What happens if new prior art is discovered during inter partes reexamination?

If new prior art is discovered during inter partes reexamination, the process for handling it depends on who discovers the art and when. According to MPEP 2657:

“After the request for inter partes reexamination is filed, the third party requester may cite additional prior art as provided for in 37 CFR 1.948. The third party requester may cite additional prior art only during a response period set for the purpose of responding to a patent owner’s statement or response to an Office action.”

Key points to remember:

• The third party requester can cite additional prior art under specific circumstances
• New prior art citations must be made during designated response periods
• The patent owner and examiner may also identify new prior art during the reexamination process
• All newly cited art must be considered for its relevance to the patentability of the claims under reexamination

To learn more:

• new prior art
• inter partes reexamination
• patent examination