceeds if SNQ of patentability is found. MPEP 2246

Question 79

What are the deadlines for post-grant challenges to a patent?

Answer 79

(1) Supplemental, citation of prior art, and ex parte reexam: term plus 6 years.
(2) Post-Grant Review up to 9 months after grant
(3) IPR: 9 months after grant or after PGR is done)

Question 80

Which post-grant proceedings has a higher threshold standard for initiating the proceeding, PGR or IPR?

The thresholds are:

(a) a “reasonable likelihood that the petitioner would prevail” with respect to at least one challenged claim?
(b) “more likely than not” that at least one of the claims challenged in the petition is unpatentable

Answer 80

PGR has a higher threshold – “more likely than not” that a claim is found unpatentable. For IPR, it’s just a “reasonable likelihood.”

PGR is tougher to get started, but the review is also more rigorous (anything but best mode) than IPR (just 102/103).

Question 81

How to you file a third-party pre-issuance submission for a reissue application?

Answer 81

You can’t. Issuance has occurred!
Go to MPEP 1134 and search for “reissue.”

Protest is allowed - MPEP 1441.01.

Question 82

Patent Term Extension: What does the “clock” start?

Answer 82

14/4/4/4
1. greater than 14 months from initial filing to allowance, first OA, restriction requirement, or examiner’s request for information.
2. greater than 4 months for PTO to reply to an amendment or appeal, after a decision by PTAB or CAFC, or print a patent after issue fee is paid.
MPEP 2730. Rule 1.703.

Question 83

What kind of patents do not require maintenance fees?

Answer 83

Plant and design patents. MPEP 2504., rule 1.362.

Question 84

Which post-grant proceedings can be filed anonymously?

Which post-grant proceedings require identifying all real parties in interest?

Answer 84

anon: Citation of Prior Art, Ex Parte Reexamination (MPEP 1134.01)

real party in interest: PGR, IPR, and Covered Business Methods

Question 85

Which post-grant proceeding lacks estoppel provisions?

Answer 85

Ex Parte Reexam. The rest do: Supplemental Examination, IPR, PGR, and CBM. For IPR, PGR, CBM, the real party in interest is estopped from challenging patent in USPTO, ITC, or district court on any ground the RPI raised or could have raised in the IPR/PGR.

Question 86

For application to be allowed, what status of claim is not appropriate?

Answer 86

No claim can be withdrawn. They must be cancelled or rejoined.

MPEP 821. Treatment of Claims Held To Be Drawn to Nonelected Inventions

Question 87

Which post-grant proceedings apply only to post-AIA patents?

Answer 87

Just Post-Grant Review (PGR)

Question 88

Why would a patent owner seek supplemental examination instead of initiating an Ex Parte Rexam?

Answer 88

(a) supplemental reexam is broader: Anything vs. 102/103
(b) supplemental reexam has estoppel provisions, so it limits has patent can be held unenforceable in a court proceding. Ex parte reexam has no estoppel.

Question 89

If a petitioner can provide expert testimony when petitioning for a PGR, IPR, CBM, what rights does the patent owner have?

Answer 89

The “patent owner is allowed to submit new testimonial evidence with its preliminary response.” There’s “no negative inference” from whether or not patent owner includes or does not include new testimonial evidence in the preliminary response.

37 CFR part 42. Amendments to Rules of Practice at PTAB.

Question 90

What patents can be challenged via an post grant review and during which time can you request the reexam?

Answer 90

(1) The patent has an effective filing date on or after March 16, 2013.
(2) You file the request within nine months of issue.

Question 91

When can you file a petition for inter partes review?

Answer 91

For patents examined under pre-AIA: grant date or after.

For post-AIA patents: 9 months after grant date, or after termination of post-grant review.

Question 92

Can the PTAB’s decision not to initiate an PGR or IPR be appealed? If so, to what body?

Can the PTAB’s final decision on an PGR or IPR be appealed? If so, to what body?

Answer 92

Decision not to initiate cannot be appealed. 35 USC 314, 324.

PTAB’s final decision on PGR or IGR can be appealed to Federal Circuit Court. 35 USC 319, 329.

Question 93

Failure to respond to an Official Action in reexamination will result in __________________.

Answer 93

“abandonment is not possible in are examination proceeding, a reexamination certificate will be issued and published at the conclusion of the proceeding…. The reexamination certificate will set forth the results of the proceeding and the content of the patent following the reexamination proceeding.”

MPEP 2288. Issuance of Ex Parte Reexamination Certificate

Question 94

What constitutes a broadened claim in reissue and reexamination?

Answer 94

If the claim expands the scope of potential infringing parties, then it is a broadening claim. “Where the original patent claims only the process, and the reissue application newly adds product claims, the scope of the claims has been broadened”
MPEP 1412.03.

Question 95

For which type of patent/application challenges does the PTO want “a CONCISE description of the asserted relevance of each item identified in the document list.”

Answer 95

Third-party pre-issuance submission.

1134.01.

