Chapter 2200: Citation of Prior Art and Ex Parte Reexamination of Patents
This chapter serves as a guide regarding the processing and filing of prior art citations and reexamination requests. The purpose for 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. The examiner will consider these citations when examining the application. Citations of prior art for reexaminations are limited to prior art patents and printed publications, whereas the original prosecution performed by the examiner does not have this limitation.
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This section covers the history of ex parte reexamination proceedings. The America Invents Act (AIA) impacted these proceedings by expanding the scope of information that any party may cite to include written statements of a patent owner filed in a proceeding before a Federal Court of the USPTO. More details on the history and current rules of ex parte reexaminations are covered in this section.
Prior art in the form of patents or printed publications may be cited to the Office for placement into the patent files. Written statements made by the patent owner concerning the scope of the claims can also be cited to the Office for placement into the patent files. Submission may be made without payment of a fee. These citations may be made separate from and without a request for reexamination.
The citation of prior art and written statement provisions of 35 U.S.C. 301 and 37 CFR 1.501 do not apply to citations or protests filed in pending applications.
The patent owner, or any member of the public, may submit prior art patents or printed publications and/or written statements and additional information to the Office.
“Any person” includes patentees, licensees, reexamination requesters, real parties in interest to the patent owner or requester, persons without a real interest, and persons acting for real parties in interest without a need to identify the real party of interest.
If a person citing prior art or written statements desires his or her identity to be kept confidential, such a person need not identify himself or herself.
Information that may be submitted is limited to prior art consisting of patents or printed publications or written statements of the patent owner filed in a proceeding before a Federal court or the Office by the patent owner in which the patent owner took a position on the scope of any claim of the patent.
An explanation is required of how the person submitting the prior art or written statement considers it to be pertinent and applicable to the patent. The submission must, at a minimum, contain some broad statement of the pertinence and manner of applying the prior art or written statement submitted as to the patentability of the claims of the patent.
Copies of all the submitted prior art patents, printed publications or section 301 written statements and any necessary English translation must be included. No fee is required for the submission of citations.
If a proper submission is filed after the date of an order for reexamination but it is not entitled to entry pursuant to the reexamination rules, the submission is retained in the TC until the reexamination is concluded. This section covers the differences between submissions that do and don't qualify for entry under 37 C.F.R. 1.501. Essentially, those that qualify under 37 C.F.R. 1.501 will be entered into the reexamination file. This is true whether the submission is filed prior to or after an order for reexamination has been mailed.
Submissions of the following type will be accepted at any time:
- copies of notices of suits and other proceedings involving the patent and copies of decisions or other court papers.
If the Office deems the volume of the papers filed from litigations or other proceedings to be too extensive or lengthy, the Office may return all or part of the submission. The party that submitted the papers may limit the submission in accordance with what is deemed relevant and resubmit the papers.
The reexamination statute and rules permit any person to file a request for an ex parte reexamination containing certain elements and the fee required. The Office initially determines if “a substantial new question of patentability” is presented. If such a new question has been presented, reexamination will be ordered.
This section covers how reexamination proceedings differ from regular examination procedures and the basic characteristics of ex parte reexamination. For instance, anyone can request reexamination at any time during the period of enforceability of the patent and the prior art considered during reexamination is limited to prior art patents or printed publications.
Any person, at any time during the period of enforceability of a patent, may file a request for ex parte reexamination by the U.S. Patent and Trademark Office of any claim of the patent based on prior art patents or printed publications, unless prohibited by the estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). Further details concerning requests for ex parte reexamination are discussed in this section.
Under 37 CFR 1.510(a), any person may, at any time during the period of enforceability of a patent, file a request for ex parte reexamination. The period of enforceability is generally determined by adding 6 years to the date on which the patent expires but may be extended if there is pending litigation. Further details on the time for requesting ex parte reexamination are discussed in this section.
Anyone, including corporations and government entities, may file a request for ex parte reexamination of a patent.
This section outlines the required elements of a request for ex parte reexamination. One essential item includes a statement pointing out each substantial new question of patentability based on prior patents and printed publications. Additional requirements are discussed in this section.
