What are the requirements for submitting information after the Notice of Intent to Issue Reexamination Certificate (NIRC)?
Submitting information after the Notice of Intent to Issue Reexamination Certificate (NIRC) requires meeting specific criteria due to the advanced stage of the reexamination process. According to MPEP 2656, the submission must be accompanied by: A factual accounting providing a sufficient explanation of why the information could not have been submitted earlier An unequivocal statement…
Read MoreWhat are the requirements for submitting foreign patents and publications in reexamination?
When submitting foreign patents and publications in a reexamination proceeding, there are specific requirements that must be met. According to MPEP 2656: “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…
Read MoreCan copies of copending reexamination proceedings be submitted during reexamination?
No, copies of copending reexamination proceedings should not be submitted during a reexamination. The MPEP 2656 clearly states: “It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide the application/proceeding serial/control number and its…
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 are documents submitted by parties considered in reexamination?
In reexamination proceedings, the consideration given to documents submitted by parties (patent owner or requester) is typically limited by how well the submitting party has explained the content and relevance of those documents. According to MPEP 2656: “Where patents, publications, and other such documents are submitted by a party (patent owner or requester) in compliance…
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