Are copies of U.S. patents and patent application publications required in reexamination requests?
Generally, copies of U.S. patents and U.S. patent application publications are not required to be submitted with reexamination requests. The MPEP 2218 states: “The requirement for the submission of a copy of every patent or printed publication relied upon or referred to in the request, pursuant to 37 CFR 1.510(b)(3), is waived to the extent…
Read MoreWhat happens if a copy of prior art submitted for reexamination is not legible?
If a copy of prior art submitted for reexamination is not legible, it is considered not to have been provided. The USPTO addresses this issue as stated in MPEP 2218: “If the copy provided is not legible, or is such that its image scanned into the Image File Wrapper system (IFW) will not be legible,…
Read MoreWhat documents must be submitted with an ex parte reexamination request?
When filing an ex parte reexamination request, the following documents must be submitted: A copy of each patent or printed publication relied on or referred to in the request English language translations of any non-English documents, including all necessary and pertinent parts As stated in MPEP 2218: “It is required that a copy of each…
Read MoreAre English translations required for non-English prior art in reexamination requests?
Yes, English translations are required for non-English prior art submitted with reexamination requests. According to MPEP 2218: “If any of the documents are not in the English language, an English language translation of all necessary and pertinent parts is also required. See MPEP ยง 609.04(a), subsection III. An English language summary or abstract of a…
Read MoreHow should information about copending reexamination proceedings be provided in a reexamination request?
When providing information about copending reexamination proceedings in a reexamination request, it’s important to follow the guidelines set by the USPTO. According to MPEP 2218: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may…
Read MoreHow are color photographs or submissions handled in reexamination requests?
Color photographs and similar color submissions in reexamination requests are handled differently from other documents. According to MPEP 2218: “An exception is color photographs and like color submissions, which, if legible as presented, will be retained in an ‘artifact’ file and used as such.” This means that: Color photographs and similar color submissions are not…
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