Can prior art be submitted during a reexamination proceeding?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
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 to reexamine will not be entered into the patent file until the pending reexamination proceeding has been concluded (37 CFR 1.501(c)), unless the submissions are submitted (A) by the patent owner, (B) by an ex parte reexamination requester who also submits the appropriate fee and other documents required under 37 CFR 1.510, (C) in an ex parte third party requester’s reply under 37 CFR 1.535, or (D) as an enterable submission pursuant to 37 CFR 1.948 in an inter partes reexamination proceeding.”
This rule is designed to prevent harassment of the patent owner through frequent submissions during reexamination proceedings.