What is the role of the examiner in 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.

The examiner plays a crucial role in ex parte reexamination, with responsibilities including:

• Conducting a thorough search of the prior art relevant to the patent under reexamination.
• Examining the patent claims in light of the cited prior art and any newly discovered references.
• Making rejections based on patents or printed publications that raise a substantial new question of patentability.
• Considering and responding to the patent owner’s arguments and proposed amendments.
• Issuing Office actions to communicate findings and maintain a clear record of the proceedings.

The MPEP 2258 emphasizes that “the examiner should be ‘vigilant’ in searching for and considering new issues which may arise during reexamination.” This vigilance ensures a comprehensive review of the patent’s validity in light of the prior art, while staying within the scope defined by the reexamination request and any Order for reexamination.