What issues are not considered in inter partes 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.

Inter partes reexamination is limited in scope and does not consider all potential issues related to patent validity. According to the MPEP, the following issues are not considered:

• Public use or on-sale activities
• Conduct issues
• Abandonment under pre-AIA 35 U.S.C. 102(c)
• Other issues not based on patents or printed publications

The MPEP states: “If questions other than those indicated above (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under pre-AIA 35 U.S.C. 102(c), etc.) are raised by the third party requester or the patent owner during a reexamination proceeding, the existence of such questions may be noted by the examiner in the next Office action.”

These issues are outside the scope of reexamination and will not be considered or resolved in the proceeding.