2248 Petition From Denial of Request
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(c) The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.
PROCESSING OF PETITION UNDER 37 CFR 1.515(c)
After the time for petition has expired without a petition having been filed, or a petition has been filed and the decision thereon affirms the denial of the request, a partial refund of the filing fee for requesting reexamination will be made to the requester.
A decision on a petition under 37 CFR 1.515(c) is final and is not appealable.
- 37 CFR 1.515(c) applies only to challenging a basis for denying of reexamination; it does not apply to challenging a basis for granting of reexamination.
If an order granting reexamination includes a determination that third party requester has not raised a substantial new question of patentability (SNQ) for one claim, but has raised a SNQ for at least one other claim, then third party requester may (within one month of the mailing date of the order) file a petition under 37 CFR 1.515(c) for reconsideration of the determination as to the claim for which no SNQ has been found to be raised.
- Similarly, a petition under 37 CFR 1.181 may be filed (within one month of the mailing date of the order) requesting review of a determination granting a request for reexamination, if the determination grants the request as to a specific claim for some reasons (SNQs) advanced in the request but does not grant the request as to the claim for other reasons (SNQs) advanced in the request.
- A decision on such a petition is final and non-appealable. If no petition is timely filed, the determination shall be final and non-appealable.
2249 Patent Owner’s Statement
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(a) Except as provided in § 1.510(e), no statement or other response by the patent owner in an ex parte reexamination proceeding shall be filed prior to the determinations made in accordance with § 1.515 or § 1.520. If a premature statement or other response is filed by the patent owner, it will not be acknowledged or considered in making the determination, and it will be returned or discarded (at the Office’s option).
(b) The order for ex parte reexamination will set a period of not less than two months from the date of the order within which the patent owner may file a statement on the new question of patentability, including any proposed amendments the patent owner wishes to make.
(c) Any statement filed by the patent owner shall clearly point out why the subject matter as claimed is not anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any reasonable combinations. Where the reexamination request was filed by a third party requester, any statement filed by the patent owner must be served upon the ex parte reexamination requester in accordance with § 1.248.
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If reexamination is ordered, the decision will set a period of not less than 2 months within which period the patent owner may file a statement and any narrowing amendments to the patent claims.
- If necessary, an extension of time beyond the 2 months may be requested under 37 CFR 1.550(c) by the patent owner.
Any statement filed must clearly point out why the patent claims are believed to be patentable, considering the cited prior art patents or printed publications alone or in any reasonable combination.
- A copy of the statement must be served by the patent owner on the requester, unless the request was filed by the patent owner.
It should be noted that the period for response by requester for a reply under 37 CFR 1.535 is 2 months from the owner’s service date and not 2 months from the date the patent owner’s statement was received in the Office.
