Patent Law FAQ

Information about reexamination proceedings is made available to the public in several ways:

1. Announcement in the Official Gazette:
   • The filing of each request for reexamination (where the full fee has been paid) is announced
   • Reexaminations ordered at the Director’s initiative are also announced
2. Public inspection of reexamination files:
   • Once scanned into the Image File Wrapper (IFW) system, reexamination files are open to public inspection
   • Files can be accessed through Patent Center on the USPTO website
   • The entire contents of the reexamination file are viewable, except for non-patent literature

Direct quote: ‘All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette.’ (37 CFR 1.11(c))

Note that a reexamination file is typically not open to inspection until it has been scanned into the IFW system.

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:

• intervening rights
• patent reexamination
• absolute intervening rights
• equitable intervening rights

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:

• intervening rights
• patent reexamination
• absolute intervening rights
• equitable intervening rights

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:

• intervening rights
• patent reexamination
• absolute intervening rights
• equitable intervening rights

Information about reexamination proceedings is made available to the public in several ways:

1. Announcement in the Official Gazette:
   • The filing of each request for reexamination (where the full fee has been paid) is announced
   • Reexaminations ordered at the Director’s initiative are also announced
2. Public inspection of reexamination files:
   • Once scanned into the Image File Wrapper (IFW) system, reexamination files are open to public inspection
   • Files can be accessed through Patent Center on the USPTO website
   • The entire contents of the reexamination file are viewable, except for non-patent literature

Direct quote: ‘All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette.’ (37 CFR 1.11(c))

Note that a reexamination file is typically not open to inspection until it has been scanned into the IFW system.

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:

• intervening rights
• patent reexamination
• absolute intervening rights
• equitable intervening rights

Information about reexamination proceedings is made available to the public in several ways:

1. Announcement in the Official Gazette:
   • The filing of each request for reexamination (where the full fee has been paid) is announced
   • Reexaminations ordered at the Director’s initiative are also announced
2. Public inspection of reexamination files:
   • Once scanned into the Image File Wrapper (IFW) system, reexamination files are open to public inspection
   • Files can be accessed through Patent Center on the USPTO website
   • The entire contents of the reexamination file are viewable, except for non-patent literature

Direct quote: ‘All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette.’ (37 CFR 1.11(c))

Note that a reexamination file is typically not open to inspection until it has been scanned into the IFW system.