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2258    Scope of Ex Parte Reexamination

MPEP SECTION SUMMARY The reexamination proceeding provides a complete reexamination of the patent claims on the basis of prior art patents and printed publications. This section covers the scope of the ex parte reexamination including prior art patents or printed publications, and double patenting as well as compliance with 35 U.S.C. 112 where new claims are presented or where any part of the disclosure is amended. In addition, this section discusses how claims in the proceeding must not enlarge the scope of the claims of the patent. Other matters are also discussed.

  Section Frequency Chart

Double patenting issues may also be considered during reexamination.

In a reexamination proceeding ordered under 35 U.S.C. 257, reexamination is not limited to patents and printed publications.

• Reexamination ordered under 35 U.S.C. 257 may involve any information which is determined by the Office to raise a substantial new question of patentability in a supplemental examination proceeding.
• The information may include, for example, not only a patent or a journal article, but also a sales invoice, or a transcript of an audio or video recording.
  
  
  

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

Rejections on prior art in reexamination proceedings may only be made on the basis of prior art patents or printed publications.

• The prior art regime under which the application for the patent was examined (the first-inventor-to-file prior art regime, or the first-to-invent prior art regime) will generally be applied in reexamination of the patent.

One exception would be where an amended or new claim having an effective filing date for the new claim on or after March 16, 2013, is presented during the reexamination of a patent that was subject to the first-to-invent prior art regime, in which case the reexamination would be conducted under the first-inventor-to-file prior art regime.

• Similarly if a benefit claim to a prior application with a filing date before March 16, 2013 is made during the reexamination, then reexamination would be conducted under the first-to-invent prior art regime even if the application that matured into the patent was examined under the first-inventor-to-file prior art regime when the following conditions are met.

With respect to the first-inventor-to-file prior art regime, prior art rejections may be based upon the provisions of 35 U.S.C. 102 as it is in effect on and after March 16, 2013, applicable to prior art patents and printed publications.

Thus “A person shall be entitled to a patent unless”:

• “the claimed invention was patented” or “described in a printed publication” “before the effective filing date of the claimed invention”; or
  
• “the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”
  

These provisions are subject to the exceptions of 35 U.S.C. 102(b), and effective filing dates are determined pursuant to 35 U.S.C. 102(d).

Typically, substantial new questions of patentability and rejections in a reexamination proceeding are based on “prior art” patents and publications.

A.   Previously Considered Prior Art Patents or Printed Publications

B.   Matters Other Than Patents or Printed Publications

Rejections will not be based on matters other than patents or printed publications, such as public use or sale, inventorship, 35 U.S.C. 101, conduct issues, etc.

A rejection on prior public use or sale, insufficiency of disclosure (with respect to original subject matter), etc., cannot be made even if it relies on a prior art patent or printed publication.

• Prior art patents or printed publications must be applied under an appropriate portion of 35 U.S.C. 102 and/or 103 when making a rejection.

C.   Intervening Patents or Printed Publications

Rejections may be made in reexamination proceedings based on intervening patents or printed publications where the patent claims under reexamination are entitled only to the filing date of the patent and are not supported by an earlier foreign or United States patent application whose filing date is claimed.

• For example, under 35 U.S.C. 120, the effective date of these claims would be the filing date of the application which resulted in the patent.

The Office is not prohibited from performing a 35 U.S.C. 112 written description priority analysis during reexamination.

D.   Double Patenting

Double patenting is normally proper for consideration in reexamination.

• Accordingly, the issue of double patenting, over prior art patents or non-prior art patents, is appropriate for consideration in reexamination, both as a basis for ordering reexamination and during subsequent examination on the merits.

• The issue of double patenting is to be considered by the examiner when making the decision on the request for reexamination.

• The examiner should determine whether the issue of double patenting raises a substantial new question of patentability.

E.   Affidavits or Declarations or Other Written Evidence

Affidavits or declarations or other written evidence which explain the contents or pertinent dates of prior art patents or printed publications in more detail may be considered in reexamination, but any rejection must be based upon the prior art patents or printed publications as explained by the affidavits or declarations or other written evidence.

• The rejection in such circumstances cannot be based on the affidavits or declarations or other written evidence as such, but must be based on the prior art patents or printed publications.

F.   Admissions; Use of Admissions

1.   Initial Reexamination Determination and Order

The consideration under 35 U.S.C. 303 of a request for reexamination is limited to prior art patents and printed publications.

