Who can request an ex parte reexamination?
According to MPEP 2209, an ex parte reexamination can be requested by various parties: The patent owner: At any time during the enforceability of a patent. Any third party: During the period of enforceability of the patent. The Director of the USPTO: The Director can order a reexamination on their own initiative. The MPEP states,…
Read MoreWhat is ex parte reexamination?
Ex parte reexamination is a procedure that allows any person to request a review of an issued patent at any time during its enforceability period. The process involves the United States Patent and Trademark Office (USPTO) examining the patent again to determine if there is a substantial new question of patentability. According to MPEP 2209,…
Read MoreWhat is a “substantial new question of patentability” in ex parte reexamination?
A “substantial new question of patentability” is a key requirement for initiating an ex parte reexamination. As stated in MPEP 2209: “The Office initially determines if ‘a substantial new question of patentability’ (35 U.S.C. 303(a)) is presented. If such a new question has been presented, reexamination will be ordered.“ This requirement ensures that the USPTO…
Read MoreWhat is the purpose of ex parte reexamination?
The purpose of ex parte reexamination is to provide a mechanism for the USPTO to review the validity of an issued patent. According to MPEP 2209, “Ex parte reexamination is a patent office proceeding which provides a complete reexamination of the patent claims on the basis of prior art patents and printed publications.” This process…
Read MoreAre ex parte reexamination files publicly accessible?
Yes, ex parte reexamination files are generally open to the public, but with some limitations. According to MPEP 2209: “(H) All reexamination and patent files are open to the public, but see paragraph (I) below;“ “(I) The reexamination file is scanned into IFW to provide an electronic format copy of the file. All public access…
Read MoreWhat types of prior art can be considered in ex parte reexamination?
In ex parte reexaminations ordered under 35 U.S.C. 304, the types of prior art that can be considered are limited. According to MPEP 2209: “In ex parte reexaminations ordered under 35 U.S.C. 304, prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C.…
Read MoreWhat is the period of enforceability for ex parte reexamination?
The period of enforceability for ex parte reexamination is an important concept in patent law. According to MPEP 2209: “The period of enforceability of a patent is the period during which the patent is enforceable in a court of law, which is usually the patent term plus the 6 year statute of limitations for bringing…
Read MoreHow does ex parte reexamination differ from inter partes review?
Ex parte reexamination and inter partes review are two distinct procedures for reviewing patent validity. The key differences include: Participation: In ex parte reexamination, as described in MPEP 2209, the process is primarily between the patent owner and the USPTO. Third-party requesters have limited involvement after filing the request. In contrast, inter partes review allows…
Read MoreWhat are the expectations regarding conduct in ex parte reexamination proceedings?
The USPTO has specific expectations regarding conduct in ex parte reexamination proceedings. As stated in MPEP 2209: “Parties are cautioned that the reexamination statute, regulations, and published examining procedures do not countenance so-called ‘litigation tactics’ in reexamination proceedings. The parties are expected to conduct themselves accordingly.“ This means that participants should adhere to the established…
Read MoreCan claim scope be enlarged during ex parte reexamination?
No, the scope of a claim cannot be enlarged during ex parte reexamination. This is one of the basic characteristics of ex parte reexamination as stated in MPEP 2209: “(G) The scope of a claim cannot be enlarged by amendment;“ This limitation ensures that patent owners cannot use the reexamination process to broaden their patent…
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