2207 Entry of Court Decision in Patent File
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2209 Ex Parte Reexamination
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The reexamination proceedings which follow the order for reexamination are very similar to regular examination procedures in patent applications; however, there are notable differences.
- For example, there are certain limitations as to the kind of rejections which may be made, special reexamination forms to be used, and time periods set to provide “special dispatch.”
- When the prosecution of a reexamination proceeding is terminated, a reexamination certificate is issued which indicates the status of all claims following the reexamination.
- Unless prosecution is reopened by the Director, the reexamination proceeding is concluded by the issuance and publication of a reexamination certificate.
The basic characteristics of ex parte reexamination are as follows:
- (A) Anyone can request reexamination at any time during the period of enforceability of the patent;
- (B) In ex parte reexaminations, prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103. Patents may also be applied in a double patenting rejection;
- (C) A substantial new question of patentability must be present for reexamination to be ordered;
- (D) If ordered, the actual reexamination proceeding is ex parte in nature;
- (E) Decision on a request for reexamination submitted under 35 U.S.C. 302 must be made no later than 3 months from its filing, and the remainder of the proceeding must proceed with “special dispatch” within the Office;
- (F) If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of a reexamination certificate;
- (G) The scope of a claim cannot be enlarged by amendment;
- (H) All reexamination and patent files are open to the public, but see paragraph (I) below;
- (I) The reexamination file is scanned into IFW to provide an electronic format copy of the file.
The reexamination file is scanned into IFW to provide an electronic format copy of the file. All public access to and copying of the reexamination file may be made from the electronic format copy available through PAIR. Any remaining paper files are not available to the public.
Parties are cautioned that the reexamination statute, regulations, and published examining procedures do not countenance so-called “litigation tactics” in reexamination proceedings.
