How did the America Invents Act (AIA) affect prior art citations in inter partes reexamination?
The Leahy-Smith America Invents Act (AIA) introduced new provisions for submitting information in patent proceedings, but it did not significantly alter the process for prior art citations in inter partes reexamination. According to MPEP 2602:
“The Leahy-Smith America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, enacted September 16, 2011, provided, under 35 U.S.C. 301(a)(2) for submission of ‘statements of the patent owner filed in a proceeding before a federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent’; however, there is no provision of the statute that applies a submission under 35 U.S.C. 301(a)(2) to an ongoing inter partes reexamination. Thus, a submission under 35 U.S.C. 301(a)(2) is not proper for an inter partes reexamination.”
In essence, while the AIA expanded the types of information that could be submitted in some patent proceedings, these changes did not apply to ongoing inter partes reexaminations. The process for citing prior art in inter partes reexamination remained largely unchanged by the AIA.
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