MPEP - Chapter 2200 - Citation of Prior Art and Ex Parte ...

1 Chapter 2200 Citation of Prior Art and Ex Parte Reexamination of Patents 2201 Introduction 2227 Incomplete Request for Ex Parte 2202 Citation of Prior Art and Written Reexamination Filed under 35 Statements 302. 2203 Persons Who May Cite Prior Art or 2228 [Reserved]. Written Statements 2229 Notice of Request under 35 302. 2204 Time for Filing Prior Art or Section 301 for Ex Parte Reexamination in Official Written Statements Gazette 2205 Content of Prior Art or Section 301 2230 Constructive Notice to Patent Owner Written Statements 2231 Processing of Request Corrections 2206 Submission and Handling of Prior Art 2232 Public Access to Reexaminations Filed or Section 301 Written Statements under 35 302. 2207 Entry of Court Decision in Patent File Determining if a Reexamination 2208 Service of Prior Art or Section 301 Request Was Filed under 35 Written Statements on Patent Owner 302 for a Patent 2209 Ex Parte Reexamination 2233 Processing in Central Reexamination 2210 Request for Ex Parte Reexamination Unit and Technology Center under 35 302 2234 Entry of Amendments 2211 Time for Requesting Ex Parte 2235 Record Systems Reexamination under 35 302 2236 Assignment of Reexamination 2212 Persons Who May File a Request for 2237 Transfer Procedure Ex Parte Reexamination under 35 2238 Time Reporting 302 2239 Reexamination Ordered at the Inquiries from Persons Other Than Director's Initiative the Patent Owner 2240 Decision on Request Filed under 35.

2 2213 Representative of Requester 302. 2214 Content of Request for Ex Parte 2241 Time for Deciding Request Filed under Reexamination Filed under 35 35 302. 302 2242 Criteria for Deciding Request Filed 2215 Fee for Requesting Ex Parte under 35 302. Reexamination under 35 302 2243 Claims Considered in Deciding Request 2216 Substantial New Question of Filed under 35 302. Patentability 2244 Prior Art on Which the Determination 2217 Statement Applying Prior Art in a Is Based in Requests Filed under 35. Request Filed under 35 302 302. 2218 Copies of Prior Art 2245 Processing of Decision 2219 Copy of Printed Patent 2246 Decision Ordering Reexamination 2220 Certificate of Service under 35 304. 2221 Amendments Included in Request Filed 2247 Decision under 35 303 on under 35 302 by Patent Owner Request for Reexamination filed Under 2222 Address of Patent Owner 35 302, Request Denied 2223 Withdrawal of Attorney or Agent Examples of Decisions on Request 2224 Correspondence for Reexamination 2225 Untimely Paper Filed Prior to Order 2248 Petition From Denial of Request Filed under 35 304 Under 35 302.

3 2226 Initial Processing of Request for Ex 2249 Patent Owner's Statement in Parte Reexamination Filed under 35 Reexaminations Filed Under 35 302 302. 2250 Amendment by Patent Owner Correction of Patent Drawings 2200-1 Rev. , June 2020. 2201 MANUAL OF PATENT EXAMINING PROCEDURE. Correction of inventorship 2280 Information Material to Patentability Fees for Adding Claims and for Filing in Reexamination Proceeding Filed a Petition under 35 302. 2251 Reply by Third Party Requester 2281 Interviews in Ex Parte Reexamination 2252 Consideration of Statement and Reply Proceedings 2253 Consideration by Examiner 2282 Notification of Existence of Prior or 2254 Conduct of Ex Parte Reexamination Concurrent Proceedings and Decisions Proceedings Thereon 2255 Who Reexamines 2283 Multiple Copending Ex Parte 2256 Prior Art Patents and Printed Reexamination Proceedings Publications Reviewed by Examiner in 2284 Copending Ex Parte Reexamination Reexamination and Interference Proceedings 2257 Listing of Prior Art 2285 Copending Ex Parte Reexamination 2258 Scope of Ex Parte Reexamination and Reissue Proceedings Use of Previously Cited/Considered 2286 Ex Parte Reexamination and Litigation Art in Rejections Proceedings Claiming Foreign Priority and Reexamination and Inter Partes Domestic Benefit in Reexamination Review Proceedings.

4 Post-Grant 2259 Res Judicata and Collateral Estoppel Review, and Covered Business in Reexamination Proceedings Method Patent Review 2260 Office Actions 2287 Conclusion of Ex Parte Reexamination Dependent Claims Proceeding 2261 Special Status for Action Examiner Consideration of 2262 Form and Content of Office Action Submissions After a NIRC. 2263 Time for Response 2288 Issuance of Ex Parte Reexamination 2264 Mailing of Office Action Certificate 2265 Extension of Time 2289 Reexamination Review 2266 Responses 2290 Format of Ex Parte Reexamination Submission Not Fully Responsive to Certificate Non-Final Office Action 2291 Notice of Ex Parte Reexamination Examiner Issues Notice of Defective Certificate Issuance in Official Gazette Paper in Ex Parte Reexamination 2292 Distribution of Certificate Service of Papers 2293 Intervening Rights 2267 Handling of Inappropriate or Untimely 2294 Concluded Reexamination Proceedings Filed Papers 2295 Reexamination of a Reexamination 2268 Petition for Entry of Late Papers for 2296 USPTO Forms To Be Used In Ex Parte Revival of Reexamination Proceeding Reexamination 2269 Reconsideration 2270 Clerical Handling 2201 Introduction [ ].

