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patents and printed publications; (2) an identification and explanation for every claim for which reexamination is requested; (3) a copy of every patent or printed publication relied upon; (4) a copy of the entire patent at issue; (5) a certification that a copy of the request for reexamination has been served on the patent owner if the requester is not the patent owner; and (6) a certification by the third-party requester that the statutory estoppel provisions of 35 U.S.C. 351(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the request for reexamination. If the
490:
The examiner rejected the claims in the patent, and the rejection had been appealed to the BPAI. The BPAI rejected the claims, and in 2006, the USPTO issued a Notice of Intent to Issue a Reexam
Certificate, which was subsequently issued in 2007 cancelling all claims of the patent. In 2008 the patent
396:
Statistics released by the USPTO for reexaminations for the period of 1981 to 2007 showed that for ex parte reexaminations, claims were changed in average 64% of the cases. In 26% of the cases, all claims are confirmed with no changes, while in 10% of the cases, all claims were invalidated. For inter
370:
reexaminations are initiated by members of the public, but once said members submit their request, they no longer actively participate in the proceedings. The correspondence is strictly between the examiner and the patent owner. The fee for filing a request for an ex parte reexamination is $ 6,000 as
299:
Requests for reexamination are often filed by third parties, who are already involved in an infringement lawsuit concerning the patent at issue. By filing for a reexamination, such parties seek to invalidate the patent while keeping legal fees low. If the judge agrees, the trial proceedings may be
418:
technology are currently undergoing a number of reexaminations because new prior art has been discovered which had not been considered by the patent office when the patent applications were first examined. Some of these reexaminations are inter partes, some of them are ex parte, some of them were
392:
747 requests for ex parte reexaminations were filed in FY2012 (corresponding to about 0.28% of the total number of patents issued that year), though roughly 90% of these requests were made by the patent owner. Some 640 requests for inter partes reexaminations were filed during FY2012, a figure that
323:
are rejected in light of the new questions raised, then the patent owner can narrow or cancel those claims. The patent owner can also submit new claims, provided they are not broader than the claims in the original patent. If the examiner makes a rejection "final", the patent owner can appeal the
422:
As of April 2006, all of the NTP claims that have been acted upon have been rejected on the basis of the substantial new questions of patentability. It is not yet known whether NTP will narrow its claims to get around the rejections, or succeed in an appeal. Blackberry agreed, on March 3, 2006, to
291:
A request for a reexamination can be filed by anyone at any time during the period of enforceability of a patent. To request a reexamination, one must submit a "request for reexamination" which includes (1) a statement pointing out each "substantial new question of patentability based on prior
339:
Once the reexamination has been concluded, a "certificate of reexamination" is issued. The certificate makes any corrections to a patent as are required under the reexamination. If all the claims in the patent are rejected, the patent gets nullified. As of
January 2, 2001, certificates of
303:
Inventors themselves also file requests for reexamination. Such requests may be filed before the inventors sue another party for infringing the patent, to make sure that the patent is valid in light of any prior art they may have discovered since the issuance of the patent.
653:"PUBPAT provides comments to USPTO on inter partes reexamination and rules governing practitioners: Argues All Patents Should be Subject to Adversarial Post Grant Review and All Patent Attorneys Should Have Continuing Education Requirements"
436:
entitled "Method of swinging on a swing" was issued in 2002 to applicant Steven Olson, the young son of a patent attorney who applied for the patent to teach his son about the patent system. This patent was filed shortly after
307:
The patent office itself may initiate "director initiated" reexaminations, for example, when there is reason to question the validity of the patent. The director, for example, ordered reexaminations of the
419:
initiated by the director. Some of the patents have had a number of reexaminations filed. These multiple reexaminations have been merged into single reexaminations, each for the patent in question.
465:" was issued in 1999 to applicants Len Kretchman and David Gesked. The patent claimed an improved crustless peanut butter and jelly sandwich, which could be mass-produced and sold in stores.
448:
The PTO director ordered a reexamination, and the claims were subsequently rejected. The patent owner elected not to appeal. A reexamination certificate was issued canceling all the claims.
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Once a reexamination is ordered, a new examiner is assigned to the case, and the patent goes through another examination similar to the examination it received the first time around. If any
506:
69:
234:
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203:
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445:; it was not, however, a business method, but rather simply a method or process patent. The patent claimed an improved method for a child to swing on a swing.
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167:
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reexaminations were initiated by members of the public, and said members of the public then participated in the proceedings. On
September 16, 2012,
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329:
198:
283:. One of the new mechanisms is a post-grant review proceeding, which will provide patent challengers expanded bases on which to attack patents.
560:
227:
208:
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472:, which then introduced the Uncrustables brand of frozen no-crust sandwiches. Smuckers invested about $ 20 million to build a factory in
74:
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partes reexaminations, claims were changed in seven of the eight cases that had been completed by the time the statistics were released.
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The process of reexamination has the potential to increase the quality of patents issued and to encourage public input in the process.
162:
79:
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54:
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eliminated these proceedings and replaced them with two new post grant proceedings (Post-Grant Review and Inter Partes Review).
356:) web site. Reexaminations are assigned serial numbers and cross referenced as child applications of originally issued patents.
378:
276:
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lawsuit against alleged infringer, Albie's Foods. Albie's Foods responded by filing a request for ex parte reexamination.
157:
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to verify that the subject matter it claims is patentable. To have a patent reexamined, an interested party must submit
384:
Duplicate requests for Inter partes reexaminations by the same requesting party are prohibited under 35 U.S.C. § 317.
296:
finds that the request indeed raises a substantial new question of patentability, the USPTO orders a reexamination.
