What sources of prior art must an examiner consider during ex parte reexamination?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
During ex parte reexamination, an examiner must consider several sources of prior art, including:
- Patents and printed publications cited in the reexamination request
- Prior art cited by other reexamination requesters
- Prior art cited in the patent owner’s statement or requester’s reply
- Prior art cited by the patent owner under duty of disclosure
- Prior art discovered by the examiner during searching
- Prior art of record from earlier examination
- Prior art from 37 CFR 1.501 submissions before the reexamination order
As stated in the MPEP: Subject to the discussion provided below in this section, the examiner must also consider patents and printed publications: (A) cited by another reexamination requester under 37 CFR 1.510 or 37 CFR 1.915; (B) cited in a patent owner’s statement under 37 CFR 1.530 or a requester’s reply under 37 CFR 1.535 if they comply with 37 CFR 1.98; (C) cited by the patent owner under a duty of disclosure (37 CFR 1.555) in compliance with 37 CFR 1.98; (D) discovered by the examiner in searching; (E) of record in the patent file from earlier examination; and (F) of record in the patent file from any 37 CFR 1.501 submission prior to date of an order if it complies with 37 CFR 1.98.