5 2271 Final Action Panel Review Statutory basis for Citation of Prior art patents or 2272 After Final Practice printed publications in patent files and ex Parte 2273 Appeal in Ex Parte Reexamination reexamination of patents became available on July 2274 Appeal Brief 1, 1981, as a result of new sections 301-307 of title 2275 Examiner's Answer 35, United States Code, which were added by Public 2276 Oral Hearing Law 96-517, enacted on December 12, 1980. The 2277 Board Decision rules of practice in patent cases relating to 2278 Action Following Decision reexamination were initially promulgated on April 2279 Appeal to Courts 30, 1981, at 46 FR 24179-24180 and on May 29, 1981, at 46 FR 29176-29187. Rev. , June 2020 2200-2. Citation OF Prior ART AND EX Parte REEXAMINATION OF PATENTS 2201. The reexamination statute was amended on United States that presented at any time a claim that November 2, 2002, by Public Law 107-273, 116 had an effective filing date on or after March 16, Stat.

6 1758, 1899-1906 (2002) to expand the scope 2013, then the reexamination proceeding would be of what qualifies for a substantial new question of examined under the pre-AIA, first to invent, patentability upon which an ex Parte reexamination provisions. may be based (see MPEP 2242, subsection ), and made technical corrections to the statute. See This Chapter is intended to primarily be a guide for the 21st Century Department of Justice Patent and Trademark Office (Office) personnel Appropriations Authorization Act, TITLE III- on the processing of Prior art citations and ex Parte INTELLECTUAL PROPERTY, Subtitle A - Patent reexamination requests under 35 302, as well and Trademark Office, Section 13105, of the Patent as handling ex Parte reexamination proceedings. and Trademark Office Authorization Act of 2002 Second, it serves as a guide to the formal - Enacted as part of Public Law 107-273 on requirements for filing such documents in the Office.

7 November 2, 2002. It is noted that all citations in this Chapter to 35. discussing the first-to-invent Prior art regime On September 16, 2012, the Leahy-Smith America (as opposed to the first-inventor-to-file Prior art Invents Act (the AIA), Public Law 112-29, 125 Stat. regime) are to the relevant statute in effect Prior to 284, was enacted. The AIA expanded the scope of March 16, 2013. information that any party may cite in a patent file to include written statements of a patent owner filed Ex Parte Reexamination Proceedings Resulting in a proceeding before a federal court or the United from Supplemental Examination Proceedings: States Patent and Trademark Office (Office) Section 12 of the AIA added new 35 257, regarding the scope of any claim of the patent, and which provides for a proceeding titled "supplemental provides for how such information may be examination" that may be requested by the patent considered in ex Parte reexamination, inter partes owner to consider, reconsider, or correct information review, and post grant review.

8 The AIA also believed to be relevant to the patent in accordance provided for an estoppel that may attach with respect with requirements which have been established by to the filing of an ex Parte reexamination request the Office. The information that may be presented subsequent to a final written decision in an inter in a request for supplemental examination is not partes review or post grant review proceeding. limited to patents and printed publications, and may include, for example, issues of patentability under The AIA also provided for a first-inventor-to-file 35 101 and 35 112. If the Prior art regime to replace the first-to-invent Prior supplemental examination certificate, which is issued art regime, with respect to Prior art available to be under 35 257(a), states that a substantial new applied to claims. The Prior art regime under which question of patentability is raised by one or more the application for the patent was examined (the items of information in the request, ex Parte first-inventor-to-file Prior art regime, or the reexamination of the patent will be ordered under first-to-invent Prior art regime) will generally be 35 257.

9 See MPEP Chapter 2800 for guidance applied in the reexamination of the patent. However, on the procedures for supplemental examination there are rare exceptions. For example, a situation proceedings, and for procedures regarding the order may arise in which a benefit claim to an application and first Office action mailed in any ex Parte filed before March 16, 2013, is added in a reexamination proceeding ordered as a result of a reexamination proceeding based on an AIA patent. supplemental examination proceeding. If all of the claims that have ever been presented in the reexamination proceeding and the underlying Inter Partes Reexamination Proceedings: On patent are fully supported by the Prior application November 29, 1999, the American Inventors filed before March 16, 2013, and the application Protection Act of 1999 (the AIPA), Public Law which resulted in the patent subject to the 106-113 was enacted, and expanded reexamination reexamination proceeding did not claim, directly or by providing an inter partes option.

10 The AIPA. indirectly, the benefit of an application filed in the authorized the extension of reexamination 2200-3 Rev. , June 2020. 2201 MANUAL OF PATENT EXAMINING PROCEDURE. proceedings via an optional inter partes but instead accepts petitions to conduct inter partes reexamination procedure in addition to ex Parte review before the Board, where appropriate. For any reexamination. 35 311 - 318 (in effect for inter partes reexamination filed Prior to September inter partes reexaminations filed Prior to September 16, 2012, the provisions of 35 311 - 318 as 16, 2012) are directed to the optional inter partes they were in effect Prior to September 16, 2012, reexamination procedures. The final rules to continue to apply to the inter partes reexamination implement the optional inter partes reexamination proceedings. See MPEP Chapter 2600 for guidance were published in the Federal Register on December on the procedures for inter partes reexamination 7, 2000 at 65 FR 76756 and in the Official Gazette proceedings, as well as with respect to an ex Parte on January 2, 2001 at 1242 OG 12.