678:
462:
248:
40:
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makes substantial changes to the U.S. patent system, including new mechanisms for challenging patents at the
806:, The J. M. Smucker Company, News Release, June 16, 2005, retrieved on www.corporate-ir.net on June 16, 2006
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95:
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64:
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The proceedings of all reexaminations are made available to the public on the USPTO's public PAIR (
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271:, in the form of patents or printed publications, that raises a "substantial new question of
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105:
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in the series C1, C2, C3, .... Before then, kind code was in the series B1, B2, B3, ....
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652:
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320:
31:
816:
US PAIR file 90/005,949, requires interactive retrieval, retrieved on
October 20, 2013
884:
838:
US PAIR file 6,004,596, requires interactive retrieval, retrieved on
October 20, 2013
732:
272:
177:
172:
511:
374:
561:"10 Things To Know About Post-Grant Review Under The America Invents Act of 2011"
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has been rising substantially every year and a fourfold increase since FY2008.
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Robert A. Saltzberg and Mehran
Arjomand, Reexaminations Increase in Popularity
696:
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The J. M. Smucker
Company Announces Fourth Quarter and Full-Year Results
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to produce the product. Its annual sales in 2005 were $ US 60 million.
260:
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Sterne, Kessler, Goldstein & Fox P.L.L.C. (September 8, 2011).
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settle its patent dispute with NTP for more than 600 million US$ .
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328:(BPAI) at the USPTO. The patent owner can file an appeal to the
641:
USPTO’s public PAIR (Patent
Application Information Retrieval)
30:
For the trial process practiced in
Australia and Canada, see
791:
697:
Inter partes reexamination prohibited at Bitlaw.com website
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lapsed due to the patent owner not paying the renewal fee.
441:
became allowable under the US patent law due to the 1998
507:
Opposition procedure before the
European Patent Office
300:
put on hold pending the outcome of the reexamination.
751:"BlackBerry maker, NTP ink $ 612 million settlement"
794:, The J.M. Smucker Co., retrieved on June 16, 2006.
626:"Kind Codes" Included on the USPTO Patent Documents
601:"37 CFR 1.510 - Request for ex parte reexamination"
721:USPTO FY2012 Performance and Accountability Report
709:USPTO FY2012 Performance and Accountability Report
659:. Public Patent Foundation. February 23, 2007
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8:
585:: CS1 maint: multiple names: authors list (
255:is a process whereby anyone—third party or
452:Crustless peanut butter and jelly sandwich
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36:
630:United States Patent and Trademark Office
326:Board of Patent Appeals and Interferences
153:United States Patent and Trademark Office
483:To enforce the patent, Smuckers filed a
363:Ex parte and inter partes reexaminations
354:Patent Application Information Retrieval
330:Court of Appeals for the Federal Circuit
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144:
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46:
39:
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876:List of recently filed reexaminations
7:
871:Manual of Patent Examining Procedure
859:Manual of Patent Examining Procedure
188:Manual of Patent Examining Procedure
864:Optional Inter Partes Reexamination
607:. LII / Legal Information Institute
80:Title 35 of the United States Code
27:Legal procedure related to patents
25:
55:American Inventors Protection Act
281:U.S. Patent and Trademark Office
379:Leahy-Smith America Invents Act
277:Leahy-Smith America Invents Act
75:Leahy–Smith America Invents Act
427:Method for swinging on a swing
1:
749:Kelley, Rob (March 3, 2006).
158:Patent Trial and Appeal Board
468:The patent was licensed to
907:
695:35 U.S.C. § 317, found at
316:mobile e-mail technology.
29:
699:. Accessed July 3, 2008.
567:. The National Law Review
463:Sealed crustless sandwich
891:United States patent law
249:United States patent law
209:List of patent law cases
41:United States patent law
792:Uncrustables sandwiches
501:Interference proceeding
439:business method patents
827:USPTO patent full text
685:. USPTO. 8 March 2023.
401:Notable reexaminations
312:patents which covered
96:Article of manufacture
88:Types of patent claims
737:Morrison and Foerster
458:U.S. patent 6,004,596
443:State Street decision
433:U.S. patent 6,368,227
371:of January 16, 2018.
340:reexamination have a
101:Composition of matter
65:Invention Secrecy Act
679:"USPTO fee schedule"
565:www.natlawreview.com
605:www.law.cornell.edu
485:patent infringement
127:Inter partes review
711:, Tables 14A and 6
259:—can have a U.S.
199:Biological patents
503:(U.S. patent law)
414:patents covering
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16:(Redirected from
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531:"MPEP § 2209"
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512:Scire facias
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168:Infringement
145:Other topics
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866:chapter in
854:chapter in
723:, Table 14B
628:, from the
474:Scottsville
406:NTP patents
47:Legislation
611:9 November
544:9 November
518:References
461:entitled "
416:BlackBerry
388:Statistics
314:BlackBerry
163:Exhaustion
119:Procedures
18:Reexamines
785:2 October
663:2 October
342:kind code
310:NTP, Inc.
269:prior art
885:Category
760:9 August
581:cite web
495:See also
478:Kentucky
470:Smuckers
368:Ex parte
275:". The
257:inventor
287:Process
194:History
106:Machine
321:claims
261:patent
190:(MPEP)
178:Racism
173:Misuse
111:Method
868:USPTO
856:USPTO
539:USPTO
294:USPTO
787:2010
762:2017
665:2010
613:2018
587:link
573:2012
546:2018
410:The
251:, a
412:NTP
247:In
887::
778:.
753:.
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681:.
655:.
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579:{{
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