What prior art must an examiner consider during inter partes reexamination?
During inter partes reexamination, an examiner must consider various sources of prior art, including:
- Patents and printed publications cited in the reexamination request
- Prior art cited by other reexamination requesters
- Prior art submitted by the patent owner under the duty of disclosure
- Prior art discovered by the examiner during searching
- Prior art of record from earlier examination
- Prior art from 37 CFR 1.501 submissions before the reexamination order
- Prior art cited by the third party requester under specific circumstances
As stated in MPEP 2656: “Typically, the primary source of prior art will be the patents and printed publications cited in the request for inter partes reexamination.” The examiner must also consider other sources, subject to certain conditions outlined in the MPEP.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2656 - Prior Art Patents And Printed Publications Reviewed By Examiner In Reexamination,
Patent Law,
Patent Procedure