Question 96

For a granted national phase application having entered the national stage from a PCT filing, when is the starting date for the term?

Answer 96

(a) If PCT application claims priority to a U.S. non-provisional application, then the starting date is the filing date of the U.S. NP application.
(b) If no such priority, the international filing date.

U.S.C. 154(a)(2), 154(a)(3)

Question 97

Which post-grant patent challenge procedure is not stayed where the same issues are before a U.S. District Court?

Answer 97

Ex Parte Reexam.

Question 98

For a reissue application, if the parent claims priority to a foreign application, does the reissue also have to claim priority?

Answer 98

Yes.
MPEP 1417.
Same with CON, and DIV applications.

Question 99

How do you rectify a non-compliant third-party submission?

Answer 99

Correct it by the due date. No extensions.
“The statutory time period for making a third-party
submission will not be tolled by a non-compliant
submission. Accordingly, making a third-party
submission at the earliest opportunity increases the
likelihood there will be sufficient time to make a
resubmission should the initial submission be found
non-compliant”
MPEP 1134.01

Question 100

How does a patent owner’s statements filed with a Federal Court or USPTO relate to a ex parte reexamination, IPR, and PGR?

Answer 100

The examiner will not use patent owner’s statements to determine whether to order reexamination, IPR, or PGR. But if the proceeding is ordered, the statements can be used if they are part of the file.

USC 301(d)
"written statement submitted pursuant to subsection (a)(2) ... shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304 [reexam], 314 [IPR], or 324 [PGR]"

Question 101

Which post-grant proceeding can address potential inequitable conduct or material fraud by the patent owner?

Answer 101

Supplemental examination.

MPEP 2803.

Question 102

What is the maximum number of items of information may be included in request for supplemental examination?

Answer 102

Twelve (12).

MPEP 1809, rule 1.605

Question 103

Can you amend claims during a supplemental reexamination proceding?

Answer 103

No. Applicant would need to wait for ex parte reexam ( 1st OA on merits) should one arise from the supplemental “exam.”
MPEP 2813.01.

Can amend claims in Ex Parte Reexam, PGR, IPR (one chance),
Rules 42.121, 42.221.

Question 104

During a supplemental examination, a substantial new question of patentability is raised. What happens next?

Answer 104

The UPSTO orders an ex parte reexam. But it’s different because the grounds of filing are not limited to patents and printed publications.

2258 Scope of Ex Parte Reexamination, mentions U.S.C. 257, Supp. Exam.

Question 105

For post-grant review what is:

(a) the threshold standard for initiating and
(b) grounds for filing the petition? (Basis of rejection)

• Or a CBM post-grant proceeding

Answer 105

(a) More likely than not.

(b) 101, 102, 103, 112 - enablement, 112 - written description,
Not 112, best mode.

Rule 42.204

Question 106

Who cannot challenge an issued patent via inter partes review?

Answer 106

(a) Petitioner who has challenged the same claims before, e.g., in a PGR.
(b) Petitioner was served with an infringement complaint more than one year before filing the IPR.
(c) The petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.

Rule 42.101

Question 107

What is the rule against recapture, that is not related to narrowing claims to get around a 102/103 rejection?

Answer 107

You can’t file a reissue applications to recapture claims that you could have filed in a DIV or CON to pursue claims of non-elected species.

1412.01

“Claims to separate inventions/embodiments/species that were not claimed in the original application prosecution (i.e., “overlooked aspects”) are not a part of a recapture analysis” MPEP 1412.02.

Question 108

Can a patent owner dedicate or disclaim part of the patent term to the public? If so, how much?

Answer 108

All of it, or any terminal part of the term, e.g., the final 3 years.
Rule 1.321, statutory disclaimers

Question 109

Late Payment of Issue Fee: What happens if you miss the three-month deadline for filing an issue fee?

Answer 109

Revival: You can revive the patent if missing the date was unintentional.
* submit the reply required to the outstanding Office action or notice,
* pay a fee
* terminal disclaimer (for designs)
* state that delay was unintentional
Rule 1.137(a).

Question 110

What post-grant proceedings can be merged?

Answer 110

(a) two copending ex parte reexamination proceedings - MPEP 2283
(b) ex parte reexamination proceeding and a reissue - MPEP 2285
(c) ex parte reexamination proceeding and an inter partes reexamination (ended in 2012)

Question 111

A non-enabling reference may qualify as prior art for the purpose of what kind of rejection?

Answer 111

“obviousness under 35 U.S.C. 103.”

Symbol Techs Inv. v. Opticon. MPEP 2121.01.

Question 112

What qualifies as prior art for an ex parte reexamination?

What is the exception to this?

Answer 112

Patents and printed publications. No sales, public use, insufficient disclosure.

Exception: When a supplemental reexamination matures into an ex parte reexam, the reexamination can consider 101 and 112 issues. MPEP 2201.

Question 113

Can the loser in an derivation in the PTO later claim to be the first to invent in a Federal District Court?

Answer 113

Yes. U.S.C. 146.