What types of prior art can be cited in a request for ex parte reexamination under 35 U.S.C. 302?
According to MPEP 2244, the types of prior art that can be cited in a request for ex parte reexamination under 35 U.S.C. 302 are: Patents Printed publications The MPEP states: “The prior art that may be submitted under 35 U.S.C. 302 is limited to ‘patents or printed publications.’” This means that other forms of…
Read MoreCan prior art be submitted during a reexamination proceeding?
While prior art can generally be submitted during the enforceability period of a patent, there are specific rules for submissions during reexamination proceedings. According to MPEP 2204: “While submission under 35 U.S.C. 301 may be filed at any time during the period of enforceability of the patent, submissions filed after the date of any order…
Read MoreWhat are the requirements for submitting prior art after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC)?
Submitting prior art after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) requires meeting specific conditions due to the statutory mandate for “special dispatch” in reexamination proceedings. The MPEP states: “[T]he submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have…
Read MoreWhat sources of prior art must an examiner consider during ex parte reexamination?
During ex parte reexamination, an examiner must consider several sources of prior art, including: Patents and printed publications cited in the reexamination request Prior art cited by other reexamination requesters Prior art cited in the patent owner’s statement or requester’s reply Prior art cited by the patent owner under duty of disclosure Prior art discovered…
Read MoreWhat are the requirements for prior art to be considered in an ex parte reexamination?
For prior art to be considered in an ex parte reexamination under 35 U.S.C. 302, it must meet specific requirements. According to MPEP 2244: Type of prior art: Only patents and printed publications are acceptable. Relevance: The prior art must be relevant to the claimed invention. Date of publication: The prior art must have been…
Read MoreHow is prior art handled in ex parte reexamination after the order is issued?
The handling of prior art in ex parte reexamination after the order is issued is governed by specific rules. According to MPEP 2246: Prior art citations or written statements under 37 CFR 1.501 submitted after the date of the decision on the order are stored until the reexamination is concluded. After the reexamination proceeding is…
Read MoreWhat types of prior art can be considered in ex parte reexamination?
In ex parte reexaminations ordered under 35 U.S.C. 304, the types of prior art that can be considered are limited. According to MPEP 2209: “In ex parte reexaminations ordered under 35 U.S.C. 304, prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C.…
Read MoreHow does the degree of consideration for submitted prior art differ in ex parte reexamination?
In ex parte reexamination, the degree of consideration given to submitted prior art depends on how the information is presented. The MPEP states: “Where patents, publications, and other such documents are submitted by a party (patent owner or requester) in compliance with the requirements of the rules, the requisite degree of consideration to be given…
Read MoreCan previously considered art raise a substantial new question of patentability?
Yes, previously considered art can raise a substantial new question of patentability under certain circumstances. The MPEP 2216 clarifies: “The substantial new question of patentability may be based on art previously considered by the Office if the reference is presented in a new light or a different way that escaped review during earlier examination.” This…
Read MoreHow should patent owners prepare for an interview in an ex parte reexamination proceeding?
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281: Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted. If granted, file the following at least three working days prior to the interview: An…
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