Reexamination:
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Inter partes reexamination is replaced by inter partes review.
Rules governing the citation of prior art:
- Prior art in the form of patents or printed publications may be cited to the Office for placement in patent files.
- The purpose of citing prior art in patent files is to inform the patent owner and the public in general that such patents or printed publications are in existence and should be considered when evaluating the validity of the patent claims in question.
- Any member of public or patent owner may cite prior art anonymously, and may do so at any time during the enforceability of the patent.
A bankruptcy will not stay a reexamination.
A final decision by a U.S. District court finding a patent to be valid will have no binding effect during a reexamination since the PTO may still find the claims of the patent to be invalid.
A substantial new question of patentability cannot be based upon prior art expressly relied upon or discussed by the examiner during the prosecution.
There are several rules for establishing a new question of patentability in order to obtain a reexamination, these include that:
- It must be based on prior patents and publications.
- The prior art patent must be applied directly to claims under 35 U.S.C. 103 and or an application portion of 35 U.S.C. 102 or relate to the application of other prior art patents or printed publications to claims on such grounds.
- The name and address of party served must be indicated if the request is by a person other than the patent owner.
- Communications from the PTO to the patent owner will be directed to the first named, most recent attorney or agent of record in the patent file at the current address on the Office’s register, or to the patent owner’s address if no attorney or agent is of record.
- An admission per se may not be the basis for establishing a substantial new question of patentability.
- A prior art patent cannot be properly applied as a ground for reexamination if it is merely used as evidence of an alleged prior public use or sale.
A request for a reexamination may not sent by facsimile transmission.
Appeals in reexaminations:
A patent owner that is dissatisfied with the rejection of his or her claims may appeal to the Board for review of the rejection by filing a Notice of Appeal within the required time.
The period for filing the Notice of Appeal is the period set for a response in the last Office action which is normally 2 months.
Litigation proceeding:
The final decision by a U.S. District Court finding a patent to be valid will have no binding effect during a reexamination since the PTO may still find the claims of the patent to be invalid.
The PTO may discover new art and find the claims unpatentable as that art would raise a substantial new question.
After the reexamination proceeding is terminated and the certification has been waived, any member of the public may obtain a copy of the certificate by ordering a copy of the patent.
