It is required that a copy of each patent or printed publication relied on or referred to in the request, be filed with the request. Further details on the copies of prior art are discussed in this section.
The appropriate “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements” will identify defects.
An exception is color photographs and like color submissions, which, if legible as presented, will be retained in an “artifact” file and used as such.
If any of the documents are not in the English language, an English language translation of all necessary and pertinent parts is also required.
An English language summary or abstract of a non-English language document is usually not sufficient.
There is no assurance that the Office will consider the non-English language patent or printed publication beyond the translation matter that is submitted.
As to the requirement for a copy of every patent or printed publication relied upon or referred to in the request, or submitted under 37 CFR 1.98, this requirement is not currently being enforced to require copies of U.S. patents and U.S. patent publications; and the requirement is deemed waived to that extent.
In addition, it is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide the application/proceeding number and its status (note that a submission that is not permitted entry will be returned, expunged or discarded, at the sole discretion of the Office).
For example, where the patent for which reexamination is requested is a continuation in part of a parent application, the requester would notify the Office of the application number of the parent application and its status if the asserted substantial new question of patentability relates to a proposed rejection based on an intervening art and the question of whether the claimed subject matter in the patent has support in the parent application is relevant.
2220 Certificate of Service
MPEP SECTION SUMMARY
If the requester is a person other than the patent owner, the owner of the patent must be served with a copy of the request in its entirety. The service must be made on the patent owner’s correspondence address.
The third party requester must set forth on the certificate of service the name and address of the party served and the method of service. The certificate of service must be attached to the request submitted to the Office.
2221 Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner
MPEP SECTION SUMMARY
A patent owner may include a proposed amendment with his or her request. If an amendment is submitted to add claims to the patent being reexamined, then excess claims fees may be applicable to the presentation of the added claims.
Amendments may also be proposed by patent owners in a statement or during the actual ex parte reexamination prosecution.
