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 2656    Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination  

MPEP SECTION SUMMARY Typically, the primary source of prior art reviewed by the examiner in the reexamination will be the patents and printed publications cited in the request for inter partes reexamination. Further details on the exact patents and printed publications the examiner will also need to consider are outlined in this section. This section also discusses what happens after the Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) has been mailed. Essentially, once the NIRC has been mailed, the reexamination proceeding must proceed to publication of the Reexamination Certificate as soon as possible.

Subject to the discussion provided below in this section, the examiner must also consider patents and printed publications:

• (A) cited by another reexamination requester;
• (B) cited by the patent owner under a duty of disclosure;
• (C) discovered by the examiner in searching;
• (D) of record in the patent file from earlier examination;
• (E) of record in the patent file from any 37 CFR 1.501 submission prior to date of an order if it complies with 37 CFR 1.98; and
• (F) cited by the third party requester under appropriate circumstances pursuant to 37 CFR 1.948.

As to (B) and (E) above, 37 CFR 1.98(a)(2) requires a legible copy of:

• (1) each foreign patent;
• (2) 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;
• (3) for each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to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;
• (4) all other information or that portion which caused it to be listed.

AFTER THE NOTICE OF INTENT TO ISSUE INTER PARTES REEXAMINATION CERTIFICATE (NIRC):

Once the NIRC has been mailed, the reexamination proceeding is forwarded for publication of the reexamination certificate.

Thus, when the patent owner provides a submission of patents and printed publications or other information described in 37 CFR 1.98(a) after the NIRC has been mailed the proceeding has entered the publication process for printing the reexamination certificate.

For this reason, the submission must be accompanied by:

• (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier,
• (B) an unequivocal statement that one or more claims are unpatentable, and
• (C) an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable.
  
  
  

MPEP SECTION SUMMARY The reexamination request must provide a listing of the patents and printed publications (discussed in the request). The examiner must list all prior art patents or printed publications which have been cited in the decision on the request, applied in making rejections or cited as being pertinent during the reexamination proceedings. Such prior art patents or printed publications may have come to the examiner’s attention because they were of record in the patent file due to a prior art submission which was received prior to the date of the order; of record in the patent file as result of earlier examination proceedings as to the patent; discovered by the examiner during a prior art search; or submitted pursuant to 37 CFR 1.948.

 

» 2658 Scope of Inter Partes Reexamination