Can new issues be raised in ex parte reexamination?
Can new issues be raised in ex parte reexamination?
Generally, new issues cannot be raised in ex parte reexamination unless they are based on patents or printed publications. The MPEP 2258 states:
“Issues other than those indicated in 37 CFR 1.552(c) will not be resolved in a reexamination proceeding.”
However, there are some exceptions:
- New combinations of previously cited prior art may be considered
- New issues related to subject matter added or deleted during reexamination can be addressed
- Issues of compliance with 35 U.S.C. 112 may be considered if related to claim amendments
It’s important to note that the reexamination must stay within the scope of the original patent grant and cannot introduce new matter.
To learn more:
Topics:
MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents,
MPEP 2258 - Scope Of Ex Parte Reexamination,
Patent Law,
Patent Procedure