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2280   Information Material to Patentability in Reexamination Proceeding Filed under 35 U.S.C. 302

MPEP SECTION SUMMARY

A prima facie case of unpatentability of a claim pending in a reexamination proceeding is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability. This section covers further information material to patentability in reexamination proceedings.

(c) The responsibility for compliance with this section rests upon the individuals designated in paragraph (a) of this section and no evaluation will be made by the Office in the reexamination proceeding as to compliance with this section. If questions of compliance with this section are raised by the patent owner or the third party requester during a reexamination proceeding, they will be noted as unresolved questions in accordance with § 1.552(c).

The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agent who represents the patent owner, and to every other individual who is substantively involved on behalf of the patent owner.

Such individuals are strongly encouraged to file information disclosure statements, within two months of the date of the order to reexamine, or as soon thereafter as possible, in order to bring the patents or printed publications to the attention of the Office.

It is to be noted that, to comply with 37 CFR 1.98(a) as to documents cited in the patent or its parent applications that a party wishes to submit, the party must supply copies of the information.

37 CFR 1.98(a)(2) requires a legible copy of:

  • each foreign patent;
  • each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
  • for each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion;
  • all other information or that portion which caused it to be listed.

 

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