What types of documents can third parties submit during an ex parte reexamination proceeding?
During an ex parte reexamination proceeding, third parties are generally not allowed to make submissions after the reexamination order is issued. However, the USPTO will accept certain documents to ensure a complete file with updated status information. These include:
- Copies of notices of suits involving the patent
- Copies of decisions or papers filed in court from litigations involving the patent
It’s important to note that only specific types of documents are accepted. As stated in the MPEP:
“Such decisions include final court decisions (even if the decision is still appealable), decisions to vacate, decisions to remand, and decisions as to the merits of the patent claims. Non-merit decisions on motions such as for a new venue, a new trial/discovery date, or sanctions will not be entered into the patent file, and will be expunged from the patent file if they were entered before discovery of their nature.”
Submissions must be limited to notifications only and should not include additional arguments or information.
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