What should be included in a patent owner’s statement during ex parte reexamination?
A patent owner’s statement during ex parte reexamination should address the patentability of the claims in light of the prior art cited in the request. According to MPEP 2252, the statement may include:
- An explanation of why the patent claims are patentable
- Any proposed amendments to the claims
- New claims proposed to be added
The MPEP further states:
“Any statement filed by the patent owner must clearly point out why the subject matter as claimed is not anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any reasonable combinations.”
It’s crucial for the patent owner to provide a comprehensive and well-reasoned response to the reexamination request to defend the patent’s validity.
To learn more:
Topics:
MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents,
MPEP 2252 - Consideration Of Statement And Reply,
Patent Law,
Patent Procedure