What should be included in a patent owner’s statement during ex parte reexamination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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. A patent owner’s statement during ex parte reexamination should address the patentability of the claims in light of the prior art cited in the request. According to MPEP 2252 , the statement may include: An explanation of why the patent claims are patentable Any proposed amendments to the claims New claims proposed to be added The MPEP further states: “Any statement filed by the patent owner must clearly point out why the subject matter as claimed is not anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any reasonable combinations.” It’s crucial for the patent owner to provide a comprehensive and well-reasoned response to the reexamination request to defend the patent’s validity. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Statement on Patent Claims Patentability Considering Prior Art MPEP 2249 Required Reply by Ex Parte Reexamination Requester Required Before Examination MPEP 2252 Patent Owner Must Include Proposed Amendments MPEP 2221 Required Patent Owner Must File Statement and Amendments After Reexamination Order MPEP 2249 Permitted Proof of Service Requirement for Ex Parte Reexamination Papers MPEP 2252 Required Filing Requirements for Patent Owner’s Statement and Requester’s Reply in Ex Parte Reexamination MPEP 2224 Examiner Must Follow Patent Owner’s Statement Guidance MPEP 2253 Patent Owner Can Propose New Claims in Reexamination MPEP 2254 Permitted Patent Owner Must Serve Requester Within 2 Months MPEP 2249 Permitted Untimely Responses Not Considered in Ex Parte Reexamination MPEP 2252 Other Related FAQs 5 FAQs Collapse What documents are considered prior to examination in ex parte reexamination? W...