The Office will not approve requests from practitioners to withdraw from applications where the requesting practitioner is acting, or has acted, in a representative capacity. The notice of withdrawal is effective when approved rather than when received.

• Review Ed9 10.2019: 402.06

In a sense, paying the issue fee is the final hurdle for an applicant. After receiving the coveted Notice of Allowance, the applicant must pay the fee required for the application to issue. Once this fee is paid, the applicant will receive letters stating he or she has been granted a bona fide patent.

This section provides further details for the issue fee including the failure to pay the issue fee including examples when the issue fee will be late and when it will not be late. In addition, any amendment filed pursuant to 37 C.F.R. 1.312 must be filed before or with the payment of the issue fee.

• Review Ed9 10.2019: 1306

This section provides coverage on the meaning of a broadened reissue claim. Essentially, a broadened reissue claim is a claim which enlarges the scope of the claims of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent. It also covers when a broadened claim can be presented, the oath/declaration requirements, and when a claim will be considered a broadened reissue claim.

• Review Ed9 10.2019: 1412.03

Anyone, including corporations and government entities, may file a request for ex parte reexamination of a patent.

• Review Ed9 10.2019: 2212

The reexamination proceeding provides a complete reexamination of the patent claims on the basis of prior art patents and printed publications. This section covers the scope of the ex parte reexamination including prior art patents or printed publications, and double patenting as well as compliance with 35 U.S.C. 112 where new claims are presented or where any part of the disclosure is amended. In addition, this section discusses how claims in the proceeding must not enlarge the scope of the claims of the patent. Other matters are also discussed.

• Review Ed9 10.2019: 2258

The provisions of 37 C.F.R. 1.136(a) and (b) are not applicable to reexamination proceedings under any circumstances.

A request for an extension must be filed on or before the day on which action by the patent owner is due and it must set forth sufficient reasons for the extension. Further details on extensions of times in ex parte reexamination proceedings are covered in this section.

• Review Ed9 10.2019: 2265

This section covers responses by a patent owner in a reexamination proceeding. Responses may be filed using certificate of mail and certificate of transmission procedures as well as 'Express Mail'. The patent owner will normally be given a period of 2 months to respond to the Office action. Additional details on supplemental responses and responses in general are provided.

• Review Ed9 10.2019: 2266

The prosecution of an ex parte reexamination proceeding is terminated if the patent owner fails to file a timely and appropriate response to any Office action or any written statement of an interview. This section covers petitions for entry of late papers for the revival of a reexamination proceeding. Both petitions based on unavoidable and unintentional delay are covered in addition to renewed petitions.

• Review Ed9 10.2019: 2268

This section covers the conclusion of an ex parte reexamination proceeding. Upon conclusion of the ex parte reexamination proceeding, the examiner must prepare a “Notice of Intent to Issue Ex Parte Reexamination Certificate” (NIRC). If appropriate, an examiner’s amendment will also be prepared. Where claims are found patentable, reasons must be given for each claim found patentable.

A panel Review Ed9 10.2019: conference is not to be held as to any claim that was in the case (proceeding) at the time the case was Review Ed9 10.2019:ed by the Board or a federal court.

• Review Ed9 10.2019: 2287

Since abandonment is not possible in a reexamination proceeding, a reexamination certificate will be issued and published at the conclusion of the proceeding in each patent in which a reexamination proceeding has been ordered except where the reexamination has been concluded by vacating the reexamination proceeding or by the grant of a reissue patent on the same patent in which case the reissue patent also serves as the reexamination certificate.

Further details of the issuance of the ex parte reexamination certificate are covered including the details it sets forth.

• Review Ed9 10.2019: 2288