How are improper grounds for reexamination handled?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 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. Improper grounds for reexamination are those not based on prior art patents or printed publications. The MPEP provides guidance on how to handle such grounds: “If arguments are presented as to grounds not based on prior art patents or printed publications, such as those based on public use or on sale under 35 U.S.C. 102(b), or abandonment under 35 U.S.C. 102(c) for reexamination proceedings examined under the first-to-invent prior art regime, the examiner should note that such grounds are improper for reexamination and are not considered or commented upon. See 37 CFR 1.552(c) .” In essence, examiners should: Identify arguments based on improper grounds Note that these grounds are improper for reexamination Not consider or comment on these arguments in the decision Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Ex Parte Reexamination Consideration Limited to Patents and Publications MPEP 2217 Office May Initiate Reexamination of Non-Request Claim MPEP 2240 Permitted Office May Initiate Reexamination of Non-Requested Claims MPEP 2243 Permitted Initial Determination of Substantial New Question of Patentability MPEP 2209 Director Must Determine Substantial New Question of Patentability Within Three Months MPEP 2240 Director May Determine New Patentability Questions MPEP 2240 Permitted Director Must Determine Substantial New Question of Patentability Within 3 Months MPEP 2240 Examiner Can Examine Unrequested Claims MPEP 2243 Permitted Admissions by Patent Owner Can Support New Question of Patentability MPEP 2217 Prohibited New Question of Patentability Not Precluded by Previous Citations MPEP 2240 Other Related FAQs 5 FAQs Collapse What happens after a reexamination...