How detailed should the statement applying prior art be in an inter partes reexamination request?
The statement applying prior art in an inter partes reexamination request should be sufficiently detailed to explain how each item of prior art applies to every claim for which reexamination is requested. The MPEP 2617 states: “The particularity should be equivalent to that usually present in a prior art rejection statement in an Office action…
Read MoreWhat is the purpose of the statement applying prior art in an inter partes reexamination request?
The purpose of the statement applying prior art in an inter partes reexamination request is to explain how the cited prior art is applicable to the claims of the patent for which reexamination is requested. According to MPEP 2617: “The request must include a statement applying the cited prior art (the patents and printed publications)…
Read MoreCan a requester include arguments about non-prior art issues in the statement applying prior art?
No, a requester should not include arguments about non-prior art issues in the statement applying prior art for an inter partes reexamination request. The MPEP 2617 clearly states: “The statement applying the prior art is not intended as an opportunity for a requester to propose rejections based on 35 U.S.C. 101, 112, 102, and 103…
Read MoreWhat happens if the statement applying prior art is insufficient in an inter partes reexamination request?
If the statement applying prior art in an inter partes reexamination request is insufficient, the request may be denied. The MPEP 2617 explains: “If the required statement applying the prior art is not included in the request, the request will be denied.” An insufficient statement could include: Failing to address all claims for which reexamination…
Read MoreWhat alternatives are available for challenging patents after the discontinuation of inter partes reexamination?
While MPEP 2617 states that “No requests for inter partes reexamination may be filed on or after September 16, 2012,” there are alternative procedures for challenging patents. These include inter partes review (IPR), post-grant review (PGR), and ex parte reexamination. Each of these procedures has its own requirements and timelines, and they were introduced as…
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