What happens if the statement applying prior art is insufficient in an inter partes reexamination request?
If the statement applying prior art in an inter partes reexamination request is insufficient, the request may be denied. The MPEP 2617 explains:
“If the required statement applying the prior art is not included in the request, the request will be denied.”
An insufficient statement could include:
- Failing to address all claims for which reexamination is requested
- Not providing enough detail to explain how the prior art applies to each claim element
- Including arguments about non-prior art issues
It’s crucial for requesters to ensure their statement is complete and focused solely on applying the cited prior art to the claims in question to avoid having their request denied.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2617 - Statement In The Request Applying Prior Art,
Patent Law,
Patent Procedure