What are the requirements for submitting copies of prior art in ex parte reexamination?
In ex parte reexamination, there are specific requirements for submitting copies of prior art. According to MPEP 2256:
“37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office; (3) for each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion; (4) all other information or that portion which caused it to be listed.”
However, it’s important to note that copies of copending reexamination proceedings and applications should not be submitted. Instead, parties should provide the application/proceeding number and its status.
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