37 CFR § 1.535 — Reply by third party requester inex (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting 37 CFR § 1.535, including 70 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.

Summary

The Reply by third party requester inex allows third parties to submit prior art or written statements about a patent's enforceability during the patent's period of enforceability under 35 U.S.C. 301.

What this section covers

Outline the scope of third-party submissions in patent reexamination proceedings.
Define the timeframe for submitting prior art or written statements about a patent.

Key obligations

Submissions must be made during the entire period of patent enforceability.
Ensure that submitted prior art is relevant and complies with USPTO guidelines.

Practice notes

Carefully document and substantiate any prior art submissions to maximize potential impact.
Understand that submissions can be made at any time during the patent's enforceability period.

Third Party Requester Must Notify Examiner AssignmentMPEP 2236
Late Responses May Be Refused ConsiderationMPEP 2252Permitted
Untimely Submissions Not Placed in RecordMPEP 2252
Premature Petitions to Stay Reexamination Will Be ReturnedMPEP 2284
Premature Petitions to Stay Reexamination Will Be ReturnedMPEP 2284
Patent Owner Can Petition to Stay Reexamination After OrderMPEP 2284Permitted
Non-Requester Interference Petitions Not ConsideredMPEP 2284
Petitions to Stay Reexamination Before Determination and OrderMPEP 2284
Decisions on Staying Reexamination Due to Interference Made in OPLAMPEP 2284
Expedited Ex Parte Reexamination When Linked to LitigationMPEP 2286
Untimely Responses Not Considered in Ex Parte ReexaminationMPEP 2252
Submissions During Patent Enforceability PeriodMPEP 2204Permitted
Period of Enforceability for Patent Infringement ActionsMPEP 2204
Submissions Allowed After Statute If Litigation InstitutedMPEP 2204Permitted
Requirement for Timely Examiner Assignment NotificationMPEP 2236Permitted
Office May Waive Rules for Examiner Assignment PaperMPEP 2236Permitted
Form Paragraphs Must Be Noted In Office ActionsMPEP 2258
Examiner’s First Ex Parte Action Establishes Issues in ReexaminationMPEP 2260
Issues Must Be Clearly Defined In First Ex Parte ActionMPEP 2260Recommended
Caution for Complete Response After First ActionMPEP 2260Recommended
Amendments Must Show Reasons for Delayed Presentation After Final ActionMPEP 2260Required
Cautionary Statement for First Office ActionMPEP 2260
Petitions to Stay After Reexamination Order Must Go to OPLAMPEP 2284
Submissions After Reexamination OrderMPEP 2204Required
Third Party Requester Cannot Reply Without Entry RightMPEP 2236Prohibited
Response Period for Requester Under 37 CFR 1.535MPEP 2249Recommended
Ex Parte Requester Must File Reply Within Two MonthsMPEP 2251Permitted
Reply by Ex Parte Requester Must Be Served on Patent OwnerMPEP 2251Required
No Reply Without Patent Owner StatementMPEP 2251
Third Party Requester Must Reply Within 2 MonthsMPEP 2251
No Extensions for Third Party Requester ReplyMPEP 2251
Reply by Third Party Requester in Ex Parte Reexamination AllowedMPEP 2251
Reply May Include Additional Patents and PublicationsMPEP 2251Permitted
Third Party Requester Must Not File StatementMPEP 2251Permitted
Reply by Third Party Requester Not Acceptable After ResponseMPEP 2251Permitted
No Further Papers Allowed for Third Party RequesterMPEP 2251
Patent Owner Cannot File for Third PartyMPEP 2251Prohibited
Timely Filing and Serving of Documents Required in Ex Parte ReexaminationMPEP 2252Permitted
Reply by Ex Parte Reexamination Requester Required Before ExaminationMPEP 2252
Submissions Must Be Timely and PermittedMPEP 2252
Submissions Considered During First Office Action on MeritsMPEP 2253
Examiner Treats New Issues Raised by Third Party in Reexamination Within ScopeMPEP 2253Recommended
No Further Submissions After Ex Parte Request ReplyMPEP 2254
Questions Raised During Reexamination Must Be NotedMPEP 2258
Patent Owner Must File Statement and Amendment Before First ActionMPEP 2260Permitted
No Further Submissions After Ex Parte ReplyMPEP 2266
Late Filing Does Not Justify Unintentional DelayMPEP 2268
Third Party Requester Can Petition to Stay ReexaminationMPEP 2284Permitted
Examination Following Owner's Statement and Requester's Reply Must Be Expedited If Reexamination Is OrderedMPEP 2286

