How detailed should the statement applying prior art be in an inter partes reexamination request?
The statement applying prior art in an inter partes reexamination request should be sufficiently detailed to explain how each item of prior art applies to every claim for which reexamination is requested. The MPEP 2617 states: “The particularity should be equivalent to that usually present in a prior art rejection statement in an Office action…
Read MoreCan a requester include arguments about non-prior art issues in the statement applying prior art?
No, a requester should not include arguments about non-prior art issues in the statement applying prior art for an inter partes reexamination request. The MPEP 2617 clearly states: “The statement applying the prior art is not intended as an opportunity for a requester to propose rejections based on 35 U.S.C. 101, 112, 102, and 103…
Read MoreWhat happens if the statement applying prior art is insufficient in an inter partes reexamination request?
If the statement applying prior art in an inter partes reexamination request is insufficient, the request may be denied. The MPEP 2617 explains: “If the required statement applying the prior art is not included in the request, the request will be denied.” An insufficient statement could include: Failing to address all claims for which reexamination…
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