• Thus an admission, per se, may not be the basis for establishing a substantial new question of patentability.
• However, an admission by the patent owner of record in the file or in a court record may be utilized in combination with a patent or printed publication.
• While such an admission may be utilized in combination with a patent or printed publication, a written statement of the patent owner submitted pursuant to 37 CFR 1.501(a)(2) and accompanying 37 CFR 1.510(b)(2) explanation cannot be considered in making the initial reexamination determination and issuance of the order granting or denying reexamination.

2.   Reexamination Ordered, Examination on the Merits

After reexamination has been ordered, the examination on the merits is dictated by 35 U.S.C. 305.

• 35 U.S.C. 301(a)(2) permits a submission under 35 U.S.C. 301 to contain written “statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.”

Admissions by the patent owners as to matters affecting patentability may be utilized in a reexamination proceeding.

• The admission can reside in the patent file (made of record during the prosecution of the patent application) or may be presented during the pendency of the reexamination proceeding or in litigation.

Admissions by the patent owner as to any matter affecting patentability may be utilized to determine the scope and content of the prior art in conjunction with patents and printed publications in a prior art rejection, whether such admissions result from patents or printed publications or from some other source.

• An admission relating to any prior art (e.g., on sale, public use) established in the record or in court may be used by the examiner in combination with patents or printed publications in a reexamination proceeding.
• Any admission submitted by the patent owner is proper.
• A third party, however, may not submit admissions of the patent owner made outside the record of the file or the court record.
  • Such a submission would be outside the scope of reexamination.

G.   Claim Interpretation and Treatment

Original patent claims will be examined only on the basis of prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103.

During reexamination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims

II.   COMPLIANCE WITH 35 U.S.C. 112

Where new 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.

• Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter.
• For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation.

Reexaminations ordered under 35 U.S.C. 257 may involve any issues under 35 U.S.C. 112.

A.   35 U.S.C. 112 Issues To Be Considered

Compliance of new or amended claims with the enablement and/or description requirements of the first paragraph of 35 U.S.C. 112 should be considered as to the amendatory and new text in the reexamination proceeding.

B.   New Matter

35 U.S.C. 305 provides for examination under 35 U.S.C. 132, which prohibits the introduction of new matter into the disclosure.

• Thus, the question of new matter should be considered in a reexamination proceeding.

Where the new matter is added to the claims or affects claim limitations, the claims should be rejected under 35 U.S.C. 112, first paragraph, for failing to meet the written description requirement.

C.   Amendment of the Specification

Where the specification is amended in a reexamination proceeding, the examiner should make certain that the requirements of 35 U.S.C. 112 are met.

• An amendment to the specification can redefine the scope of the terms in a claim such that the claim is no longer clear or is not supported by the specification.
• Thus, an amendment to the specification can result in the failure of the claims to comply with 35 U.S.C. 112, even where the claims are not amended in any respect.

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

Where new or amended claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding should be examined under 35 U.S.C. 305, to determine whether they enlarge the scope of the original claims.

• 35 U.S.C. 305 states that “no proposed amended or new claim enlarging the scope of the claims of the patent will be permitted in a reexamination proceeding...”.

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.

• If a claim is considered to be a broadening claim for purposes of reissue, it is likewise considered to be a broadening claim in reexamination.

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 in a reexamination proceeding which enlarges the scope of the claims of the patent should be rejected under 35 U.S.C. 305.

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 are set forth in a prior Office decision or Federal Court decision, which are not based on patents or printed publications and which clearly raise questions as to the validity of 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 that were 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.

The decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case.

Similarly, if prior art patents or printed publications are discovered during reexamination which raise a substantial new question of patentability as to one or more patent claims for which reexamination has not been ordered (while reexamination has been ordered for other claims in the patent), then such claims may be added, within the sole discretion of the Office, during the examination phase of the proceeding.

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.

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 and Domestic Priority 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.

• Note, however, that an affidavit under 37 CFR 1.131(a) may not be used to “swear behind” a reference patent if the reference patent is claiming the “same invention” as the patent undergoing reexamination.
• In such a situation, the patent owner may, if appropriate, seek to raise this issue via an affidavit under 37 CFR 1.131(c) or in an interference or derivation proceeding via an appropriate reissue application if such a reissue application may be filed.

