How should prior art be presented in an inter partes reexamination request?

When presenting prior art in an inter partes reexamination request, the MPEP 2614 provides specific guidelines:

1. Copy requirement: The request must include “a copy of every patent or printed publication relied upon or referred to in the request.” This ensures that the examiner has immediate access to all relevant prior art.
2. Translation requirement: “An English language translation of all necessary and pertinent non-English language patents or printed publications” must be provided. This is crucial for the examiner to understand the content of foreign language documents.
3. Detailed explanation: The request must contain “a detailed explanation of the pertinence and manner of applying the cited prior art to every claim for which reexamination is requested.” This explanation should clearly show how the prior art applies to each claim under review.
4. Claim mapping: While not explicitly stated, it’s best practice to provide a claim-by-claim analysis, showing how specific elements of the prior art correspond to each claim limitation.
5. Clear relevance: The prior art should be clearly relevant to the patentability of the claims. Mere cumulative references should be avoided.

By following these guidelines, requesters can ensure that their prior art presentation is comprehensive and compliant with USPTO requirements.

To learn more:

• inter partes reexamination
• prior art
• USPTO
• patent examination