What sources of prior art must an examiner consider during ex parte reexamination?
During ex parte reexamination, an examiner must consider several sources of prior art, including:
- Patents and printed publications cited in the reexamination request
- Prior art cited by other reexamination requesters
- Prior art cited in the patent owner’s statement or requester’s reply
- Prior art cited by the patent owner under duty of disclosure
- Prior art discovered by the examiner during searching
- Prior art of record from earlier examination
- Prior art from 37 CFR 1.501 submissions before the reexamination order
As stated in the MPEP: Subject to the discussion provided below in this section, the examiner must also consider patents and printed publications: (A) cited by another reexamination requester under 37 CFR 1.510 or 37 CFR 1.915; (B) cited in a patent owner’s statement under 37 CFR 1.530 or a requester’s reply under 37 CFR 1.535 if they comply with 37 CFR 1.98; (C) cited by the patent owner under a duty of disclosure (37 CFR 1.555) in compliance with 37 CFR 1.98; (D) discovered by the examiner in searching; (E) of record in the patent file from earlier examination; and (F) of record in the patent file from any 37 CFR 1.501 submission prior to date of an order if it complies with 37 CFR 1.98.
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