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 for a patent that was examined under the first-to-invent prior art regime, etc.) are raised by the third party requester or the patent owner during a reexamination proceeding, the existence of such questions will be noted by the examiner in an Office action, in which case the patent owner may desire to consider the advisability of filing a reissue application to have such questions considered and resolved.

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 to accompany the initial reexamination request, or in later 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.

J.   No Preissuance Submissions

Because a reexamination proceeding is a post-issuance proceeding, a preissuance submission is not permitted to be filed in a reexamination proceeding; 35 U.S.C. 122(e) is limited to preissuance submissions by third parties in patent applications.

• A preissuance submission filed in a reexamination proceeding is not to be entered, and will be expunged if it is inadvertently entered.

MPEP SECTION SUMMARY This section covers the use of previously cited/considered prior art in rejections. For instance, for a reexamination that was ordered on or after November 2, 2002, reliance solely on old art does not necessarily preclude the existence of a substantial new question of patentability that is based exclusively on that old art.

In the examining stage of a reexamination proceeding, the examiner will consider whether the claims are subject to rejection based on art.

• Before making such a rejection, the examiner should check the patent’s file history to ascertain whether the art that will provide the basis for the rejection was previously cited/considered in an earlier concluded Office examination of the patent (e.g., in the examination of the application for the patent).

If the rejection to be made by the examiner will be based on a combination of “old art” and art newly cited during the reexamination proceeding, the rejection is proper, and should be made.

If the “old art” provides the sole basis for a rejection, the following applies:

• For a reexamination that was ordered on or after November 2, 2002, reliance solely on old art (as the basis for a rejection) does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art.
• For a reexamination that was ordered prior to November 2, 2002, old art cannot (subject to the exceptions set forth below) be used as the sole basis for a rejection.

 

MPEP SECTION SUMMARY The patent owner may correct the failure to adequately claim foreign priority or domestic benefit in a patent to be reexamined during reexamination in accordance with the guidelines set forth in this section. However, a renewal of previously made claims for foreign priority under 35 U.S.C. 119 or domestic benefit under 35 U.S.C. 119(e) or 120, is not necessary during reexamination. Note that a design application cannot claim the benefit of a provisional application.

I. FOREIGN PRIORITY

A. Claim Made Before Patent Granted; Certified Copy Needed to Perfect Priority

The patent owner may obtain the right of foreign priority where a claim for priority had been made before the patent was granted, and it is only necessary for submission of the certified copy in the reexamination proceeding to perfect priority.

• However, where a petition to accept a delayed certified copy is required (such as, for example, when the application which matured in the patent to be reexamined was filed on or after March 16, 2013), a grantable petition, the appropriate fee, and any required attachments must be filed in the file of the application that matured into the patent to be reexamined.

B. Submitting for the First Time Both the Claim for Foreign Priority and the Certified Copy

The patent owner may obtain the right of foreign priority where it is necessary to submit for the first time both the claim for priority and the certified copy.

• However, where it is necessary to submit for the first time both the claim for priority and the certified copy, and the patent to be reexamined matured from a utility or plant application filed on or after November 29, 2000, a grantable petition for an unintentionally delayed priority claim must be filed.

1. Application Which Became Patent to be Reexamined Filed On or After September 16, 2012

If the patent to be reexamined matured from an application filed on or after September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

• (a) A grantable petition for an unintentionally delayed priority claim;
• (b) An application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
  
• (c) A certified copy of the foreign application, unless previously submitted, or an exception in 37 CFR 1.55(h), (i) or (j) applies;
  
• (d) The petition fee as set forth in 37 CFR 1.17(m); and
  
• (e) A statement that the entire delay between the date the priority claim was due under 37 CFR 1.55 and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
  
• (f) In the Reexamination Proceeding: A letter, as a separate paper, notifying the Office that items (a)-(e), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.
  

When a decision on the petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 37 CFR 1.55(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

2. Application Which Became Patent to be Reexamined Filed Before September 16, 2012

If the patent to be reexamined matured from an application filed before September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

• (a) A grantable petition for an unintentionally delayed priority claim under 37 CFR 1.55(e);
  
• (b) Unless previously submitted, either (i) an application data sheet or (ii) an oath or declaration; where the application data sheet, oath or declaration, whichever is filed, identifies the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing;
  
• (c) A certified copy of the foreign application, unless previously submitted, or an exception in 37 CFR 1.55(h), (i) or (j) applies;
  
• (d) The petition fee as set forth in 37 CFR 1.17(m); and
  
• (e) A statement that the entire delay between the date the priority claim was due under 37 CFR 1.55 and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
  
• (f) In the Reexamination Proceeding: A letter, as a separate paper, notifying the Office that items (a)-(e), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

C. Restoring Right of Foreign Priority Where the Filing of the Subsequent Application Was Delayed

The patent owner may also restore the right of foreign priority where the filing of the subsequent application was delayed, in accordance with 37 CFR 1.55(c).

