What are the requirements for submitting copies of prior art in ex parte reexamination?
In ex parte reexamination, there are specific requirements for submitting copies of prior art. According to MPEP 2256: “37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the…
Read MoreHow does the “special dispatch” requirement affect prior art submissions in ex parte reexamination?
The “special dispatch” requirement, as mandated by 35 U.S.C. 305, significantly affects prior art submissions in ex parte reexamination, especially after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) has been mailed. The MPEP explains: “To automatically delay prosecution by pulling the proceeding from that process when such a submission has been…
Read MoreWhat are the requirements for submitting prior art after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC)?
Submitting prior art after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) requires meeting specific conditions due to the statutory mandate for “special dispatch” in reexamination proceedings. The MPEP states: “[T]he submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have…
Read MoreWhat sources of prior art must an examiner consider during ex parte reexamination?
During ex parte reexamination, an examiner must consider several sources of prior art, including: Patents and printed publications cited in the reexamination request Prior art cited by other reexamination requesters Prior art cited in the patent owner’s statement or requester’s reply Prior art cited by the patent owner under duty of disclosure Prior art discovered…
Read MoreHow does the degree of consideration for submitted prior art differ in ex parte reexamination?
In ex parte reexamination, the degree of consideration given to submitted prior art depends on how the information is presented. The MPEP states: “Where patents, publications, and other such documents are submitted by a party (patent owner or requester) in compliance with the requirements of the rules, the requisite degree of consideration to be given…
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