M.P.E.P. 2200 Citation of Prior Art and Re-Examination of Patents Flashcards

You may prefer our related Brainscape-certified flashcards:
1
Q

Two topics covered

A
  1. Citation of Prior Art

1. Re-Examination

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
2
Q

Citation of Prior Art

A

Available to anyone.

May submit prior art in the from of: 
1. Printed Patents
2. Publications
OR
3. Patent Owner Statements
  • *Puts people on notice of what is out there.
  • *Free filing.
How well did you know this?
1
Not at all
2
3
4
5
Perfectly
3
Q

What must patent owner statements identify?

A
  1. The forum and proceeding in which the patent owner filed each statement; (list)
  2. The specific papers and portions of the papers submitted that contain the statement;
    AND
  3. How each statement submitted is a statement in which the patent owner took a position on the scope of any claim in the patent.
    • in federal court or USPTO
    • Paragraph length

Optionally:
4. Information regarding the status of the proceeding
AND
5. The relationship of the proceeding to the patent.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
4
Q

Is service required of the submission from a third party?

A

Yes, and it must include a certification that it has been served in its entirety upon the patent owner.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
5
Q

Re-Examination

A

A process by which the validity of an issued US patent is reviewed by the Patent Office upon limited grounds.

Anyone in the world can request for re-examination.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
6
Q

What must a Re-examination Request Contain?

A
  1. A statement pointing out each substantial new question of patentability;
  2. Identification of every claim for which reexamination is sought, and a detailed explanation applying the art to the claims;
  3. A copy of every patent or publication relied upon;
  4. A copy of the specification and claims with two columns per page on one side only;
    AND
  5. A certificate that the patent owner has been served if filed by someone other than the patent owner.
How well did you know this?
1
Not at all
2
3
4
5
Perfectly
7
Q

What happens to the third party after requesting a re-exam?

A

They are done.

But they can attend and watch UNLESS owner/inventor requests for it to be closed.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
8
Q

Substantial New Questions

A

Different prior art not looked at by the examiner.

Can be based upon any patent or printed publications qualifying as prior art.

Requester can petition a rejection of this threshold rejection.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
9
Q

Ex Parte Prosecution

A

The reexamination goes into ex parte prosecution between the examiner and patent owner.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
10
Q

Testable Points

A
  1. While reexamination is public, a third party who initiates reexamination still cannot participate unless it is an inter partes re-exam.
  2. Automatice extensions of time are not available in reexaminations ONLY extensions for cause under 1.550(c) and petition fee.
  3. A reexamination is not an application, so no continuations are permitted.
  4. A reexamination cannot be withdrawn or cancelled after filing;
  5. New claims can be added, but not broader claims (that is re-issue before two years)
  6. A final rejection of the examiner can be appealed like a normal application by the patent owner, but not by a third party requestor.
  7. A re-exam can be revived if delay is unintentional;
  8. Appeals from PTO decisions can only go to the Court of Appeals for the Federal Circuit (CAFC)
  9. Intervening Rights exist as the do in Re-issue.
    • fixed claim that now you are covering a third party.
    • Opportunity to pay reasonable royalty.
How well did you know this?
1
Not at all
2
3
4
5
Perfectly
11
Q

Inter Partes Reexamination

A

Discontinued in December 2012.

Almost certainly wrong answer on the exam.

Reasonable likelihood of success is the threshold

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
12
Q

What is the response period for reexam final rejection?

A

Same, three for free.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
13
Q

If the examiner issues a decision denying the request for reexamination, what can a requester do?

A

File a petition to the Commissioner within one month of the mailing date of the decision.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly