How are prior art citations processed during inter partes reexamination?
The processing of prior art citations during inter partes reexamination is governed by 37 CFR 1.902. The regulation states: “Citations by the patent owner in accordance with ยง 1.933 and by an inter partes reexamination third party requester under ยง 1.915 or ยง 1.948 will be entered in the inter partes reexamination file.” However, the…
Read MoreCan procedural matters be discussed in inter partes reexamination proceedings?
Yes, questions on strictly procedural matters may be discussed with the parties in inter partes reexamination proceedings. The MPEP 2685 provides guidance: “Questions on strictly procedural matters may be discussed with the parties. The guidance to follow is that any information which a person could obtain by reading the file (which is open to the…
Read MoreHow are prior art submissions handled after an inter partes reexamination order is issued?
Prior art submissions made after an inter partes reexamination order is issued are handled differently than those submitted before the order. According to MPEP 2646: “Any prior art citations under 37 CFR 1.501 submitted after the date of the decision ordering inter partes reexamination are stored until the reexamination is concluded. Note 37 CFR 1.902.…
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 MoreHow is prior art considered in inter partes reexamination?
In inter partes reexamination, the consideration of prior art is limited to specific types of documents. According to MPEP 2609: Prior art considered during reexamination is limited to prior patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103; This means that only patents and printed publications can be used…
Read MoreWhat prior art must an examiner consider during inter partes reexamination?
During inter partes reexamination, an examiner must consider various sources of prior art, including: Patents and printed publications cited in the reexamination request Prior art cited by other reexamination requesters Prior art submitted by the patent owner under the duty of disclosure Prior art discovered by the examiner during searching Prior art of record from…
Read MoreHow should prior art be presented in an inter partes reexamination request?
When presenting prior art in an inter partes reexamination request, the MPEP 2614 provides specific guidelines: Copy requirement: The request must include “a copy of every patent or printed publication relied upon or referred to in the request.” This ensures that the examiner has immediate access to all relevant prior art. Translation requirement: “An English…
Read MoreWhat is the process for preparing an inter partes reexamination file for publication of the certificate?
The process for preparing an inter partes reexamination file for publication of the certificate involves several steps: The examiner completes an Examiner Checklist Reexamination form (PTOL-1516). The Legal Instrument Examiner (LIE) completes a Reexamination Clerk Checklist form (PTOL-1517). The case is reviewed by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology…
Read MoreHow are premature comments by third party requesters handled in inter partes reexamination?
Premature comments by third party requesters in inter partes reexamination are not considered and will be expunged. According to MPEP 2667: “Any comments filed by a third party requester subsequent to the request for reexamination (i.e., not part of it) and prior to the first Office action is premature and will not be considered, and…
Read MoreHow are premature responses by patent owners handled in inter partes reexamination?
Premature responses by patent owners in inter partes reexamination are not considered and will be expunged. According to MPEP 2667: “Any response/comments as to materials of record or any amendment filed by the patent owner prior to the first Office action is premature and will not be considered, and will be expunged.” This is based…
Read More