What types of arguments are not considered in a reexamination request?
In a reexamination request, only arguments based on prior art patents or printed publications are considered. The MPEP specifically states:
“If arguments are presented as to grounds not based on prior art patents or printed publications, such as those based on public use or on sale under 35 U.S.C. 102(b), or abandonment under 35 U.S.C. 102(c), the examiner should note that such grounds are improper for reexamination and are not considered or commented upon.”
This means that arguments related to:
- Public use
- On-sale activities
- Abandonment
are not appropriate for reexamination proceedings and will not be addressed by the examiner in the decision. The focus of reexamination is solely on issues that can be evidenced by patents or printed publications.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2647 - Decision Denying Reexamination,
Patent Law,
Patent Procedure