How are issues outside the scope of reexamination handled in inter partes proceedings?
In inter partes reexamination proceedings, issues that fall outside the scope of reexamination are noted but not considered. According to MPEP 2671.01:
“If questions not within the scope of reexamination proceedings (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under 35 U.S.C. 102) have been newly raised by the patent owner response or the third party requester comments being addressed by the present Office action, the existence of such questions will be noted by the examiner in the Office action, using form paragraph 26.03.”
Key points to note:
- Issues outside the scope are only noted if raised by the patent owner or third party requester.
- The examiner should not independently raise such issues.
- These issues will not be considered in the reexamination proceeding.
- The basis for this practice is 37 CFR 1.906(c).
Examiners use a specific form paragraph (26.03) to address these out-of-scope issues in their Office actions, clearly stating that the issue will not be considered in the present proceeding.
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