Reissue, Reexamination, Derivations, and Appeal

Can claims be broadened in a reexamination?

No. Claims can only be broadened in a reissue

What is the time limit for broadening claims in a reissue?

2 years from the issue of the patent

Can an extension be obtained retroactively in a reexamination?

Not once you are two months or more past the original due date

What are two ways to make or perfect a claim for priority AFTER the patent has already been issued.

1. Reissue

2. Certificate of correction with a grantable petition and a fee (in some cases)

Can you file a continuation of a reissue application?

Yes

Who may access the contents of a reexamination file?

Anyone. A certified copy can be requested or they can be inspected online.

Is there a fee for filing a Citation of Prior Art?

No. Can be used in place of reexamination if client does not want to spend a lot of money

What happens in case of failure to respond to an Official Action in a reexamination.

A reexamination certificate will be issued. Reexamination cannot be abandoned. It is always seen through to the end.

What is the date after which an application must have been filed in order for a derivation to be conducted?

Derivations are available for applications filed after March 16, 2013

What is the time limit for filing a derivation?

Must be within 1 year of a patent issuing or an application publishing

What can be considered in Inter Partes Review?

Only patents and printed publications. Any additional provided information will be disregarded

Can inventorship be challenged through Inter Partes Review

No

What is the standard for challenge for an ex parte reexamination?

A Substantial New Question of patentability (SNQ)

Can inventorship be considered through ex parte reexamination?

No

What can be considered in ex parte reexamination?

Only patents and printed publications

Would an oral presentation available on the web count as a printed publication?

No

What is the eligibility date for patents to be considered for ex parte reexamination>

Way back in 1980

What is the eligibility date for patents to be considered for inter partes review?

Before, on OR after September 16, 2012.

When filing a request for Prioritized Examination, how many total claims are allowed?

No more than 30 total claims

An application that has special status under the Prioritized Examination procedure retains this special status until what occurs>

1. The mailing of a Notice of Allowance, or;

2. The mailing of a Final Office Action

What happens if the total number of claims on an application with special status under Prioritized Examination is increased to exceed 30 total claims?

Special status will be terminated and the claims will be considered on the Examiner’s regular docket

If your application is being examined under Prioritized Examination, can you request an extension for more time to respond to an Action?

No, asking for an extension automatically disqualifies the application for Prioritized Examination

What type of application is Prioritized Examination NOT available for?

Design applications, reissue applications, and provisional applications

Can you request Prioritized Examination for Plant applications filed using paper?

Yes

Can the filing fee for Prioritized Examination be deferred?

No, in fact no requirements for the request to be complete can be deferred.

What is the time limit for filing a Notice of Appeal?

6 months. An extension fee is required if the Notice is filed after 3 months.

If the examiner changed grounds of rejection but has not designated it a new ground of rejection, how. long do you have to petition to re-open prosecution?

2 months

In which chapter of the MPEP can the situations that do/don’t qualify as new grounds of rejection be found?

1200 - Appeals

What happens after a Reply Brief is filed (after a Notice of Appeal)

Jurisdiction is transferred from the examiner to the Board of Appeals