What happens if a submission in an ex parte reexamination is not limited to bare notice of prior or concurrent proceedings?

The USPTO has strict guidelines for submissions in ex parte reexamination proceedings. If a submission goes beyond providing bare notice of prior or concurrent proceedings, it may be rejected. The MPEP states:

“Where a submission is not limited to bare notice of the prior or concurrent proceedings (in which a patent undergoing reexamination is or was involved), the submission will be returned, expunged or discarded by the Office.”

This means that:

• Submissions must be limited to notifications only
• Additional arguments or information are not allowed
• Even highlighting text (e.g., underlining, using fluorescent markers) is considered to go beyond bare notice

If a submission is rejected, the party may have the opportunity to limit the content to what is deemed relevant and resubmit the papers. It’s crucial for parties to adhere to these guidelines to ensure their submissions are accepted and considered in the reexamination proceeding.

To learn more:

• ex parte reexamination
• USPTO submissions
• prior proceedings
• concurrent proceedings
• submission guidelines