What 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 MoreCan oral presentations qualify as prior art under the “printed publication” category?
Oral presentations alone typically do not qualify as “printed publications” for prior art purposes. However, materials associated with an oral presentation may qualify under certain circumstances. MPEP 2128 states: “An oral presentation at a scientific meeting or a demonstration at a trade show may be prior art under 35 U.S.C. 102(a)(1)’s provision: ‘otherwise available to…
Read MoreCan non-patent literature be used as prior art in ex parte reexamination requests?
Yes, non-patent literature can be used as prior art in ex parte reexamination requests, provided it qualifies as a “printed publication.” The MPEP 2244 states: “The prior art that may be submitted under 35 U.S.C. 302 is limited to ‘patents or printed publications.’” Printed publications can include various forms of non-patent literature such as: Scientific…
Read MoreHow should prior art patents and printed publications be cited in an inter partes reexamination request?
When citing prior art patents and printed publications in an inter partes reexamination request, follow these guidelines from MPEP 2614: Provide a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. Include copies of all cited patents or printed publications, except those already…
Read MoreWhat is the “Bayer” rule for determining public accessibility of printed publications?
The “Bayer” rule, established in In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978), is a guideline for determining public accessibility of printed publications. According to MPEP 2128: “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in…
Read MoreWhat is the basis for determining a “substantial new question of patentability” in ex parte reexamination?
The determination of a “substantial new question of patentability” under 35 U.S.C. 303(a) can be based on any prior art patents or printed publications. The MPEP states: “The determination under 35 U.S.C. 303(a) whether or not ‘a substantial new question of patentability’ is present can be based upon any prior art patents or printed publications.”…
Read MoreWhat are the main provisions for third-party submissions in patent applications?
The MPEP outlines two main provisions for third-party submissions in patent applications: 35 U.S.C. 122(c): This provision prohibits protests or pre-issuance opposition after publication of an application without the applicant’s express written consent. It is implemented by 37 CFR 1.291. 35 U.S.C. 122(e): This provision allows third parties to submit printed publications relevant to the…
Read MoreHow can patent examiners use A.P.C. published applications in patent examination?
Patent examiners can use A.P.C. published applications as prior art in patent examination, but with specific limitations. According to the MPEP: An A.P.C. published application may be used by the examiner as a basis for rejection only as a printed publication effective from the date of publication, which is printed on each copy. This means…
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