What are the requirements for submitting foreign patents and publications in reexamination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 7 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. When submitting foreign patents and publications in a reexamination proceeding, there are specific requirements that must be met. According to MPEP 2656 : “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;” This means that for foreign patents and non-U.S. publications, the submitting party must provide: A legible copy of each foreign patent A legible copy of each publication or at least the portion that is relevant to the reexamination It’s important to note that U.S. patents and U.S. patent application publications generally do not need to be submitted unless specifically required by the Office. Ensuring compliance with these requirements helps facilitate efficient examination and consideration of the submitted prior art. Related Rules from the Manual of Patent Examining Procedure 7 rules Collapse Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2656 No Inter Partes Reexamination After September 16, 2012 MPEP 2656 Third Parties Can Submit Printed Publications MPEP 1134.01 Components Required for Patent Application Publication MPEP 1121 Reexamination Requests Prohibited After September 16, 2012 MPEP 1400.01 Permitted Assignee Data Must Be Submitted on ADS for Publication After September 16, 2012 MPEP 1121 Required Compliance with CFR 41.37 for Post-2012 Appeals MPEP 1205.02 Required Other Related FAQs 5 FAQs Collapse How are documents submitted by parties considered in reexamination? What prior art must an examiner consider during inter partes reexamination? Can copies of copending reexami...