justicedao/patent-legal-corpus huggingface dataset:
37 CFR 1.945 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Response to Office action by patent owner in inter partes reexamination.

§ 1.945 Response to Office action by patent owner in inter partes reexamination. (a) The patent owner will be given at least thirty days to file a response to any Office action on the merits of the inter partes reexamination. (b) Any supplemental response to the Office action will be entered only where the supplemental response is accompanied by a showing of sufficient cause why the supplemental response should be entered. The showing of sufficient cause must include: (1) An explanation of how the requirements of § 1.111(a)(2)(i) are satisfied; (2) An explanation of why the supplemental response was not presented together with the original response to the Office action; and (3) A compelling reason to enter the supplemental response. [72 FR 18906, Apr. 16, 2007]
37 CFR 1.947 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Comments by third party requester to patent owner's response in inter partes reexamination.

§ 1.947 Comments by third party requester to patent owner's response in inter partes reexamination. Each time the patent owner files a response to an Office action on the merits pursuant to § 1.945, a third party requester may once file written comments within a period of 30 days from the date of service of the patent owner's response. These comments shall be limited to issues raised by the Office action or the patent owner's response. The time for submitting comments by the third party requester may not be extended. For the purpose of filing the written comments by the third party requester, the comments will be considered as having been received in the Office as of the date of deposit specified in the certificate under § 1.8.
37 CFR 1.948 — [Reserved] Rules of Practice in Patent Cases
Current through: 2024-07-01

Limitations on submission of prior art by third party requester following the order for inter partes reexamination.

§ 1.948 Limitations on submission of prior art by third party requester following the order for inter partes reexamination. (a) After the inter partes reexamination order, the third party requester may only cite additional prior art as defined under § 1.501 if it is filed as part of a comments submission under § 1.947 or § 1.951(b) and is limited to prior art: (1) which is necessary to rebut a finding of fact by the examiner; (2) which is necessary to rebut a response of the patent owner; or (3) which for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination proceeding. Prior art submitted under paragraph (a)(3) of this section must be accompanied by a statement as to when the prior art first became known or available to the third party requester and must include a discussion of the pertinency of each reference to the patentability of at least one claim. (b) [Reserved]
37 CFR 1.949 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Examiner's Office action closing prosecution in inter partes reexamination.

§ 1.949 Examiner's Office action closing prosecution in inter partes reexamination. Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution. The Office action shall set forth all rejections and determinations not to make a proposed rejection, and the grounds therefor. An Office action will not usually close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.
37 CFR 1.94 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Return of models, exhibits or specimens.

§ 1.94 Return of models, exhibits or specimens. (a) Models, exhibits, or specimens may be returned to the applicant if no longer necessary for the conduct of business before the Office. When applicant is notified that a model, exhibit, or specimen is no longer necessary for the conduct of business before the Office and will be returned, applicant must arrange for the return of the model, exhibit, or specimen at the applicant's expense. The Office will dispose of perishables without notice to applicant unless applicant notifies the Office upon submission of the model, exhibit or specimen that a return is desired and makes arrangements for its return promptly upon notification by the Office that the model, exhibit or specimen is no longer necessary for the conduct of business before the Office. (b) Applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of any patent resulting from the application. The provisions of this paragraph do not apply to a model or exhibit that substantially conforms to the requirements of § 1.52 or § 1.84, where the model or exhibit has been described by photographs that substantially conform to § 1.84, or where the model, exhibit or specimen is perishable. (c) Where applicant is notified, pursuant to paragraph (a) of this section, of the need to arrange for return of a model, exhibit or specimen, applicant must arrange for the return within the period set in such notice, to avoid disposal of the model, exhibit or specimen by the Office. Extensions of time are available under § 1.136, except in the case of perishables. Failure to establish that the return of the item has been arranged for within the period set or failure to have the item removed from Office storage within a reasonable amount of time notwithstanding any arrangement for return, will permit the Office to dispose of the model, exhibit or specimen. [69 FR 56542, Sept. 21, 2004]
37 CFR 1.951 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Options after Office action closing prosecution in inter partes reexamination.

§ 1.951 Options after Office action closing prosecution in inter partes reexamination. (a) After an Office action closing prosecution in an inter partes reexamination, the patent owner may once file comments limited to the issues raised in the Office action closing prosecution. The comments can include a proposed amendment to the claims, which amendment will be subject to the criteria of § 1.116 as to whether or not it shall be admitted. The comments must be filed within the time set for response in the Office action closing prosecution. (b) When the patent owner does file comments, a third party requester may once file comments responsive to the patent owner's comments within 30 days from the date of service of patent owner's comments on the third party requester.
37 CFR 1.953 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Examiner's Right of Appeal Notice in inter partes reexamination.

