What is the scope of prior art considered in ex parte reexamination?
What is the scope of prior art considered in ex parte reexamination? In ex parte reexamination, the scope of prior art considered is broader than in the original examination. According to MPEP 2258: “The consideration of prior art in ex parte reexamination is, however, limited to prior patents or printed publications applied under the appropriate…
Read MoreWhat is the scope of an ex parte reexamination under 35 U.S.C. 304?
An ex parte reexamination under 35 U.S.C. 304 provides a complete reexamination of the patent claims based on prior art patents and printed publications. The MPEP states: “A reexamination proceeding ordered under 35 U.S.C. 304 provides a complete reexamination of the patent claims on the basis of prior art patents and printed publications.” Additionally, double…
Read MoreHow are admissions by the patent owner treated in ex parte reexamination?
Admissions by the patent owner can be used in combination with patents or printed publications in ex parte reexamination. The MPEP states: “Admissions by the patent owner as to any matter affecting patentability may be utilized to determine the scope and content of the prior art in conjunction with patents and printed publications in a…
Read MoreCan new matter be introduced during ex parte reexamination?
New matter cannot be introduced into the disclosure during ex parte reexamination. The MPEP states: “35 U.S.C. 305 provides for examination under 35 U.S.C. 132, which prohibits the introduction of new matter into the disclosure.” If new matter is added to the claims or affects claim limitations, the claims should be rejected under 35 U.S.C.…
Read MoreCan new matter be added to claims during ex parte reexamination?
Can new matter be added to claims during ex parte reexamination? No, new matter cannot be added to claims during ex parte reexamination: The MPEP 2258 clearly states: “No amendment may introduce new matter into the disclosure of the patent.” This prohibition is based on 35 U.S.C. 305, which specifies that no proposed amended or…
Read MoreCan new issues be raised in ex parte reexamination?
Can new issues be raised in ex parte reexamination? Generally, new issues cannot be raised in ex parte reexamination unless they are based on patents or printed publications. The MPEP 2258 states: “Issues other than those indicated in 37 CFR 1.552(c) will not be resolved in a reexamination proceeding.” However, there are some exceptions: New…
Read MoreWhat are the limitations on new rejections in ex parte reexamination?
What are the limitations on new rejections in ex parte reexamination? In ex parte reexamination, there are specific limitations on introducing new rejections: Pre-AIA 35 U.S.C. 303(a) and 37 CFR 1.906(c) restrict new rejections to those based on patents or printed publications. New rejections cannot be based on issues like 35 U.S.C. 112 or public…
Read MoreWhat issues can be considered in ex parte reexamination ordered under 35 U.S.C. 304?
Ex parte reexamination ordered under 35 U.S.C. 304 is limited to considerations of prior art patents and printed publications. The MPEP states: “Rejections will not be based on matters other than patents or printed publications, such as public use or sale, inventorship, 35 U.S.C. 101, conduct issues, etc.” However, certain ancillary matters may be considered,…
Read MoreWhat is the role of the examiner in ex parte reexamination?
What is the role of the examiner in ex parte reexamination? The examiner plays a crucial role in ex parte reexamination, with responsibilities including: Conducting a thorough search of the prior art relevant to the patent under reexamination. Examining the patent claims in light of the cited prior art and any newly discovered references. Making…
Read MoreHow does the scope of ex parte reexamination differ from inter partes review?
How does the scope of ex parte reexamination differ from inter partes review? The scope of ex parte reexamination is more limited compared to inter partes review (IPR). Key differences include: Prior Art: Ex parte reexamination is limited to patents and printed publications, while IPR can consider a broader range of prior art. Grounds: Ex…
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