What is required from the requester when filing for inter partes reexamination?
When filing for inter partes reexamination, the requester must provide specific information for each claim they want reexamined. According to MPEP 2643, “35 U.S.C. 311(b)(2) requires that a requester ‘set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.’” This means the requester must explain how…
Read MoreWhat happens if a requester fails to apply cited prior art to all claims in a reexamination request?
If a requester fails to apply cited prior art to all claims in a reexamination request, those claims not addressed may not be reexamined. The MPEP 2243 states: If the requester fails to apply the art to certain claims, then the requester is not statutorily entitled to reexamination of such claims. If a request fails…
Read MoreHow should prior art be applied in an ex parte reexamination request?
When applying prior art in an ex parte reexamination request, the requester must: Provide a detailed explanation of how each cited prior art reference applies to each claim for which reexamination is requested Present the explanation in a clear and organized manner, preferably using claim charts For obviousness rejections, provide at least one basis for…
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