How are admissions by the patent owner treated in ex parte reexamination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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. Admissions by the patent owner can be used in combination with patents or printed publications in ex parte reexamination. The MPEP states: “Admissions by the patent owner as to any matter affecting patentability may be utilized to determine the scope and content of the prior art in conjunction with patents and printed publications in a prior art rejection, whether such admissions result from patents or printed publications or from some other source.” These admissions can be from the patent file, made during the reexamination proceeding, or from litigation. However, admissions alone cannot form the basis for a substantial new question of patentability. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Admissions by Patent Owner Can Determine Prior Art Scope MPEP 2258 Permitted Prior Art Patents or Printed Publications Must Be Applied Under 102/103 MPEP 2258 Required Scope and Content of Prior Art Must Be Determined Using Admissions by Patent Owners MPEP 2258 New Question of Patentability Requires Claim Addition MPEP 2258 Permitted Admissions by Patent Owner Can Be Used in Reexamination for Anticipation and Obviousness Determinations MPEP 2258 Permitted Intervening Patents and Printed Publications as Prior Art in Reexamination MPEP 2258 Prohibited Admissions by Patent Owner Can Support New Question of Patentability MPEP 2258 Prohibited Admissions Can Modify Prior Art in Reexamination MPEP 2258 Permitted Rejections Must Be Based on Patents or Printed Publications Only MPEP 2258 Admissions by Patent Owner Must Be Used in Reexamination MPEP 2258 Permitted Other Related FAQs 5 FAQs Collapse How are claims construed in ex parte reexamination? How are claims interpreted i...