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