What are the restrictions on submitting copending reexamination proceedings and applications?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-30

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.

The USPTO has specific restrictions regarding the submission of copending reexamination proceedings and applications during inter partes reexamination. MPEP 2686 states:

“It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding number and its status.”

This restriction is in place to prevent confusion and maintain clarity in the reexamination file. Parties should limit their submissions to notifications about the existence and status of copending proceedings, rather than submitting full copies of documents from those proceedings.

Topics: MPEP 2600 - Optional Inter Partes Reexamination MPEP 2686 - Notification Of Existence Of Prior Or Concurrent Proceedings And Decisions Thereon Patent Law Patent Procedure
Tags: Copending Proceedings, inter partes reexamination, Submission Restrictions, USPTO Guidelines