What can a third party requester include in their reply during 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.

According to MPEP 2251, a third party requester’s reply in an ex parte reexamination can be quite comprehensive. The MPEP states:

“The reply need not be limited to the issues raised in the statement. The reply may include additional prior art patents and printed publications and may raise any issue appropriate for reexamination.”

This means that the requester can introduce new prior art and arguments beyond those initially presented or addressed in the patent owner’s statement, as long as they are relevant to the reexamination proceeding.