How does the degree of consideration for submitted prior art differ in ex parte reexamination?

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 ex parte reexamination, the degree of consideration given to submitted prior art depends on how the information is presented. The MPEP states:

“Where patents, publications, and other such documents are submitted by a party (patent owner or requester) in compliance with the requirements of the rules, the requisite degree of consideration to be given to such information will be normally limited by the degree to which the party filing the information citation has explained the content and relevance of the document.”

This means that the examiner’s consideration of submitted prior art is influenced by the explanation provided by the submitting party. A more detailed explanation of the relevance of the prior art is likely to result in more thorough consideration by the examiner.