This section discusses the fee guidelines for requesting ex parte reexamination. In order for a request to be accepted, be given a filing date, and be published in the Official Gazette, the request papers must satisfy all the requirements. The entire fee for filing a request for reexamination must be paid. If the request was filed by the patent owner and includes a proposed amendment, excess claims fees may also apply.
The request must include a statement that points out each new question of patentability based on prior patents and printed publications. If a substantial new question is brought forth, the patent owner will need to file a statement within two months. Further details concerning the meaning of a substantial new question of patentability are covered in this section.
The third sentence of 35 U.S.C. 302 indicates that the “request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.” The request must include “[a]n identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested.” If the request is filed by the patent owner, the request for reexamination may also point out how claims distinguish over cited prior art.
This section provides further details on the statement in the request of applying the prior art. For instance, the mere citation of new patents or printed publications without an explanation does not comply. The requester must present an explanation of how the cited patents or printed publications are applied to all claims which requester considers to merit reexamination.
In addition, 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.
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.
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.
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.
This section discusses details on the withdrawal of an attorney or agent. For instance, the Office requires the practitioner(s) to certify that they have given reasonable notice to the client, prior to the expiration of the response period that they intend to withdraw from employment. Additional requirements are explained in this section.
This section covers the correspondence rules of ex partes reexaminations. These proceedings may not be sent by facsimile transmission. However, they may be submitted by certificate of mailing and 'Express Mail' mailing procedures.
After filing of a request for ex parte reexamination, no papers directed to the merits of the reexamination other than:
- citations of patents or printed publications,
- another complete request, or
- notifications pursuant to MPEP § 2282, should be filed with the Office prior to the date of the decision on the request for reexamination.
This section covers instances where the request for ex parte reexamination is incomplete. A notice of failure to comply with the reexamination request filing requirement will be sent out as needed. If the failure is not remedied within the specified time (generally 30 days), then the request papers will not be given a filing date.
In some instances, it may not be possible to deliver mail to the patent owner because no current address is available. If all efforts to correspond with the patent owner fail, the reexamination proceeding will proceed without actual notice to the patent owner.
The publication in the Official Gazette of the notice of the filing of a request for reexamination, or the notice of the ordering of reexamination at the initiative of the Director of the Office, will serve as constructive notice to the patent owner in such an instance.
All reexamination files are normally open to inspection by the general public. The general public may view the entire content of a reexamination file via Public PAIR. Non-patent literature in a reexamination file is not available for viewing by members of the public.
Reexamination requests are to be assigned to an examiner different from the examiner(s) who examined the patent application. Although amendments will be entered for the purposes of examination, the amendments are not legally effective until the reexamination certificate is issued.
The following types of amendments will not be considered when deciding request; amendments that have been presented with the request if by the patent owner, those which have been filed in a pending reexamination proceeding in which the certificate has not been issued, and those which have been submitted in a reissue application on which no reissue patent has been issued. Further details on the decision on request are covered in this section including instances where the request for reexamination is filed on a patent after a reissue patent is already issued and a second or subsequent request filed during reexamination.
The determination of whether or not to reexamine must be made within 3 months following the filing date of a request. A determination to reexamine may be made at any time during the period of enforceability of a patent.
This section lays out the criteria for deciding the request. It covers the meaning of the substantial new question of patentability and how the presence or absence of it determines whether or not reexamination will be ordered. In addition, in order to further clarify the meaning of “a substantial new question of patentability” certain situations are outlined in this section which, if present, should be considered when making a decision as to whether or not “a substantial new question of patentability” is present. Lastly, this section covers the policy where a federal court decision has been issued on the patent.
The determination whether or not “a substantial new question of patentability” is present can be based upon any prior art patents or printed publications. The determination on a request will be made “with or without consideration of other patents or printed publications,” i.e., other than those relied upon in the request.
The examiner is not limited in making the determination based on the patents and printed publications relied on in the request. The examiner can find “a substantial new question of patentability” based upon the prior art patents or printed publications relied on in the request, a combination of the prior art relied on in the request and other prior art found elsewhere, or based entirely on different patents or printed publications.
