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 2658    Scope of Inter Partes Reexamination  

MPEP SECTION SUMMARY Inter partes reexamination differs from ex parte reexamination in matters of procedure, such as when the third party requester can participate, the types of Office actions and the timing of issuance of the Office actions, and the requirement for identification of the real party in interest. Inter partes reexamination also differs from ex parte reexamination in the estoppel effect it provides as to the third party requesters and when the initiation of a reexamination is prohibited. Inter partes reexamination does not, however, differ from ex parte reexamination as to the substance to be considered in the proceeding. This section discusses prior art patents or printed publications and double patenting, compliance with 35 U.S.C. 112, the criteria for enlargement of the scope of the claims, and other matters related to the scope of inter partes reexamination.

 

I.   PRIOR ART PATENTS OR PRINTED PUBLICATIONS, AND DOUBLE PATENTING

Rejections on art in inter partes reexamination proceedings may only be made on the basis of prior art patents or printed publications under the first-to-invent prior art regime, or double patenting.

II.   COMPLIANCE WITH 35 U.S.C. 112

Where new or amended claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding are to be examined for compliance with 35 U.S.C. 112.

III.   CLAIMS IN PROCEEDING MUST NOT ENLARGE SCOPE OF THE CLAIMS OF THE PATENT

Where new claims are presented, or where any part of the disclosure is amended, the claims of the inter partes reexamination proceeding should be examined under 35 U.S.C. 314, to determine whether they enlarge the scope of the original claims.

A.   Criteria for Enlargement of the Scope of the Claims

A claim presented in a reexamination proceeding enlarges the scope of the claims of the patent being reexamined where the claim is broader than each and every claim of the patent.

B.   Amendment of the Specification

Where the specification is amended in a reexamination proceeding, the examiner should make certain that the amendment to the specification does not enlarge the scope of the claims of the patent.

• An amendment to the specification can enlarge the scope of the claims by redefining the scope of the terms in a claim, even where the claims are not amended in any respect.

C.   Rejection of Claims Where There Is Enlargement

Any claim which enlarges the scope of the claims of the patent should be rejected under 35 U.S.C. 314(a).

IV.   OTHER MATTERS

A.   Patent Under Reexamination Subject of a Prior Office or Court Decision

Patent claims not subject to reexamination because of their prior adjudication by a court should be identified.

Where grounds set forth in a prior Office or Federal Court decision, are not based on patents or printed publications, yet clearly raise questions as to the claims, the examiner’s Office action should clearly state that the claims have not been examined as to those grounds not based on patents or printed publications nor applicable portions of 35 U.S.C. 112 stated in the prior decision.

B.   “Live” Claims That Are Reexamined During Reexamination

The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the “live” claims (i.e., existing claims not held invalid by a final decision, after all appeals) for which reexamination has been requested.

C.   Restriction Not Proper in Reexamination

Restriction requirements cannot be made in a reexamination proceeding since no statutory basis exists for restriction in a reexamination proceeding.

• Note also that the addition of claims to a “separate and distinct” invention to the patent would be considered as being an enlargement of the scope of the patent claims and therefore are prohibited during reexamination.

D.   Ancillary Matters

There are matters ancillary to reexamination which are necessary and incident to patentability which will be considered.

• Amendments may be made to the specification to correct, for example, an inadvertent failure to claim foreign priority or the continuing status of the patent relative to a parent application if such correction is necessary to overcome a reference applied against a claim of the patent.

E.   Claiming Foreign Priority or Domestic Benefit in Reexamination

See MPEP §2258.02 for guidance on claiming foreign priority or domestic benefit in a reexamination proceeding.

F.   Correction of Inventorship

Correction of inventorship may also be made during reexamination if a petition filed under 37 CFR 1.324 is granted, a Certificate of Correction indicating the change of inventorship will not be issued, because the reexamination certificate that will ultimately issue will contain the appropriate change-of-inventorship information (i.e., the Certificate of Correction is in effect merged with the reexamination certificate).

G.   Affidavits in Reexamination

Affidavits under 37 CFR 1.131(a) and 1.132 may be utilized in a reexamination proceeding.

H.   Issues Not Considered in Reexamination

If questions other than those indicated above (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under pre-AIA 35 U.S.C. 102(c), etc.) are raised by the third party requester or the patent owner during a reexamination proceeding, the existence of such questions may be noted by the examiner in the next Office action.

I.   Request for Reexamination Filed on Patent after it Has Been Reissued

Where a request for reexamination is filed on a patent after it has been reissued, reexamination will be denied because the patent on which the request for reexamination is based has been surrendered.

• Should reexamination of the reissued patent be desired, a new request for reexamination including, and based on, the specification and claims of the reissue patent must be filed.

Any amendment made by the patent owner in the prosecution of the reexamination proceeding, should treat the changes made by the granted reissue patent as the text of the patent, and all bracketing and underlining made with respect to the patent as changed by the reissue.

 

» 2659 Res Judicata and Collateral Estoppel in Reexamination Proceedings