What is required from the requester when filing for inter partes reexamination?
When filing for inter partes reexamination, the requester must provide specific information for each claim they want reexamined. According to MPEP 2643, “35 U.S.C. 311(b)(2) requires that a requester ‘set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.'” This means the requester must explain how the cited prior art applies to each claim they want reviewed. Failure to do so may result in those claims not being reexamined: “If requester fails to apply the art to certain claims, requester is not statutorily entitled to reexamination of such claims.”
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2643 - Claims Considered In Deciding Request,
Patent Law,
Patent Procedure