How detailed should the statement applying prior art be in an inter partes reexamination request?

The statement applying prior art in an inter partes reexamination request should be sufficiently detailed to explain how each item of prior art applies to every claim for which reexamination is requested. The MPEP 2617 states:

“The particularity should be equivalent to that usually present in a prior art rejection statement in an Office action on a patent application or that present in an international preliminary examination report.”

This means the statement should:

• Clearly identify which portions of the cited prior art are relevant to each claim element
• Explain how the prior art teaches or suggests each claim limitation
• Provide a rationale for why the claims are unpatentable in view of the cited prior art

The level of detail should be sufficient for the examiner to understand the requester’s position without having to conduct additional research or make assumptions about the applicability of the prior art.

To learn more:

• inter partes reexamination
• prior art statement
• patent claims
• USPTO
• statement detail