How is information material to patentability defined in ex parte reexamination under 35 U.S.C. 257?

In ex parte reexamination proceedings resulting from supplemental examination under 35 U.S.C. 257, the definition of information material to patentability is specific. According to MPEP 2823:

“information material to patentability will be defined by 37 CFR 1.56(b) for an ex parte reexamination proceeding resulting from a supplemental examination proceeding“

This means that the standard definition of materiality used in patent prosecution, as outlined in 37 CFR 1.56(b), applies to these reexaminations. According to this rule, information is material to patentability when:

• It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
• It refutes, or is inconsistent with, a position the applicant takes in:
• Opposing an argument of unpatentability relied on by the Office, or
• Asserting an argument of patentability

This definition ensures consistency in how material information is evaluated across different patent proceedings.

To learn more:

• ex parte reexamination
• supplemental examination
• material information
• patentability