How does 35 U.S.C. 312(a) affect the determination in inter partes reexamination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 8 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. 35 U.S.C. 312(a) provides flexibility in the determination process for inter partes reexamination. According to MPEP 2644 : “35 U.S.C. 312(a) provides that the determination on a request will be made ‘with or without consideration of other patents or printed publications,’ i.e., other than those relied upon in the request.” This means that the examiner has the discretion to consider or not consider additional prior art beyond what was cited in the reexamination request. This provision allows for a more comprehensive evaluation of patentability when necessary, while also permitting efficiency when the cited art is sufficient for the determination. Related Rules from the Manual of Patent Examining Procedure 8 rules Collapse Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2644 Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2644 Third Parties Can Submit Printed Publications MPEP 1134.01 Reexamination Requests Prohibited After September 16, 2012 MPEP 1400.01 Permitted Requirement for Prior Filed Application Reference Before September 16, 2012 MPEP 1302.04 Required Reference to Prior Filed Application Required in ADS for New Filings MPEP 1302.04 Required Priority/ Benefit Claims Not Carried Over MPEP 1410 Oath/Declaration Requirement for Continuation Reissue Applications MPEP 1414 Required Other Related FAQs 5 FAQs Collapse When can an examiner perform additional prior art searches for reexamination? Can examiners use prior art not cited in the reexamination request? What claims are considered in the determination for patent reexamination? What prior art can be used in determining a substantial new question of patentability? What is the purpose of 37...