How are third-party requester replies considered in reexamination?
In a reexamination proceeding, the examiner must consider replies submitted by third-party requesters. MPEP 2253 provides guidance on this matter:
“As to consideration of a reply by a third party requester, the examiner will be guided by 37 CFR 1.535.“
This means that the examiner will follow the rules set forth in 37 CFR 1.535 when evaluating a third-party requester’s reply. The MPEP further states:
“If the requester’s reply to the patent owner’s statement raises issues not previously presented, such issues will be treated by the examiner in the Office action if they are within the scope of reexamination.“
However, if an issue raised by the third-party requester is outside the scope of reexamination, it will be handled according to 37 CFR 1.552(c), which outlines how to deal with matters not subject to reexamination.
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