What is the scope of inter partes reexamination?
The scope of inter partes reexamination is defined by 37 CFR 1.906, which states: Claims will be examined based on patents or printed publications. For subject matter added or deleted during reexamination, claims will be examined based on 35 U.S.C. 112 requirements. Claims cannot enlarge the scope of the original patent claims. Issues outside of…
Read MoreWhat happens if a reexamination request is filed on a patent after it has been reissued?
When a request for reexamination is filed on a patent after it has been reissued, the reexamination will be denied. The MPEP explains: “Where a request for reexamination is filed on a patent after it has been reissued, reexamination will be denied because the patent on which the request for reexamination is based has been…
Read MoreWhat issues are not considered in inter partes reexamination?
Inter partes reexamination is limited in scope and does not consider all potential issues related to patent validity. According to the MPEP, the following issues are not considered: Public use or on-sale activities Conduct issues Abandonment under pre-AIA 35 U.S.C. 102(c) Other issues not based on patents or printed publications The MPEP states: “If questions…
Read MoreHow does inter partes reexamination differ from ex parte reexamination?
Inter partes reexamination differs from ex parte reexamination in several procedural aspects, but not in the substance considered. The MPEP states: “Inter partes reexamination differs from ex parte reexamination in matters of procedure, such as when the third party requester can participate, the types of Office actions and the timing of issuance of the Office…
Read MoreCan inventorship be corrected during inter partes reexamination?
Yes, inventorship can be corrected during inter partes reexamination. The MPEP provides guidance on this matter: “Correction of inventorship may also be made during reexamination. See 37 CFR 1.324 and MPEP § 1481 for petition for correction of inventorship in a patent.” However, the process for correction is slightly different in reexamination: “If a petition…
Read MoreCan foreign priority or domestic benefit be claimed during inter partes reexamination?
Yes, foreign priority or domestic benefit can be claimed during inter partes reexamination under certain circumstances. The MPEP states: “Amendments may be made to the specification to correct, for example, an inadvertent failure to claim foreign priority or the continuing status of the patent relative to a parent application if such correction is necessary to…
Read MoreCan claims be broadened during inter partes reexamination?
No, claims cannot be broadened during inter partes reexamination. The MPEP clearly states: “Where new claims are presented, or where any part of the disclosure is amended, the claims of the inter partes reexamination proceeding should be examined under 35 U.S.C. 314, to determine whether they enlarge the scope of the original claims. 35 U.S.C.…
Read MoreCan affidavits be used in inter partes reexamination?
Yes, affidavits can be used in inter partes reexamination proceedings. The MPEP states: “Affidavits under 37 CFR 1.131(a) and 1.132 may be utilized in a reexamination proceeding.” However, there are limitations on the use of certain types of affidavits: “Note, however, that an affidavit under 37 CFR 1.131(a) may not be used to ‘swear behind’…
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