If a request for reexamination is granted, the examiner’s decision granting the request will conclude that a substantial new question of patentability has been raised by identifying all claims and issues, identifying the patents and/or printed publications relied on, and providing a brief statement of the rationale supporting each new question. In addition, this section covers what the decision for each substantial new question of patentability should point out.
After a request for reexamination has been denied, the Central Reexamination Unit (CRU), will allow time for a petition seeking review of the examiner’s determination refusing reexamination.
The requester may seek review of a denial of a request for reexamination only by petitioning the Director of the USPTO under 37 CFR 1.515(c) and 1.181 within 1 month of the mailing date of the decision denying the request for reexamination. Further details on a petition from denial of request are covered in this section.
The patent owner has no right to file a statement subsequent to the filing of the request but prior to the order for reexamination. This section covers additional details on the patent owner's statement including the fact that 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.
Amendments to the patent (one which has not expired) may be filed by the patent owner with his or her request. Such amendments, however, may not enlarge the scope of a claim of the patent or introduce new matter. No amendment will be permitted where the certificate issues after expiration of the patent.
This section further discusses amendments by the patent owner including the manner of making amendments in a reexamination proceeding. In addition, When a reexamination certificate is printed, all underlined matter is printed in italics and all brackets are printed as they were inserted in the proceeding in order to thereby show exactly which additions and deletions have been made in the patent via the reexamination proceeding. Lastly, no amendment may be proposed for entry in an expired patent.
The reply need not be limited to the issues raised in the statement. The reply may include additional prior art patents and printed publications and may raise any issue appropriate for reexamination.
If no statement is filed by the patent owner, no reply is permitted from the third party requester.
The third party requester must serve a copy of the reply on the patent owner. The third party requester is not permitted to file any further papers after his or her reply to the patent owner’s statement. Any further papers will not be considered and will be returned to the requester. The patent owner cannot file papers on behalf of the third party requester and thereby circumvent the rules.
Once ex parte reexamination is ordered and the times for submitting any responses to the order have expired, no further active participation by a third party reexamination requester is allowed, and no third party submissions will be acknowledged or considered unless they are in accordance with 37 CFR 1.510.
The reexamination proceedings will be ex parte, even if ordered based on a request filed by a third party, because this was the intention of the legislation. The patent owner may not file papers on behalf of the requester and thereby circumvent the intent of the ex parte reexamination legislation and the rules.
Typically, the primary source of prior art will be the patents and printed publications cited in the request for ex parte reexamination. This section also outlines prior art patents and printed publications that will be reviewed by an examiner in the reexamination. For instance, the examiner must also consider patents and printed publications cited by another reexamination requester and those cited in a patent owner's statement.
This section also outlines the events that occur after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) is mailed.
The reexamination request must provide a listing of the patents and printed publications. A submission of patents and/or publications is entitled to entry and citation in the reexamination certificate (that will be issued) when it complies with 37 CFR 1.98 and is submitted:
- by the patent owner in the statement;
- by the reexamination requester in the reply;
- prior to the order of reexamination by any party; and/or
- by the patent owner under the duty of disclosure requirements.
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.
Since all claims finally held invalid by a Federal court, after all estoppels, will be withdrawn from consideration and not reexamined during a reexamination proceeding, a rejection on the grounds of res judicata will not be appropriate in reexamination.
In view of the requirement for “special dispatch,” reexamination proceedings will be “special” throughout their pendency in the Office. The examiner’s first action on the merits should be completed within 1 month of the filing date of the requester’s repl), or within 1 month of the filing date of the patent owner’s statement if there is no requester other than the patent owner.
A shortened statutory period of 2 months will be set for response to Office actions in reexaminations, except as follows.
Where the reexamination results from a court order or litigation is stayed for purposes of reexamination, the shortened statutory period will be set at 1 month.
This section covers further details on the time for response.
The provisions of 37 C.F.R. 1.136(a) and (b) are not applicable to reexamination proceedings under any circumstances.
A request for an extension must be filed on or before the day on which action by the patent owner is due and it must set forth sufficient reasons for the extension. Further details on extensions of times in ex parte reexamination proceedings are covered in this section.
