What is a “substantial new question of patentability” in ex parte reexamination?

A “substantial new question of patentability” is a key requirement for initiating an ex parte reexamination. As stated in MPEP 2209: “The Office initially determines if ‘a substantial new question of patentability’ (35 U.S.C. 303(a)) is presented. If such a new question has been presented, reexamination will be ordered.“ This requirement ensures that the USPTO…

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What are the requirements for submitting copies of prior art in ex parte reexamination?

In ex parte reexamination, there are specific requirements for submitting copies of prior art. According to MPEP 2256: “37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the…

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What are the differences between “streamlined” and “non-streamlined” ex parte reexamination requests?

The main differences between “streamlined” and “non-streamlined” ex parte reexamination requests are: Filing Fee: Streamlined requests: Lower fee under 37 CFR 1.20(c)(1) Non-streamlined requests: Higher fee under 37 CFR 1.20(c)(2) Page Limit: Streamlined requests: 40 or fewer pages Non-streamlined requests: More than 40 pages Formatting Requirements: Streamlined requests: Must meet specific formatting requirements (e.g., line…

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How does the certification regarding statutory estoppel affect ex parte reexamination requests?

The certification regarding statutory estoppel is a requirement for third-party requesters filing ex parte reexamination requests. As stated in the MPEP: “37 CFR 1.510(b)(6) requires that the request contain a certification by the third party requester that the statutory estoppel provisions of inter partes review and post grant review do not bar the third party…

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How does the “special dispatch” requirement affect prior art submissions in ex parte reexamination?

The “special dispatch” requirement, as mandated by 35 U.S.C. 305, significantly affects prior art submissions in ex parte reexamination, especially after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) has been mailed. The MPEP explains: “To automatically delay prosecution by pulling the proceeding from that process when such a submission has been…

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What is the importance of special dispatch in ex parte reexamination proceedings?

Special dispatch is a crucial aspect of ex parte reexamination proceedings, as mandated by law. The MPEP states: Pursuant to 35 U.S.C. 305, all ex parte reexamination proceedings must be conducted with special dispatch within the Office. This applies to the transfer of reexamination proceedings. This requirement ensures that reexamination proceedings, including any transfers, are…

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