§ 1.953 Examiner's Right of Appeal Notice in inter partes reexamination. (a) Upon considering the comments of the patent owner and the third party requester subsequent to the Office action closing prosecution in an inter partes reexamination, or upon expiration of the time for submitting such comments, the examiner shall issue a Right of Appeal Notice, unless the examiner reopens prosecution and issues another Office action on the merits. (b) Expedited Right of Appeal Notice: At any time after the patent owner's response to the initial Office action on the merits in an inter partes reexamination, the patent owner and all third party requesters may stipulate that the issues are appropriate for a final action, which would include a final rejection and/or a final determination favorable to patentability, and may request the issuance of a Right of Appeal Notice. The request must have the concurrence of the patent owner and all third party requesters present in the proceeding and must identify all of the appealable issues and the positions of the patent owner and all third party requesters on those issues. If the examiner determines that no other issues are present or should be raised, a Right of Appeal Notice limited to the identified issues shall be issued. (c) The Right of Appeal Notice shall be a final action, which comprises a final rejection setting forth each ground of rejection and/or final decision favorable to patentability including each determination not to make a proposed rejection, an identification of the status of each claim, and the reasons for decisions favorable to patentability and/or the grounds of rejection for each claim. No amendment can be made in response to the Right of Appeal Notice. The Right of Appeal Notice shall set a one-month time period for either party to appeal. If no notice of appeal is filed, prosecution in the inter partes reexamination proceeding will be terminated, and the Director will proceed to issue and publish a certificate under § 1.997 in accordance with the Right of Appeal Notice. [65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18906, Apr. 16, 2007]
37 CFR 1.956 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Patent owner extensions of time in inter partes reexamination.

§ 1.956 Patent owner extensions of time in inter partes reexamination. The time for taking any action by a patent owner in an inter partes reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. Any request for such extension must be accompanied by the petition fee set forth in § 1.17(g). See § 1.304(a) for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit. [69 FR 56546, Sept. 21, 2004]
37 CFR 1.957 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Failure to file a timely, appropriate or complete response or comment in inter partes reexamination.

§ 1.957 Failure to file a timely, appropriate or complete response or comment in inter partes reexamination. (a) If the third party requester files an untimely or inappropriate comment, notice of appeal or brief in an inter partes reexamination, the paper will be refused consideration. (b) If no claims are found patentable, and the patent owner fails to file a timely and appropriate response in an inter partes reexamination proceeding, the prosecution in the reexamination proceeding will be a terminated prosecution and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.997 in accordance with the last action of the Office. (c) If claims are found patentable and the patent owner fails to file a timely and appropriate response to any Office action in an inter partes reexamination proceeding, further prosecution will be limited to the claims found patentable at the time of the failure to respond, and to any claims added thereafter which do not expand the scope of the claims which were found patentable at that time. (d) When action by the patent owner is a bona fide attempt to respond and to advance the prosecution and is substantially a complete response to the Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, an opportunity to explain and supply the omission may be given. [65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18906, Apr. 16, 2007]
37 CFR 1.958 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Petition to revive inter partes reexamination prosecution terminated for lack of patent owner response.

§ 1.958 Petition to revive inter partes reexamination prosecution terminated for lack of patent owner response. If a response by the patent owner is not timely filed in the Office, a petition may be filed pursuant to § 1.137 to revive a reexamination prosecution terminated under § 1.957(b) or limited under § 1.957(c) if the delay in response was unintentional. [78 FR 62408, Oct. 21, 2013]
37 CFR 1.959 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Appeal in inter partes reexamination.

§ 1.959 Appeal in inter partes reexamination. Appeals to the Patent Trial and Appeal Board under 35 U.S.C. 134(c) are conducted according to part 41 of this title. [77 FR 46628, Aug. 6, 2012]
37 CFR 1.979 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Return of Jurisdiction from the Patent Trial and Appeal Board; termination of appeal proceedings.

§ 1.979 Return of Jurisdiction from the Patent Trial and Appeal Board; termination of appeal proceedings. (a) Jurisdiction over an inter partes reexamination proceeding passes to the examiner after a decision by the Patent Trial and Appeal Board upon transmittal of the file to the examiner, subject to each appellant's right of appeal or other review, for such further action as the condition of the inter partes reexamination proceeding may require, to carry into effect the decision of the Patent Trial and Appeal Board. (b) Upon judgment in the appeal before the Patent Trial and Appeal Board, if no further appeal has been taken (§ 1.983), the prosecution in the inter partes reexamination proceeding will be terminated and the Director will issue and publish a certificate under § 1.997 concluding the proceeding. If an appeal to the U.S. Court of Appeals for the Federal Circuit has been filed, that appeal is considered terminated when the mandate is issued by the Court. [77 FR 46628, Aug. 6, 2012]
37 CFR 1.981 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Reopening after a final decision of the Patent Trial and Appeal Board.

§ 1.981 Reopening after a final decision of the Patent Trial and Appeal Board. When a decision by the Patent Trial and Appeal Board on appeal has become final for judicial review, prosecution of the inter partes reexamination proceeding will not be reopened or reconsidered by the primary examiner except under the provisions of § 41.77 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown. [77 FR 46628, Aug. 6, 2012]
37 CFR 1.985 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Notification of prior or concurrent proceedings in inter partes reexamination.