This section covers responses by a patent owner in a reexamination proceeding. Responses may be filed using certificate of mail and certificate of transmission procedures as well as 'Express Mail'. The patent owner will normally be given a period of 2 months to respond to the Office action. Additional details on supplemental responses and responses in general are provided.
The prosecution of an ex parte reexamination proceeding is terminated if the patent owner fails to file a timely and appropriate response to any Office action or any written statement of an interview. This section covers petitions for entry of late papers for the revival of a reexamination proceeding. Both petitions based on unavoidable and unintentional delay are covered in addition to renewed petitions.
If a response to the final rejection is filed, the time period set in the final rejection is automatically extended by 1 month if the response is the first response after the final rejection. The period for response should be appropriately extended in the examiner’s advisory action if there is insufficient time for the patent owner to consider the examiner’s ruling and act on it.
In an ex parte reexamination filed on or after November 29, 1999, the patent owner may appeal to the Board only after the final rejection of the claims. This section provides further details on appeals in ex parte reexamination proceedings.
This section covers appeal briefs including amendments, the time for filing an appeal brief (which is 2 months from the date of the appeal), extensions of time for filing the appeal brief, failure to timely file an appeal brief, and the requirements for the appeal brief. In addition, a patent owner may seek review on the examiner's SNQ determination before the Board along with any appeal of the examiner's rejections. Defective appeal briefs are also discussed.
Where appellant files a timely reply brief to an examiner’s answer or a supplemental examiner’s answer, the examiner may:
- acknowledge receipt and entry of the reply brief,
- reopen prosecution to respond to the reply brief, or
- furnish a supplemental examiner’s answer responding to any new issue raised in the reply brief.
A supplemental examiner’s answer responding to a reply brief may not include a new ground of rejection. A supplemental examiner’s answer, other than to respond to any new issue raised in the reply brief, is not permitted unless the reexamination proceeding has been remanded by the Board for such purposes.
If appellant (patent owner) desires an oral hearing, appellant must file a written request for such hearing accompanied with the fee within 2 months after the date of the examiner’s answer or supplemental examiner’s answer. The time for requesting an oral hearing may not be extended. Further details on oral hearings is covered in this section.
A patent owner who is not satisfied with the decision of the Board may seek judicial review. In an ex parte reexamination filed on or after November 29, 1999, the patent owner may appeal the decision of the Board only to the United States Court of Appeals for the Federal Circuit. Further details on appealing to courts is covered in this section.
A prima facie case of unpatentability of a claim pending in a reexamination proceeding is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability. This section covers further information material to patentability in reexamination proceedings.
Interviews are permitted in an ex parte reexamination proceeding. In the ex parte proceeding, only ex parte interviews between the examiner and patent owner and/or the patent owner’s representative are permitted. Requests by third party requesters to participate in interviews or to attend interviews will not be granted. Further details on interviews in ex parte reexamination proceedings are covered here.
It is important for the Office to be aware of any prior or concurrent proceedings in which a patent undergoing ex parte reexamination is or was involved, such as interferences, reissues, inter partes reexaminations, other ex parte reexaminations or litigations, and any results of such proceedings.
Any proper submission pursuant to 37 CFR 1.565(a) will be promptly entered into the record of the reexamination file, and will be considered by the examiner as to its content, when the proceeding comes up for action on the merits.
In order for a second or subsequent request for ex parte reexamination to be granted, a substantial new question of patentability must be raised by the art (patents and/or printed publications) cited in the second or subsequent request for reexamination. This section covers multiple copending ex parte reexamination proceedings including when proceedings are merged, not merged, suspended, and the prosecution stage after the merger. In addition, fees in merged proceedings are covered as well as how petitions to merge multiple reexamination proceedings are not necessary.
A patent being reexamined in an ex parte reexamination proceeding may be involved in an interference proceeding with at least one application, where the patent and the application are claiming the same patentable invention, and at least one of the application’s claims to that invention are patentable to the applicant. The general policy of the Office is that a reexamination proceeding will not be delayed, or stayed, because of an interference or the possibility of an interference.
