What is the purpose of listing prior art in an inter partes reexamination?
The purpose of listing prior art in an inter partes reexamination is to ensure that all relevant prior art is considered during the reexamination process. According to MPEP 2657: “The reexamination request must provide a list of all prior art patents or printed publications (other than those already cited in the patent) that are relied…
Read MoreWhat sources of prior art are considered during patent reexamination?
During patent reexamination, examiners consider prior art from various sources. MPEP 2657 outlines these sources: Prior art of record in the patent file due to submissions under 37 CFR 1.501 received before the reexamination order Prior art of record from earlier examination proceedings Prior art discovered by the examiner during a prior art search Prior…
Read MoreWhat is the requirement for listing prior art in a reexamination request?
The reexamination request must provide a listing of the patents and printed publications discussed in the request, as specified in 37 CFR 1.98. This requirement is explained in MPEP § 2614. As stated in MPEP 2657: “The reexamination request must provide a listing of the patents and printed publications (discussed in the request) as provided…
Read MoreHow should prior art be cited in an inter partes reexamination request?
When citing prior art in an inter partes reexamination request, it’s important to follow the specific guidelines outlined in MPEP 2657. The manual states: “The prior art patents and printed publications should be listed in a form similar to that provided by 37 CFR 1.98(b)(1) and (2). The request must also include a copy of…
Read MoreWhat happens if new prior art is discovered during inter partes reexamination?
If new prior art is discovered during inter partes reexamination, the process for handling it depends on who discovers the art and when. According to MPEP 2657: “After the request for inter partes reexamination is filed, the third party requester may cite additional prior art as provided for in 37 CFR 1.948. The third party…
Read MoreWhat forms are used to list prior art in patent reexamination proceedings?
In patent reexamination proceedings, specific forms are used to list prior art. MPEP 2657 mentions the following forms: Form PTO-892 Form PTO/SB/08A Form PTO/SB/08B Form PTO/SB/42 Forms with equivalent formats to the above The MPEP states: “The examiner must list on a form PTO-892, if not already listed on a form PTO/SB/08A or 08B, or…
Read MoreHow does an examiner list prior art during reexamination proceedings?
During reexamination proceedings, the examiner must list all relevant prior art on specific forms. According to MPEP 2657: “The examiner must list on a form PTO-892, if not already listed on a form PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format equivalent to one of these forms), all prior art patents…
Read MoreHow is the list of cited prior art documents made available after reexamination?
After a patent reexamination is completed, the list of cited prior art documents is made available to the public. According to MPEP 2657: “A notice will be printed on the reexamination certificate to state that the list of cited prior art documents will be available via PAIR by the reexamination control number.” This means that…
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