§ 1.985 Notification of prior or concurrent proceedings in inter partes reexamination. (a) In any inter partes reexamination proceeding, the patent owner shall call the attention of the Office to any prior or concurrent proceedings in which the patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings. (b) Notwithstanding any provision of the rules, any person at any time may file a paper in an inter partes reexamination proceeding notifying the Office of a prior or concurrent proceeding in which the same patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings. Such paper must be limited to merely providing notice of the other proceeding without discussion of issues of the current inter partes reexamination proceeding. [77 FR 46629, Aug. 6, 2012]
37 CFR 1.987 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Suspension of inter partes reexamination proceeding due to litigation.

§ 1.987 Suspension of inter partes reexamination proceeding due to litigation. If a patent in the process of inter partes reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the inter partes reexamination proceeding.
37 CFR 1.989 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Merger of concurrent reexamination proceedings.

§ 1.989 Merger of concurrent reexamination proceedings. (a) If any reexamination is ordered while a prior inter partes reexamination proceeding is pending for the same patent and prosecution in the prior inter partes reexamination proceeding has not been terminated, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger is ordered, the merged examination will normally result in the issuance and publication of a single reexamination certificate under § 1.997. (b) An inter partes reexamination proceeding filed under § 1.913 which is merged with an ex parte reexamination proceeding filed under § 1.510 will result in the merged proceeding being governed by §§ 1.902 through 1.997, except that the rights of any third party requester of the ex parte reexamination shall be governed by §§ 1.510 through 1.560. [65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18907, Apr. 16, 2007]
37 CFR 1.991 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Merger of concurrent reissue application and inter partes reexamination proceeding.

§ 1.991 Merger of concurrent reissue application and inter partes reexamination proceeding. If a reissue application and an inter partes reexamination proceeding on which an order pursuant to § 1.931 has been mailed are pending concurrently on a patent, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an inter partes reexamination proceeding is ordered, the merged proceeding will be conducted in accordance with §§ 1.171 through 1.179, and the patent owner will be required to place and maintain the same claims in the reissue application and the inter partes reexamination proceeding during the pendency of the merged proceeding. In a merged proceeding the third party requester may participate to the extent provided under §§ 1.902 through 1.997 and 41.60 through 41.81, except that such participation shall be limited to issues within the scope of inter partes reexamination. The examiner's actions and any responses by the patent owner or third party requester in a merged proceeding will apply to both the reissue application and the inter partes reexamination proceeding and be physically entered into both files. Any inter partes reexamination proceeding merged with a reissue application shall be concluded by the grant of the reissued patent. [72 FR 18907, Apr. 16, 2007]
37 CFR 1.993 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Suspension of concurrent interference and inter partes reexamination proceeding.

§ 1.993 Suspension of concurrent interference and inter partes reexamination proceeding. If a patent in the process of inter partes reexamination is or becomes involved in an interference or trial before the Patent Trial and Appeal Board, the Director may suspend the inter partes reexamination, interference, or trial. The Director will not consider a request to suspend an interference or trial unless a motion under § 41.121(a)(3) of this title to suspend the interference or trial has been presented to, and denied by, an administrative patent judge and the request is filed within ten (10) days of a decision by an administrative patent judge denying the motion for suspension or such other time as the administrative patent judge may set. [77 FR 46629, Aug. 6, 2012]
37 CFR 1.995 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Third party requester's participation rights preserved in merged proceeding.

§ 1.995 Third party requester's participation rights preserved in merged proceeding. When a third party requester is involved in one or more proceedings, including an inter partes reexamination proceeding, the merger of such proceedings will be accomplished so as to preserve the third party requester's right to participate to the extent specifically provided for in these regulations. In merged proceedings involving different requesters, any paper filed by one party in the merged proceeding shall be served on all other parties of the merged proceeding.
37 CFR 1.997 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding.

§ 1.997 Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding. (a) To conclude an inter partes reexamination proceeding, the Director will issue and publish an inter partes reexamination certificate in accordance with 35 U.S.C. 316 setting forth the results of the inter partes reexamination proceeding and the content of the patent following the inter partes reexamination proceeding. (b) A certificate will be issued and published in each patent in which an inter partes reexamination proceeding has been ordered under § 1.931. Any statutory disclaimer filed by the patent owner will be made part of the certificate. (c) The certificate will be sent to the patent owner at the address as provided for in § 1.33(c). A copy of the certificate will also be sent to the third party requester of the inter partes reexamination proceeding. (d) If a certificate has been issued and published which cancels all of the claims of the patent, no further Office proceedings will be conducted with that patent or any reissue applications or any reexamination requests relating thereto. (e) If the inter partes reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.991, the reissued patent will constitute the reexamination certificate required by this section and 35 U.S.C. 316. (f) A notice of the issuance of each certificate under this section will be published in the Official Gazette. [65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18907, Apr. 16, 2007]