Although a patent being reexamined via a reexamination proceeding may become involved in an interference proceeding, the reexamination proceeding itself can never be involved in an interference proceeding. This section covers further details on copending ex parte reexamination and interference proceedings.
The general policy of the Office is that a reissue application examination and an ex parte reexamination proceeding will not be conducted separately at the same time as to a particular patent. The reason for this policy is to permit timely resolution of both proceedings to the extent possible and to prevent inconsistent, and possibly conflicting, amendments from being introduced into the two proceedings on behalf of the patent owner.
Where a reissue application and a reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of such. In addition, the patent owner should file in the reexamination proceeding, as early as possible, a Notification of Concurrent Proceedings to notify the Office in the reexamination proceeding of the existence of the two concurrent proceedings.
This section covers further details on copending ex parte reexamination and reissue proceedings.
A request for ex parte reexamination to be filed “at any time.” Requests for ex parte reexamination are frequently filed where the patent for which reexamination is requested is involved in concurrent litigation. This section covers further details on ex parte reexamination and litigation proceedings.
For instance, when the initial question as to whether the prior art raises a substantial new question of patentability as to a patent claim is under consideration, the existence of a final court decision of claim validity in view of the same or different prior art does not necessarily mean that no new question is present. In addition, the patent owner in an ex parte reexamination proceeding must promptly notify the Office of any Federal court decision involving the patent.
This section covers the conclusion of an ex parte reexamination proceeding. Upon conclusion of the ex parte reexamination proceeding, the examiner must prepare a “Notice of Intent to Issue Ex Parte Reexamination Certificate” (NIRC). If appropriate, an examiner’s amendment will also be prepared. Where claims are found patentable, reasons must be given for each claim found patentable.
A panel review conference is not to be held as to any claim that was in the case (proceeding) at the time the case was reviewed by the Board or a federal court.
Since abandonment is not possible in a reexamination proceeding, a reexamination certificate will be issued and published at the conclusion of the proceeding in each patent in which a reexamination proceeding has been ordered except where the reexamination has been concluded by vacating the reexamination proceeding or by the grant of a reissue patent on the same patent in which case the reissue patent also serves as the reexamination certificate.
Further details of the issuance of the ex parte reexamination certificate are covered including the details it sets forth.
An ex parte reexamination certificate is issued at the close of each ex parte reexamination proceeding in which reexamination has been ordered, except for the following two cases:
- The ex parte reexamination proceeding is merged with a reissue application. If the ex parte reexamination proceeding is concluded by the grant of a reissue patent, the reissue patent will constitute the reexamination certificate;
- The ex parte reexamination proceeding is merged with an inter partes reexamination proceeding. If the ex parte reexamination proceeding is to be concluded as part of a merged proceeding containing an inter partes reexamination proceeding, a single reexamination certificate will issue for both proceedings.
The situation of intervening rights resulting from reexamination proceedings parallels the intervening rights situation resulting from reissue proceedings, and the rights detailed in 35 U.S.C. 252 apply equally in reexamination and reissue situations.
Ex parte reexamination proceedings may be concluded in one of four ways:
- The prosecution of the proceeding may be brought to an end, and the proceeding itself concluded, by a denial of reexamination, or vacating the reexamination proceeding, or terminating the reexamination proceeding. (In these instances, no Reexamination Certificate is issued).
- The proceeding may be concluded under 37 CFR 1.570(b) with the issuance of a Reexamination Certificate.
- The proceeding may be concluded under 37 CFR 1.570(e) where the reexamination proceeding has been merged with a reissue proceeding and a reissue patent is granted; an individual reexamination certificate is not issued, but rather the reissue patent serves as the certificate.
- The proceeding may be concluded under 37 CFR 1.997(b) where the ex parte reexamination proceeding has been merged with an inter partes reexamination proceeding and a single reexamination certificate is issued.
This section provides guidance for the processing and examination of a reexamination request filed on a patent for which a reexamination certificate has already issued, or a reexamination certificate issues on a prior reexamination, while the new reexamination is pending. This reexamination request is generally referred to as a “Reexamination of a reexamination.”
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