2256 Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination
|
Subject to the discussion provided below in this section, the examiner must also consider patents and printed publications:
- cited by another reexamination requester;
- cited in a patent owner’s statement or a requester’s reply;
- cited by the patent owner under a duty of disclosure;
- discovered by the examiner in searching;
- of record in the patent file from earlier examination; and
- 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.
As to (B), (C) and (F) above, the following are required:
- each foreign patent;
- 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;
- for each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to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;
- all other information or that portion which caused it to be listed.
AFTER THE NOTICE OF INTENT TO ISSUE EX PARTE 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.
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.
This must be provided via a petition under 37 CFR 1.182 (with the petition fee) for entry and consideration of the information submitted after NIRC.
- These requirements are necessary to provide a basis for interrupting the proceeding after NIRC, in order for the Office to comply with its statutory mandate for “special dispatch”.
No consideration will be given to a third party requester submission of patents and printed publications, or other information, that is filed in the reexamination proceeding unless it is part of the request for reexamination or the requester’s reply.
2257 Listing of Prior Art
|