Certification Required for Non-Patent Owner RequestsMPEP 2214Required
Certification of Service on Patent Owner Required for Ex Parte Reexamination RequestMPEP 2214Required
Duplicate Copy When Service Not PossibleMPEP 2214Required
Amendments Must Show Reasons for Delayed Presentation After Final ActionMPEP 2260Required
Submissions After Reexamination OrderMPEP 2204Required
Reply by Ex Parte Requester Must Be Served on Patent OwnerMPEP 2251Required
Third Party Requester Must Serve Reply on Patent OwnerMPEP 2251Required

Duplicate Copy When Service on Patent Owner Not PossibleMPEP 2214
Responses Before Determinations Not ConsideredMPEP 2214
Priority Mail Express for Ex Parte Reexamination FilingMPEP 2224Permitted
Decision on Merging Reissue and Ex Parte Reexamination Not Made Until After Reexamination OrderMPEP 2285
Timely Determination Required Despite Copending Reissue ApplicationMPEP 2285Prohibited
Notification for Merger Consideration RequiredMPEP 2285Recommended
Paper Files Must Be Hand Delivered to OPLAMPEP 2285Recommended
Examination of Reissue Application Continues Until Reexamination OrderMPEP 2285
Continued Examination of Reissue Application After Denial of ReexaminationMPEP 2285Recommended
Patent Owner and Ex Parte Requester Citations Required During ReexaminationMPEP 2202
Citations by Others Must Wait Until Reexamination ConclusionMPEP 2202
Request Should Be Complete for Ex Parte ReexaminationMPEP 2214Recommended
Reply by Ex Parte Reexamination Requester Not Considered Before ExaminationMPEP 2214
Certificate of Mailing for Ex Parte Reexamination PapersMPEP 2224Permitted
Filing Requirements for Patent Owner’s Statement and Requester’s Reply in Ex Parte ReexaminationMPEP 2224
Third Party Submissions Not Considered Unless Part of RequestMPEP 2256
Requirement for Reexamination Filing and ReplyMPEP 2285

