MPEP § 2212.01 — Inquiries from Persons Other Than the Patent Owner (Annotated Rules)
§2212.01 Inquiries from Persons Other Than the Patent Owner
This page consolidates and annotates all enforceable requirements under MPEP § 2212.01, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Inquiries from Persons Other Than the Patent Owner
This section addresses Inquiries from Persons Other Than the Patent Owner. Primary authority: 37 CFR 11.804, 37 CFR 104.1, and 37 CFR 104.21. Contains: 3 guidance statements, 1 permission, and 1 other statement.
Key Rules
Quality Assurance Specialist Review
Examiners should not discuss or answer inquiries from third parties (i.e., parties who are not the patent owner) in reexamination proceedings. A party who is not the patent owner should be referred by the examiner to the Technology Center (TC) Quality Assurance Specialist (QAS) or Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) for the examiner’s art unit. The CRU SPRS or TC QAS will address any such questions. Only questions on strictly procedural matters, i.e., not directed to any specific reexamination proceeding, may be discussed by the CRU SPRS or TC QAS with that party.
Examiners should not discuss or answer inquiries from third parties (i.e., parties who are not the patent owner) in reexamination proceedings. A party who is not the patent owner should be referred by the examiner to the Technology Center (TC) Quality Assurance Specialist (QAS) or Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) for the examiner’s art unit. The CRU SPRS or TC QAS will address any such questions. Only questions on strictly procedural matters, i.e., not directed to any specific reexamination proceeding, may be discussed by the CRU SPRS or TC QAS with that party.
Examiners should not discuss or answer inquiries from third parties (i.e., parties who are not the patent owner) in reexamination proceedings. A party who is not the patent owner should be referred by the examiner to the Technology Center (TC) Quality Assurance Specialist (QAS) or Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) for the examiner’s art unit. The CRU SPRS or TC QAS will address any such questions. Only questions on strictly procedural matters, i.e., not directed to any specific reexamination proceeding, may be discussed by the CRU SPRS or TC QAS with that party.
Examiners should not discuss or answer inquiries from third parties (i.e., parties who are not the patent owner) in reexamination proceedings. A party who is not the patent owner should be referred by the examiner to the Technology Center (TC) Quality Assurance Specialist (QAS) or Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) for the examiner’s art unit. The CRU SPRS or TC QAS will address any such questions. Only questions on strictly procedural matters, i.e., not directed to any specific reexamination proceeding, may be discussed by the CRU SPRS or TC QAS with that party.
Ex Parte Reexamination
Employees of the Office, particularly patent examiners who conducted a concluded reexamination proceeding, should not discuss or answer inquiries from any person outside the Office as to whether a certain reference or other particular evidence was considered during the proceeding and whether a claim would have been allowed over that reference or other evidence had it been considered during the proceeding.
Citations
| Primary topic | Citation |
|---|---|
| – | 37 CFR § 104.1 |
| – | 37 CFR § 104.21 |
| – | 37 CFR § 11.804 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2212.01 — Inquiries from Persons Other Than the Patent Owner
Source: USPTO2212.01 Inquiries from Persons Other Than the Patent Owner [R-11.2013]
Examiners should not discuss or answer inquiries from third parties (i.e., parties who are not the patent owner) in reexamination proceedings. A party who is not the patent owner should be referred by the examiner to the Technology Center (TC) Quality Assurance Specialist (QAS) or Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) for the examiner’s art unit. The CRU SPRS or TC QAS will address any such questions. Only questions on strictly procedural matters, i.e., not directed to any specific reexamination proceeding, may be discussed by the CRU SPRS or TC QAS with that party.
Employees of the Office, particularly patent examiners who conducted a concluded reexamination proceeding, should not discuss or answer inquiries from any person outside the Office as to whether a certain reference or other particular evidence was considered during the proceeding and whether a claim would have been allowed over that reference or other evidence had it been considered during the proceeding.
Patent practitioners must not make improper inquiries of members of the patent examining corps and the Office as a whole. See 37 CFR 11.804. Inquiries from members of the public relating to the matters discussed above must, of necessity, be refused and such refusal should not be considered discourteous or an expression of opinion by the Office as to the validity, patentability, or enforceability of the patent.
The definitions set forth in 37 CFR 104.1 and the exceptions in 37 CFR 104.21 are applicable to this section.