2201 Introduction
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Statutory basis for citation of prior art patents or printed publications in patent files and ex parte reexamination of patents became available on July 1, 1981, as a result of new sections enacted on December 12, 1980.
The reexamination statute was amended on November 2, 2002 to expand the scope of what qualifies for a substantial new question of patentability upon which an ex parte reexamination may be based and made technical corrections to the statute.
On September 16, 2012, the Leahy-Smith America Invents Act (the AIA) was enacted.
- The AIA expanded the scope of information that any party may cite in a patent file to include written statements of a patent owner filed in a proceeding before a Federal court or the United States Patent and Trademark Office (Office) regarding the scope of any claim of the patent, and provides for how such information may be considered in ex parte reexamination, inter partes review, and post grant review.
- The AIA also provided for an estoppel that may attach with respect to the filing of an ex parte reexamination request subsequent to a final written decision in an inter partes review or post grant review proceeding.
- The AIA also provided for first-inventor-to-file prior art regime to replace the first-to-invent prior art regime, with respect to prior art available to be applied to claims. The prior art regime under which the application for the patent was examined (the first-inventor-to-file prior art regime, or the first-to-invent prior art regime) will generally be applied in reexamination of the patent. However, there are rare exceptions.
For example, a situation may arise in which a benefit claim to an application filed before March 16, 2013, is added in a reexamination proceeding based on an AIA patent. If all the claims ever presented in the reexamination proceeding and underlying patent are fully supported by the prior application filed before March 16, 2013, and the application which resulted in the patent subject to the reexamination proceeding did not claim, directly or indirectly, the benefit of an application filed in the United States that presented at any time a claim that had an effective filing date on or after March 16, 2013, then the reexamination proceeding would be examined under the pre-AIA, first to invent, provisions.
A proceeding titled "supplemental examination" may be requested by the patent owner to consider, reconsider, or correct information believed to be relevant to the patent in accordance with requirements which have been established by the Office.
- The information that may be presented in a request for supplemental examination is not limited to patents and printed publications, and may include, for example, issues of patentability under 35 U.S.C. 101 and 112.
- If the supplemental examination certificate states that a substantial new question of patentability is raised by one or more items of information in the request, ex parte reexamination of the patent will be ordered
Inter partes reexamination: On November 29, 1999, the American Inventors Protection Act of 1999 (the AIPA) was enacted, and expanded reexamination by providing an “inter partes” option.
- The AIPA authorized the extension of reexamination proceedings via an optional inter partes reexamination procedure in addition to ex parte reexamination. 35 U.S.C. 311 - 318 are directed to the optional inter partes reexamination procedures.
Effective Sept. 16, 2012, the Leahy-Smith America Invents Act (the AIA), replaced the inter partes reexamination process that was established by the AIPA with an inter partes review process, such that (on or after September 16, 2012) the Office no longer entertains original requests for inter partes reexamination but instead accepts petitions to conduct inter partes review before the Board, where appropriate.
- For any inter partes reexamination filed prior to September 16, 2012, the provisions of 35 U.S.C. 311 – 318 as they were in effect prior to September 16, 2012, continue to apply to the inter partes reexamination proceedings.
