Who typically conducts ex parte reexaminations?

Typically, the same patent examiner who made the decision on whether the reexamination request should be granted conducts the examination. As stated in MPEP § 2255: “The examination will ordinarily be conducted by the same patent examiner who made the decision on whether the reexamination request should be granted.” This ensures continuity in the examination…

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Who can submit prior art during a pending reexamination proceeding?

While there are general limitations on prior art submissions during reexamination proceedings, certain parties are allowed to submit prior art. According to MPEP 2204, the following exceptions apply: “[S]ubmissions filed after the date of any order to reexamine will not be entered into the patent file until the pending reexamination proceeding has been concluded (37…

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Who can request an ex parte reexamination?

According to MPEP 2209, an ex parte reexamination can be requested by various parties: The patent owner: At any time during the enforceability of a patent. Any third party: During the period of enforceability of the patent. The Director of the USPTO: The Director can order a reexamination on their own initiative. The MPEP states,…

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Who can file a request for supplemental examination?

According to MPEP 2811, a request for supplemental examination must be filed by the owner(s) of the entire right, title, and interest in the patent. This requirement is specified in 37 CFR 1.601(a). The MPEP explains: “This is because the scope of a patent may be changed (e.g., by cancellation or amendment of the claims)…

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Who can file a request for ex parte reexamination?

According to MPEP 2212, “any person” may file a request for ex parte reexamination of a patent, as stated in 35 U.S.C. 302 and 37 CFR 1.510(a). The MPEP specifically notes that: “Corporations and/or governmental entities are included within the scope of the term ‘any person.’“ This broad definition includes patentees, licensees, potential licensees, attorneys,…

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When can an ex parte reexamination be requested?

According to MPEP 2211, an ex parte reexamination can be requested “at any time during the period of enforceability of a patent“. This is established by 37 CFR 1.510(a). The period of enforceability is generally determined by adding 6 years to the patent’s expiration date, but may be extended in cases of pending litigation. To…

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When is an Ex Parte Reexamination Certificate issued?

An Ex Parte Reexamination Certificate is issued at the conclusion of an ex parte reexamination proceeding. According to MPEP 2288, the certificate is issued: “when the time for appeal has expired or any appeal proceeding has terminated” This means the certificate is issued after all opportunities for challenging the results of the reexamination have been…

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What is ex parte reexamination?

Ex parte reexamination is a procedure that allows any person to request a review of an issued patent at any time during its enforceability period. The process involves the United States Patent and Trademark Office (USPTO) examining the patent again to determine if there is a substantial new question of patentability. According to MPEP 2209,…

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