• A grantable petition to restore the right of foreign priority and any required attachments, including an application data sheet, must be filed in the application specified in 37 CFR 1.55(c), not in the reexamination proceeding.

II. DOMESTIC BENEFIT

A. Claiming Benefit under 35 U.S.C. 120

The patent owner may also correct the failure to adequately claim (in the application for the patent to be reexamined) benefit under 35 U.S.C. 120 of an earlier filed copending U.S. patent application.

• For a patent to be reexamined which matured from a utility or plant application filed on or after November 29, 2000, a grantable petition for an unintentionally delayed benefit claim must be filed.

1. Application Which Became Patent to be Reexamined Filed On or After September 16, 2012

If the patent to be reexamined matured from an application filed on or after September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

• (a) A grantable petition for an unintentionally delayed benefit claim;
  
• (b) An application data sheet including the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application, unless previously submitted;
  
• (c) The petition fee as set forth in 37 CFR 1.17(m); and
  
• (d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
  
• (e) In the Reexamination Proceeding: A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

2. Application Which Became Patent to be Reexamined Filed Before September 16, 2012

If the patent to be reexamined matured from an application filed before September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

• (a) A grantable petition for an unintentionally delayed benefit claim;
  
• (b) If the patent owner does not choose to file an amendment as set forth in (e) below in the reexamination proceeding, an application data sheet including the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application, unless previously submitted;
  
• (c) The petition fee as set forth in 37 CFR 1.17(m); and
  
• (d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
  
• (e) In the Reexamination Proceeding: If the patent owner does not choose to file an application data sheet as set forth in (b) above in the application which matured into the patent to be reexamined, an amendment inserting the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted; and
• (f) In the Reexamination Proceeding: A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

B. Claiming Benefit under 35 U.S.C. 119(e)

The patent owner may correct, in a patent to be reexamined which matured from a utility or plant application, the failure to adequately claim benefit under 35 U.S.C. 119(e) of an earlier filed provisional application. A design application cannot claim the benefit of a provisional application.

1. Application Which Became Patent to be Reexamined Filed On or After September 16, 2012

If the patent to be reexamined matured from a utility or plant application filed on or after September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

• (a) A grantable petition for an unintentionally delayed claim;
  
• (b) An application data sheet including the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application; unless previously submitted;
  
• (c) The petition fee as set forth in 37 CFR 1.17(m); and
  
• (d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
  
• (e) In the Reexamination Proceeding: A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

2. Application Which Became Patent to be Reexamined Filed Before September 16, 2012

If the patent to be reexamined matured from a utility or plant application filed before September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

• (a) A grantable petition for an unintentionally delayed claim under 35 U.S.C. 119(e), pursuant to 37 CFR 1.78(c);
  
• (b) If the patent owner does not choose to file an amendment as set forth in (e) below in the reexamination proceeding, an application data sheet including the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application; unless previously submitted;
  
• (c) The petition fee as set forth in 37 CFR 1.17(m); and
  
• (d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
• (e) In the Reexamination Proceeding: If the patent owner does not choose to file an application data sheet as set forth in (b) above in the application which matured into the patent to be reexamined, an amendment inserting the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted; and
• (f) In the Reexamination Proceeding: A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

C. Restoring the Benefit of a Provisional Application Where the Filing of the Application Which Became the Patent to be Reexamined Was Delayed

The patent owner may also restore the benefit of a provisional application where the filing of the application which matured into the patent to be reexamined (i.e., the subsequent nonprovisional application) was unintentionally delayed.

• The patent owner must file a grantable petition to restore the benefit of a provisional application, and any required attachments, including an application data sheet, in the file of the application which matured into the patent to be reexamined (i.e., the subsequent application as specified in 37 CFR 1.78(b)).
  

» 2259  Res Judicata and Collateral Estoppel in Reexamination Proceedings