How does the prior art regime affect reexamination proceedings?

The prior art regime applicable to a reexamination proceeding generally depends on the filing date of the patent application. The MPEP states:

“The prior art regime under which the application for the patent was examined (the first-inventor-to-file prior art regime, or the first-to-invent prior art regime) will generally be applied in the reexamination of the patent.”

However, there are exceptions:

• For patents resulting from applications filed before March 16, 2013, the first-to-invent regime typically applies
• For patents resulting from applications filed on or after March 16, 2013, the first-inventor-to-file regime typically applies
• Rare situations may arise where the regime changes during reexamination, such as when a benefit claim to a pre-AIA application is added

It’s important to note that the applicable prior art regime can affect the scope and interpretation of prior art in the reexamination proceeding.

To learn more:

• prior art regime
• reexamination
• first-to-invent
• first-inventor-to-file
• AIA