How are third-party requester replies considered in reexamination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 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. In a reexamination proceeding, the examiner must consider replies submitted by third-party requesters. MPEP 2253 provides guidance on this matter: “ As to consideration of a reply by a third party requester, the examiner will be guided by 37 CFR 1.535. “ This means that the examiner will follow the rules set forth in 37 CFR 1.535 when evaluating a third-party requester’s reply. The MPEP further states: “ 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 is outside the scope of reexamination, it will be handled according to 37 CFR 1.552(c) , which outlines how to deal with matters not subject to reexamination. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Examiner Must Follow Patent Owner’s Statement Guidance MPEP 2253 Examiner Treats New Issues Raised by Third Party in Reexamination Within Scope MPEP 2253 Recommended Submissions Considered During First Office Action on Merits MPEP 2253 Examiner to Follow Specific Provisions for Considering Patent Owner’s Amendments MPEP 2253 Mailing Requirement for Third Party Requesters in Ex Parte Reexamination MPEP 2264 Requirement for New Matter Handling MPEP 2253 Issues Not Resolved in Reexamination Must Be Addressed Through Reissue MPEP 2258 Permitted Third Party Requester Cannot Appeal MPEP 2273 Prohibited Third Party Requester Must File New Drawings Within One Month MPEP 2250.01 Recommended Suspension of Ex Parte Reexamination Proceeding MPEP 2283 Permitted Other Related FAQs 5 FAQs Collapse What guidelin...