How does the certification regarding statutory estoppel affect ex parte reexamination requests?
The certification regarding statutory estoppel is a requirement for third-party requesters filing ex parte reexamination requests. As stated in the MPEP:
“37 CFR 1.510(b)(6) requires that the request contain a certification by the third party requester that the statutory estoppel provisions of inter partes review and post grant review do not bar the third party from requesting ex parte reexamination under 35 U.S.C. 302.”
This certification ensures compliance with the estoppel provisions of inter partes review (IPR) and post grant review (PGR) under 35 U.S.C. 315(e)(1) and 35 U.S.C. 325(e)(1), respectively. These provisions prevent a petitioner in an IPR or PGR, or their real party in interest or privy, from requesting ex parte reexamination on grounds they raised or reasonably could have raised in the IPR or PGR.
The certification, combined with the requester’s obligations under 37 CFR 11.18, helps ensure that parties do not circumvent statutory estoppel provisions when filing ex parte reexamination requests.
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