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Author Topic: What happens in a reexam after all appeals within the USPTO are finished?  (Read 260 times)

MYK

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3rd party files reexam
Patentee goes through entire process, loses, a few buried dependent claims survive, no independents do
Patentee requests a rehearing and reconsideration, loses on both
APJ decision tells Patentee that the decision is final and the only option is judicial review.

1. If Patentee seeks judicial review, does the notice that Patentee sends to the Director go into the IFW for the reexam?  How long does Patentee have to file for that?
2. After the APJ denial for a rehearing, does the whole mess go back to the (re)Examiners to file the changes to the claims? Is the Patentee involved in that process, or do the Examiners just do a copy-and-paste job on the surviving claims to make them conform to the independent/dependent format?  Is there an approximate timeframe?
3. If Patentee seeks judicial review, does the court case remain ex parte or can the 3rd party participate? Can the 3rd party be required to participate?
« Last Edit: 07-22-18 at 11:00 pm by MYK »
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

lazyexaminer

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3rd party files reexam
Patentee goes through entire process, loses, a few buried dependent claims survive, no independents do
Patentee requests a rehearing and reconsideration, loses on both
APJ decision tells Patentee that the decision is final and the only option is judicial review.

1. If Patentee seeks judicial review, does the notice that Patentee sends to the Director go into the IFW for the reexam?  How long does Patentee have to file for that?
2. After the APJ denial for a rehearing, does the whole mess go back to the (re)Examiners to file the changes to the claims? Is the Patentee involved in that process, or do the Examiners just do a copy-and-paste job on the surviving claims to make them conform to the independent/dependent format?  Is there an approximate timeframe?
3. If Patentee seeks judicial review, does the court case remain ex parte or can the 3rd party participate? Can the 3rd party be required to participate?

1. The Notice of Appeal is available in IFW in my experience, also any court decision that ultimately issues, but no papers from the court such as motions or briefs. The status of the case is also changed to "involved in court proceedings" or something like that. The time to appeal is the same as in applications, I believe nowadays 63 days.

2. Once the appeal process is over, either at the Board or the CAFC if appealed further, it goes back to the examiner to issue a notice of intent to issue reexam certificate, which is basically the end of the reexam. The examiner will cancel any claims that were rejected and those rejections affirmed. Patent owner has no further input. Dependent claims might not be rewritten, it depends, see MPEP 2260.01 and 2278. Time frame varies by examiner but it is usually placed on their docket fairly soon after the time expires and they are typically done quickly as the Office doesn't want them to sit, and anyway they are easy.

3. The 3rd party has no involvement in ex parte reexams after the first action, except that they are cc'd on all correspondence. In inter partes reexams (there are a few left) the 3rd party can appeal or be involved in a patent owner's appeal. They are not compelled to participate.
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I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.

MYK

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Much thanks!  I doubt he'll bother to go to court since that would actually cost him money, but it's been kinda sad watching the guy flail around so badly.  Oh well, got my feet wet, flawless victory!
Logged
"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.
 



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