Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2200 – Citation Of Prior Art And Ex Parte Reexamination Of Patents (4)
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
To learn more:
What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
To learn more:
For ex parte reexamination requests filed under 35 U.S.C. 302 and subsequent correspondence, the MPEP provides specific addressing instructions:
For mail sent via U.S. Postal Service:
- Mail Stop “Ex Parte Reexam”
- Attn: Central Reexamination Unit
- Commissioner for Patents
- P.O. Box 1450
- Alexandria, VA 22313-1450
For hand-carried or delivery service submissions:
- Customer Service Window
- Randolph Building
- 401 Dulany Street
- Alexandria, VA 22314
The MPEP states: “It is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.”
To learn more:
How does the scope of ex parte reexamination differ from inter partes review?
The scope of ex parte reexamination is more limited compared to inter partes review (IPR). Key differences include:
- Prior Art: Ex parte reexamination is limited to patents and printed publications, while IPR can consider a broader range of prior art.
- Grounds: Ex parte reexamination is based on 35 U.S.C. 102 and 103, while IPR can also include other grounds like 35 U.S.C. 101.
- Participation: In ex parte reexamination, third-party participation is limited after filing, while IPR allows ongoing third-party involvement.
According to MPEP 2258:
“The reexamination proceeding will be conducted in accordance with 35 U.S.C. 305 and 37 CFR 1.550.”
This emphasizes the more structured and limited nature of ex parte reexamination compared to the broader scope of IPR proceedings.
To learn more:
MPEP 2224 – Correspondence (1)
For ex parte reexamination requests filed under 35 U.S.C. 302 and subsequent correspondence, the MPEP provides specific addressing instructions:
For mail sent via U.S. Postal Service:
- Mail Stop “Ex Parte Reexam”
- Attn: Central Reexamination Unit
- Commissioner for Patents
- P.O. Box 1450
- Alexandria, VA 22313-1450
For hand-carried or delivery service submissions:
- Customer Service Window
- Randolph Building
- 401 Dulany Street
- Alexandria, VA 22314
The MPEP states: “It is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.”
To learn more:
MPEP 2258 – Scope Of Ex Parte Reexamination (1)
How does the scope of ex parte reexamination differ from inter partes review?
The scope of ex parte reexamination is more limited compared to inter partes review (IPR). Key differences include:
- Prior Art: Ex parte reexamination is limited to patents and printed publications, while IPR can consider a broader range of prior art.
- Grounds: Ex parte reexamination is based on 35 U.S.C. 102 and 103, while IPR can also include other grounds like 35 U.S.C. 101.
- Participation: In ex parte reexamination, third-party participation is limited after filing, while IPR allows ongoing third-party involvement.
According to MPEP 2258:
“The reexamination proceeding will be conducted in accordance with 35 U.S.C. 305 and 37 CFR 1.550.”
This emphasizes the more structured and limited nature of ex parte reexamination compared to the broader scope of IPR proceedings.
To learn more:
MPEP 2281 – Interviews In Ex Parte Reexamination Proceedings (1)
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
To learn more:
MPEP 2293 – Intervening Rights (1)
What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
To learn more:
Patent Law (4)
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
To learn more:
What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
To learn more:
For ex parte reexamination requests filed under 35 U.S.C. 302 and subsequent correspondence, the MPEP provides specific addressing instructions:
For mail sent via U.S. Postal Service:
- Mail Stop “Ex Parte Reexam”
- Attn: Central Reexamination Unit
- Commissioner for Patents
- P.O. Box 1450
- Alexandria, VA 22313-1450
For hand-carried or delivery service submissions:
- Customer Service Window
- Randolph Building
- 401 Dulany Street
- Alexandria, VA 22314
The MPEP states: “It is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.”
To learn more:
How does the scope of ex parte reexamination differ from inter partes review?
The scope of ex parte reexamination is more limited compared to inter partes review (IPR). Key differences include:
- Prior Art: Ex parte reexamination is limited to patents and printed publications, while IPR can consider a broader range of prior art.
- Grounds: Ex parte reexamination is based on 35 U.S.C. 102 and 103, while IPR can also include other grounds like 35 U.S.C. 101.
- Participation: In ex parte reexamination, third-party participation is limited after filing, while IPR allows ongoing third-party involvement.
According to MPEP 2258:
“The reexamination proceeding will be conducted in accordance with 35 U.S.C. 305 and 37 CFR 1.550.”
This emphasizes the more structured and limited nature of ex parte reexamination compared to the broader scope of IPR proceedings.
To learn more:
Patent Procedure (4)
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
To learn more:
What are the different types of intervening rights in patent reexamination?
There are two types of intervening rights in patent reexamination:
- Absolute intervening rights: These allow continued use or sale of specific products made before the reissue
- Equitable intervening rights: These may be granted by the court for products made after the reissue
As stated in MPEP 2293: “The second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights:”
1) Absolute intervening rights that provide “a safeguard for the public against infringement for making, using, offering for sale, or importing any specific thing made, purchased, offered for sale, used or imported before the grant of the reissue patent”
2) Equitable intervening rights that allow “the continued manufacture, use, offer for sale, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date”
To learn more:
For ex parte reexamination requests filed under 35 U.S.C. 302 and subsequent correspondence, the MPEP provides specific addressing instructions:
For mail sent via U.S. Postal Service:
- Mail Stop “Ex Parte Reexam”
- Attn: Central Reexamination Unit
- Commissioner for Patents
- P.O. Box 1450
- Alexandria, VA 22313-1450
For hand-carried or delivery service submissions:
- Customer Service Window
- Randolph Building
- 401 Dulany Street
- Alexandria, VA 22314
The MPEP states: “It is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.”
To learn more:
How does the scope of ex parte reexamination differ from inter partes review?
The scope of ex parte reexamination is more limited compared to inter partes review (IPR). Key differences include:
- Prior Art: Ex parte reexamination is limited to patents and printed publications, while IPR can consider a broader range of prior art.
- Grounds: Ex parte reexamination is based on 35 U.S.C. 102 and 103, while IPR can also include other grounds like 35 U.S.C. 101.
- Participation: In ex parte reexamination, third-party participation is limited after filing, while IPR allows ongoing third-party involvement.
According to MPEP 2258:
“The reexamination proceeding will be conducted in accordance with 35 U.S.C. 305 and 37 CFR 1.550.”
This emphasizes the more structured and limited nature of ex parte reexamination compared to the broader scope of IPR proceedings.
To learn more: