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 (11)
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:
The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:
“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”
It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.
To learn more:
Numbering of new claims in patent reexamination follows these rules:
- Original patent claims retain their numbers, even if canceled.
- New claims are numbered sequentially starting after the last original patent claim number.
- If new claims are canceled, their numbers are not reused for other new claims.
- At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.
The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.
To learn more:
The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly change the standard for determining a substantial new question of patentability in ex parte reexamination. The MPEP 2216 states:
“The clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists.”
This means that a reexamination request cannot be based solely on asking the Office to reconsider prior art in light of the KSR decision. The request must still present the art in a new light or different way to raise a substantial new question of patentability. However, the MPEP does allow for raising a substantial new question based on a “material new analysis of previously considered reference(s) under the rationales authorized by KSR.”
To learn more:
The estoppel provisions related to ex parte reexamination requests are based on inter partes review and post-grant review proceedings. According to MPEP 2210:
“The estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) are based on inter partes review and post grant review, respectively, and they only prohibit the filing of a subsequent request for ex parte reexamination, once estoppel attaches; there is no estoppel as to the Office maintaining an existing ex parte reexamination proceeding.”
This means that parties who have participated in an inter partes review or post-grant review may be barred from subsequently filing an ex parte reexamination request on the same patent claims, based on prior art that was raised or reasonably could have been raised in the previous proceeding. However, these provisions do not affect ongoing ex parte reexamination proceedings.
To learn more:
Yes, the public can submit explanations along with prior art citations for patents. These submissions are known as “Section 301 Written Statements” and are governed by specific rules:
- The explanation must be limited to the relevance of the cited prior art
- It cannot propose or suggest rejections of any claim based on the cited prior art
- The explanation cannot discuss the claims or make comparisons to the prior art
The MPEP 2206 states: “If an explanation is to accompany the citation, it must be limited to the pertinency and manner of applying cited prior art to at least one claim of the patent. This may be done, for example, by clearly pointing out how the cited prior art provides the structure or function recited in the claim language.”
These guidelines ensure that the submissions provide valuable context for the cited prior art without crossing into unauthorized claim analysis or rejection proposals.
To learn more:
A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process:
“To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner.”
The patent owner should clearly present the SNQ issue under a separate heading in the appeal brief and identify the communication in which they first requested reconsideration before the examiner.
To learn more:
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
To learn more:
MPEP 2206 – Submission And Handling Of Prior Art Or Section 301 Written Statements (1)
Yes, the public can submit explanations along with prior art citations for patents. These submissions are known as “Section 301 Written Statements” and are governed by specific rules:
- The explanation must be limited to the relevance of the cited prior art
- It cannot propose or suggest rejections of any claim based on the cited prior art
- The explanation cannot discuss the claims or make comparisons to the prior art
The MPEP 2206 states: “If an explanation is to accompany the citation, it must be limited to the pertinency and manner of applying cited prior art to at least one claim of the patent. This may be done, for example, by clearly pointing out how the cited prior art provides the structure or function recited in the claim language.”
These guidelines ensure that the submissions provide valuable context for the cited prior art without crossing into unauthorized claim analysis or rejection proposals.
To learn more:
MPEP 2210 – Request For Ex Parte Reexamination Under 35 U.S.C. 302 (1)
The estoppel provisions related to ex parte reexamination requests are based on inter partes review and post-grant review proceedings. According to MPEP 2210:
“The estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) are based on inter partes review and post grant review, respectively, and they only prohibit the filing of a subsequent request for ex parte reexamination, once estoppel attaches; there is no estoppel as to the Office maintaining an existing ex parte reexamination proceeding.”
This means that parties who have participated in an inter partes review or post-grant review may be barred from subsequently filing an ex parte reexamination request on the same patent claims, based on prior art that was raised or reasonably could have been raised in the previous proceeding. However, these provisions do not affect ongoing ex parte reexamination proceedings.
To learn more:
MPEP 2216 – Substantial New Question Of Patentability (1)
The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly change the standard for determining a substantial new question of patentability in ex parte reexamination. The MPEP 2216 states:
“The clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists.”
This means that a reexamination request cannot be based solely on asking the Office to reconsider prior art in light of the KSR decision. The request must still present the art in a new light or different way to raise a substantial new question of patentability. However, the MPEP does allow for raising a substantial new question based on a “material new analysis of previously considered reference(s) under the rationales authorized by KSR.”
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 2242 – Criteria For Deciding Request Filed Under 35 U.S.C. 302 (1)
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
To learn more:
MPEP 2248 – Petition From Denial Of Request Filed Under 35 U.S.C. 302 (1)
The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:
“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”
It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.
To learn more:
MPEP 2250 – Amendment By Patent Owner (1)
Numbering of new claims in patent reexamination follows these rules:
- Original patent claims retain their numbers, even if canceled.
- New claims are numbered sequentially starting after the last original patent claim number.
- If new claims are canceled, their numbers are not reused for other new claims.
- At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.
The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.
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 2274 – Appeal Brief (1)
A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process:
“To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner.”
The patent owner should clearly present the SNQ issue under a separate heading in the appeal brief and identify the communication in which they first requested reconsideration before the examiner.
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 (11)
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:
The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:
“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”
It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.
To learn more:
Numbering of new claims in patent reexamination follows these rules:
- Original patent claims retain their numbers, even if canceled.
- New claims are numbered sequentially starting after the last original patent claim number.
- If new claims are canceled, their numbers are not reused for other new claims.
- At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.
The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.
To learn more:
The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly change the standard for determining a substantial new question of patentability in ex parte reexamination. The MPEP 2216 states:
“The clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists.”
This means that a reexamination request cannot be based solely on asking the Office to reconsider prior art in light of the KSR decision. The request must still present the art in a new light or different way to raise a substantial new question of patentability. However, the MPEP does allow for raising a substantial new question based on a “material new analysis of previously considered reference(s) under the rationales authorized by KSR.”
To learn more:
The estoppel provisions related to ex parte reexamination requests are based on inter partes review and post-grant review proceedings. According to MPEP 2210:
“The estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) are based on inter partes review and post grant review, respectively, and they only prohibit the filing of a subsequent request for ex parte reexamination, once estoppel attaches; there is no estoppel as to the Office maintaining an existing ex parte reexamination proceeding.”
This means that parties who have participated in an inter partes review or post-grant review may be barred from subsequently filing an ex parte reexamination request on the same patent claims, based on prior art that was raised or reasonably could have been raised in the previous proceeding. However, these provisions do not affect ongoing ex parte reexamination proceedings.
To learn more:
Yes, the public can submit explanations along with prior art citations for patents. These submissions are known as “Section 301 Written Statements” and are governed by specific rules:
- The explanation must be limited to the relevance of the cited prior art
- It cannot propose or suggest rejections of any claim based on the cited prior art
- The explanation cannot discuss the claims or make comparisons to the prior art
The MPEP 2206 states: “If an explanation is to accompany the citation, it must be limited to the pertinency and manner of applying cited prior art to at least one claim of the patent. This may be done, for example, by clearly pointing out how the cited prior art provides the structure or function recited in the claim language.”
These guidelines ensure that the submissions provide valuable context for the cited prior art without crossing into unauthorized claim analysis or rejection proposals.
To learn more:
A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process:
“To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner.”
The patent owner should clearly present the SNQ issue under a separate heading in the appeal brief and identify the communication in which they first requested reconsideration before the examiner.
To learn more:
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
To learn more:
Patent Procedure (11)
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:
The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:
“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”
It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.
To learn more:
Numbering of new claims in patent reexamination follows these rules:
- Original patent claims retain their numbers, even if canceled.
- New claims are numbered sequentially starting after the last original patent claim number.
- If new claims are canceled, their numbers are not reused for other new claims.
- At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.
The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.
To learn more:
The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly change the standard for determining a substantial new question of patentability in ex parte reexamination. The MPEP 2216 states:
“The clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists.”
This means that a reexamination request cannot be based solely on asking the Office to reconsider prior art in light of the KSR decision. The request must still present the art in a new light or different way to raise a substantial new question of patentability. However, the MPEP does allow for raising a substantial new question based on a “material new analysis of previously considered reference(s) under the rationales authorized by KSR.”
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The estoppel provisions related to ex parte reexamination requests are based on inter partes review and post-grant review proceedings. According to MPEP 2210:
“The estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) are based on inter partes review and post grant review, respectively, and they only prohibit the filing of a subsequent request for ex parte reexamination, once estoppel attaches; there is no estoppel as to the Office maintaining an existing ex parte reexamination proceeding.”
This means that parties who have participated in an inter partes review or post-grant review may be barred from subsequently filing an ex parte reexamination request on the same patent claims, based on prior art that was raised or reasonably could have been raised in the previous proceeding. However, these provisions do not affect ongoing ex parte reexamination proceedings.
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Yes, the public can submit explanations along with prior art citations for patents. These submissions are known as “Section 301 Written Statements” and are governed by specific rules:
- The explanation must be limited to the relevance of the cited prior art
- It cannot propose or suggest rejections of any claim based on the cited prior art
- The explanation cannot discuss the claims or make comparisons to the prior art
The MPEP 2206 states: “If an explanation is to accompany the citation, it must be limited to the pertinency and manner of applying cited prior art to at least one claim of the patent. This may be done, for example, by clearly pointing out how the cited prior art provides the structure or function recited in the claim language.”
These guidelines ensure that the submissions provide valuable context for the cited prior art without crossing into unauthorized claim analysis or rejection proposals.
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A patent owner can seek review of a Substantial New Question of Patentability (SNQ) determination before the Board along with an appeal of the examiner’s rejections. The MPEP outlines the process:
“To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner.”
The patent owner should clearly present the SNQ issue under a separate heading in the appeal brief and identify the communication in which they first requested reconsideration before the examiner.
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The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
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