How are prior art submissions handled after an inter partes reexamination order is issued?

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.

Prior art submissions made after an inter partes reexamination order is issued are handled differently than those submitted before the order. According to MPEP 2646:

“Any prior art citations under 37 CFR 1.501 submitted after the date of the decision ordering inter partes reexamination are stored until the reexamination is concluded. Note 37 CFR 1.902. After the reexamination proceeding is concluded, the submission is entered in the patent file.”

It’s important to note that:

• Submissions filed after the reexamination order will not be considered by the examiner during the reexamination.
• 37 CFR 1.902 governs submissions of prior art that can be made by patent owners and third party requesters after reexamination has been ordered.
• Written statements under 37 CFR 1.501 are not permitted to be filed in an inter partes reexamination.

This approach ensures that the reexamination proceeds efficiently based on the art considered in the original order, while still preserving newly submitted art for future consideration.