MPEP Section	Rules
MPEP § 2202	Patent Owner and Ex Parte Requester Citations Required During ReexaminationMPEP 2202 Citations by Others Must Wait Until Reexamination ConclusionMPEP 2202
MPEP § 2204	Submissions During Patent Enforceability PeriodMPEP 2204Permitted Period of Enforceability for Patent Infringement ActionsMPEP 2204 Submissions Allowed After Statute If Litigation InstitutedMPEP 2204Permitted Submissions After Reexamination OrderMPEP 2204Required
MPEP § 2214	Certification Required for Non-Patent Owner RequestsMPEP 2214Required Duplicate Copy When Service on Patent Owner Not PossibleMPEP 2214 Responses Before Determinations Not ConsideredMPEP 2214 Certification of Service on Patent Owner Required for Ex Parte Reexamination RequestMPEP 2214Required Duplicate Copy When Service Not PossibleMPEP 2214Required Request Should Be Complete for Ex Parte ReexaminationMPEP 2214Recommended Reply by Ex Parte Reexamination Requester Not Considered Before ExaminationMPEP 2214
MPEP § 2224	Priority Mail Express for Ex Parte Reexamination FilingMPEP 2224Permitted Certificate of Mailing for Ex Parte Reexamination PapersMPEP 2224Permitted Filing Requirements for Patent Owner’s Statement and Requester’s Reply in Ex Parte ReexaminationMPEP 2224
MPEP § 2236	Third Party Requester Must Notify Examiner AssignmentMPEP 2236 Requirement for Timely Examiner Assignment NotificationMPEP 2236Permitted Office May Waive Rules for Examiner Assignment PaperMPEP 2236Permitted Third Party Requester Cannot Reply Without Entry RightMPEP 2236Prohibited
MPEP § 2249	Response Period for Requester Under 37 CFR 1.535MPEP 2249Recommended
MPEP § 2251	Ex Parte Requester Must File Reply Within Two MonthsMPEP 2251Permitted Reply by Ex Parte Requester Must Be Served on Patent OwnerMPEP 2251Required No Reply Without Patent Owner StatementMPEP 2251 Third Party Requester Must Reply Within 2 MonthsMPEP 2251 No Extensions for Third Party Requester ReplyMPEP 2251 Reply by Third Party Requester in Ex Parte Reexamination AllowedMPEP 2251 Reply May Include Additional Patents and PublicationsMPEP 2251Permitted Third Party Requester Must Not File StatementMPEP 2251Permitted Third Party Requester Must Serve Reply on Patent OwnerMPEP 2251Required Reply by Third Party Requester Not Acceptable After ResponseMPEP 2251Permitted No Further Papers Allowed for Third Party RequesterMPEP 2251 Patent Owner Cannot File for Third PartyMPEP 2251Prohibited
MPEP § 2252	Late Responses May Be Refused ConsiderationMPEP 2252Permitted Untimely Submissions Not Placed in RecordMPEP 2252 Untimely Responses Not Considered in Ex Parte ReexaminationMPEP 2252 Timely Filing and Serving of Documents Required in Ex Parte ReexaminationMPEP 2252Permitted Reply by Ex Parte Reexamination Requester Required Before ExaminationMPEP 2252 Submissions Must Be Timely and PermittedMPEP 2252
MPEP § 2253	Submissions Considered During First Office Action on MeritsMPEP 2253 Examiner Treats New Issues Raised by Third Party in Reexamination Within ScopeMPEP 2253Recommended
MPEP § 2254	No Further Submissions After Ex Parte Request ReplyMPEP 2254
MPEP § 2256	Third Party Submissions Not Considered Unless Part of RequestMPEP 2256
MPEP § 2258	Form Paragraphs Must Be Noted In Office ActionsMPEP 2258 Questions Raised During Reexamination Must Be NotedMPEP 2258
MPEP § 2260	Examiner’s First Ex Parte Action Establishes Issues in ReexaminationMPEP 2260 Issues Must Be Clearly Defined In First Ex Parte ActionMPEP 2260Recommended Caution for Complete Response After First ActionMPEP 2260Recommended Amendments Must Show Reasons for Delayed Presentation After Final ActionMPEP 2260Required Cautionary Statement for First Office ActionMPEP 2260 Patent Owner Must File Statement and Amendment Before First ActionMPEP 2260Permitted
MPEP § 2266	No Further Submissions After Ex Parte ReplyMPEP 2266
MPEP § 2268	Late Filing Does Not Justify Unintentional DelayMPEP 2268
MPEP § 2284	Premature Petitions to Stay Reexamination Will Be ReturnedMPEP 2284 Premature Petitions to Stay Reexamination Will Be ReturnedMPEP 2284 Patent Owner Can Petition to Stay Reexamination After OrderMPEP 2284Permitted Non-Requester Interference Petitions Not ConsideredMPEP 2284 Petitions to Stay Reexamination Before Determination and OrderMPEP 2284 Decisions on Staying Reexamination Due to Interference Made in OPLAMPEP 2284 Petitions to Stay After Reexamination Order Must Go to OPLAMPEP 2284 Third Party Requester Can Petition to Stay ReexaminationMPEP 2284Permitted
MPEP § 2285	Decision on Merging Reissue and Ex Parte Reexamination Not Made Until After Reexamination OrderMPEP 2285 Timely Determination Required Despite Copending Reissue ApplicationMPEP 2285Prohibited Notification for Merger Consideration RequiredMPEP 2285Recommended Paper Files Must Be Hand Delivered to OPLAMPEP 2285Recommended Examination of Reissue Application Continues Until Reexamination OrderMPEP 2285 Continued Examination of Reissue Application After Denial of ReexaminationMPEP 2285Recommended Requirement for Reexamination Filing and ReplyMPEP 2285
MPEP § 2286	Expedited Ex Parte Reexamination When Linked to LitigationMPEP 2286 Examination Following Owner's Statement and Requester's Reply Must Be Expedited If Reexamination Is OrderedMPEP 2286

Related Provisions

Based on MPEP Last Modified: 10/30/2024 08:50:22

37 CFR § 1.535 — Reply by third party requester inex (MPEP Coverage Index) – BlueIron IP

37 CFR § 1.535 Reply by third party requester inex

Summary

Official MPEP § 1.535 — Reply by third party requester inex

1.535 Reply by third party requester in ex parte reexamination.

Verbatim in MPEP

Required Actions

Key Interpretations

Topics

MPEP Coverage

Related Provisions