What types of prior art can be used in an ex parte reexamination request?
In an ex parte reexamination request, the prior art that can be used is limited to: Prior art patents Printed publications The MPEP clearly states: “The prior art applied may only consist of prior art patents or printed publications.” This limitation is important to note, as other forms of prior art, such as public use…
Read MoreWhat is required in a request for ex parte reexamination under 35 U.S.C. 302?
A request for ex parte reexamination under 35 U.S.C. 302 must include: An identification of every claim for which reexamination is requested A detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested As stated in the MPEP, “The third sentence of 35 U.S.C.…
Read MoreWhat are the consequences of failing to provide a proper explanation in an ex parte reexamination request?
Failing to provide a proper explanation in an ex parte reexamination request can result in the following consequences: The requester will receive a “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements” The requester must then either provide the missing explanation or explicitly withdraw the document, combination, or claim lacking explanation The…
Read MoreHow should prior art be applied in an ex parte reexamination request?
When applying prior art in an ex parte reexamination request, the requester must: Provide a detailed explanation of how each cited prior art reference applies to each claim for which reexamination is requested Present the explanation in a clear and organized manner, preferably using claim charts For obviousness rejections, provide at least one basis for…
Read MoreCan admissions be used as a basis for establishing a substantial new question of patentability in ex parte reexamination?
Admissions, per se, cannot be the sole basis for establishing a substantial new question of patentability in ex parte reexamination. However, admissions can be used in combination with prior art patents or printed publications. The MPEP states: “An admission, per se, may not be the basis for establishing a substantial new question of patentability. However,…
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