What happens if a submission in an ex parte reexamination is not limited to bare notice of prior or concurrent proceedings?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 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. The USPTO has strict guidelines for submissions in ex parte reexamination proceedings. If a submission goes beyond providing bare notice of prior or concurrent proceedings, it may be rejected. The MPEP states: “Where a submission is not limited to bare notice of the prior or concurrent proceedings (in which a patent undergoing reexamination is or was involved), the submission will be returned, expunged or discarded by the Office.” This means that: Submissions must be limited to notifications only Additional arguments or information are not allowed Even highlighting text (e.g., underlining, using fluorescent markers) is considered to go beyond bare notice If a submission is rejected, the party may have the opportunity to limit the content to what is deemed relevant and resubmit the papers. It’s crucial for parties to adhere to these guidelines to ensure their submissions are accepted and considered in the reexamination proceeding. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Notification of Prior or Concurrent Proceedings Required During Ex Parte Reexamination MPEP 2282 Submission Must Be Bare Notice of Proceedings MPEP 2282 Limit Submission to Bare Notice of Proceedings MPEP 2282 Prohibited Requirement for Supplemental Examination Proceedings and Reviews MPEP 2282 Patent Owner Must Notify Office of Prior or Concurrent Proceedings MPEP 2282 Required Patent Owner Must Notify Office of Prior Proceedings MPEP 2282 Required Requirement for Proper Reexamination Submissions MPEP 2282 Updates to Patent File During Reexamination MPEP 2282 Excessive Submissions May Be Discarded MPEP 2282 Permitted Summaries of Litigation Arguments Not Entered MPEP 2282 Other Related FA...