What is the purpose of the statement applying prior art in an inter partes reexamination request?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 8 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 purpose of the statement applying prior art in an inter partes reexamination request is to explain how the cited prior art is applicable to the claims of the patent for which reexamination is requested. According to MPEP 2617 : “The request must include a statement applying the cited prior art (the patents and printed publications) to every claim for which reexamination is requested.” This statement helps the USPTO examiner understand the requester’s perspective on why the cited prior art is relevant and potentially invalidates the patent claims. Related Rules from the Manual of Patent Examining Procedure 8 rules Collapse Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2617 Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2617 Reexamination Requests Prohibited After September 16, 2012 MPEP 1400.01 Permitted Published SIR Treated as Patent for Defensive Purposes MPEP 1111 Third Parties Can Submit Printed Publications MPEP 1134.01 Reissue Application Must Include PTO/AIA/50 MPEP 1410 Recommended Request for Inventorship Correction Before September 16, 2012 MPEP 1004 Timely SIR Requests Before March 16, 2013 MPEP 1101 Other Related FAQs 5 FAQs Collapse What alternatives are available for challenging patents after the discontinuation of inter partes reexamination? What happens if the statement applying prior art is insufficient in an inter partes reexamination request? Can a requester include arguments about non-prior art issues in the statement applying prior art? How detailed should the statement applying prior art be in an inter partes reexamination request? How does 35 U.S.C. 312(a) affect the determination in inter partes reexamination?