How are new issues raised by a third-party requester handled in reexamination?

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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. When a third-party requester raises new issues in their reply during a reexamination proceeding, the examiner must determine whether these issues are within the scope of reexamination. MPEP 2253 provides guidance on this matter: “ If the requester’s reply to the patent owner’s statement raises issues not previously presented, such issues will be treated by the examiner in the Office action if they are within the scope of reexamination. However, if an issue raised by the third party requester in the reply is not within the scope of reexamination, it should be treated pursuant to 37 CFR 1.552(c). “ This means that new issues within the scope of reexamination will be addressed in the examiner’s Office action. Issues outside the scope of reexamination will be handled according to 37 CFR 1.552(c) , which outlines the procedure for dealing with matters not subject to reexamination. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Examiner Treats New Issues Raised by Third Party in Reexamination Within Scope MPEP 2253 Recommended Examiner Must Follow Patent Owner’s Statement Guidance MPEP 2253 Submissions Considered During First Office Action on Merits MPEP 2253 Examiner to Follow Specific Provisions for Considering Patent Owner’s Amendments MPEP 2253 Requirement for New Matter Handling MPEP 2253 Issues Not Resolved in Reexamination Must Be Addressed Through Reissue MPEP 2258 Permitted Third Party Requester Must File New Drawings Within One Month MPEP 2250.01 Recommended Third Party Requester Cannot Appeal MPEP 2273 Prohibited Suspension of Ex Parte Reexamination Proceeding MPEP 2283 Permitted Suspension of First Reexamination Proceeding for Reply Time MPEP 2283 Permitt...