Introduction

Statutory basis for citation of prior art patents or printed publications

in patent files and

ex parte

reexamination of patents became available

on July 1, 1981, as a result of new sections 301-307 of title 35, United States Code, which

were added by Public Law 96-517, enacted on December 12, 1980. The rules of practice in

patent cases relating to reexamination were initially promulgated on April 30, 1981, at 46

FR 24179-24180 and on May 29, 1981, at 46 FR 29176-29187.

The reexamination statute was amended on November 2, 2002, by Public Law

107-273, 116 Stat. 1758, 1899-1906 (2002) to expand the scope of what qualifies for a

substantial new question of patentability upon which an

ex parte

reexamination may be based (see

MPEP § 2242

, subsection II.A), and made

technical corrections to the statute. See the 21st Century Department of Justice

Appropriations Authorization Act, TITLE III- INTELLECTUAL PROPERTY, Subtitle A - Patent and

Trademark Office, Section 13105, of the “Patent and Trademark Office Authorization Act of

2002” - Enacted as part of Public Law 107-273 on November 2, 2002.

On September 16, 2012, the Leahy-Smith America Invents Act

(the AIA), Public Law 112-29, 125 Stat. 284, was enacted. The AIA expanded the scope of

information that any party may cite in a patent file to include written statements of a

patent owner filed in a proceeding before a federal court or the United States Patent and

Trademark Office (Office) regarding the scope of any claim of the patent, and provides for

how such information may be considered in

ex parte

reexamination,

inter partes

review, and post grant review. The AIA

also provided for an estoppel that may attach with respect to the filing of an

ex

parte

reexamination request subsequent to a final written decision in

an

inter partes

review or post grant review proceeding.

The AIA also provided for a first-inventor-to-file prior art

regime to replace the first-to-invent prior art regime, with respect to prior art available

to be applied to claims

review. The AIA

also provided for an estoppel that may attach with respect to the filing of an

ex

parte

reexamination request subsequent to a final written decision in

an

inter partes

review or post grant review proceeding.

The AIA also provided for a first-inventor-to-file prior art

regime to replace the first-to-invent prior art regime, with respect to prior art available

to be applied to claims. 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 the reexamination of the patent. However, there are

rare exceptions. For example, a situation may arise in which a benefit claim to an

application filed before March 16, 2013, is added in a reexamination proceeding based on an

AIA patent. If all of the claims that have ever been presented in the reexamination

proceeding and the underlying patent are fully supported by the prior application filed

before March 16, 2013, and the application which resulted in the patent subject to the

reexamination proceeding did not claim, directly or indirectly, the benefit of an

application filed in the United States that presented at any time a claim that had an

effective filing date on or after March 16, 2013, then the reexamination proceeding would

be examined under the pre-AIA, first to invent, provisions.

This chapter is intended to primarily be a guide for U.S. Patent and

Trademark Office (Office) personnel on the processing of prior art citations and

ex parte

reexamination requests under

35 U.S.C. 302

, as

well as handling

ex parte

reexamination proceedings. Second, it serves

as a guide to the formal requirements for filing such documents in the Office. It is noted

that all citations in this chapter to 35 U.S.C. discussing the first-to-invent prior art

regime (as opposed to the first-inventor-to-file prior art regime) are to the relevant

statute in effect prior to March 16, 2013

r

35 U.S.C. 302

, as

well as handling

ex parte

reexamination proceedings. Second, it serves

as a guide to the formal requirements for filing such documents in the Office. It is noted

that all citations in this chapter to 35 U.S.C. discussing the first-to-invent prior art

regime (as opposed to the first-inventor-to-file prior art regime) are to the relevant

statute in effect prior to March 16, 2013.

Ex Parte

Reexamination Proceedings Resulting from Supplemental

Examination Proceedings: Section 12 of the AIA added new

35 U.S.C.

257

, which provides for a proceeding titled “supplemental

examination” that may be requested by the patent owner to consider, reconsider, or correct

information believed to be relevant to the patent in accordance with requirements which

have been established by the Office. The information that may be presented in a request for

supplemental examination is not limited to patents and printed publications, and may

include, for example, issues of patentability under

35 U.S.C. 101

and

35 U.S.C. 112

. If

the supplemental examination certificate, which is issued under

35 U.S.C.

257(a)

, states that a substantial new question of patentability is

raised by one or more items of information in the request,

ex parte

reexamination of the patent will be ordered under

35 U.S.C.

257

. See

MPEP Chapter 2800

for guidance on the

procedures for supplemental examination proceedings, and for procedures regarding the order

and first Office action mailed in any

ex parte

reexamination proceeding

ordered as a result of a supplemental examination proceeding.

Inter Partes

Reexamination Proceedings: On November 29, 1999, the

American Inventors Protection Act of 1999 (the AIPA), Public Law 106-113 was enacted, and

expanded reexamination by providing an

“inter partes”

option. The AIPA

authorized the extension of reexamination proceedings via an optional

inter

partes

reexamination procedure in addition to

ex parte

reexamination.

35 U.S.C

nation proceeding.

Inter Partes

Reexamination Proceedings: On November 29, 1999, the

American Inventors Protection Act of 1999 (the AIPA), Public Law 106-113 was enacted, and

expanded reexamination by providing an

“inter partes”

option. The AIPA

authorized the extension of reexamination proceedings via an optional

inter

partes

reexamination procedure in addition to

ex parte

reexamination.

35 U.S.C.

311

-

318

(in effect for

inter

partes

reexaminations filed prior to September 16, 2012) are directed to the

optional

inter partes

reexamination procedures. The final rules to

implement the optional

inter partes

reexamination were published in the

Federal Register on December 7, 2000 at 65 FR 76756 and in the Official Gazette on January

2, 2001 at 1242 OG 12. Effective September 16, 2012, section 6(c) of the Leahy-Smith

America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, replaced the

inter partes

reexamination process that was established by the AIPA

with an

inter partes

review process, such that (on or after September

16, 2012) the Office no longer entertains requests for

inter partes

reexamination but instead accepts petitions to conduct

inter partes

review before the Board, where appropriate. For any

inter partes

reexamination filed prior to September 16, 2012, the provisions of

35 U.S.C. 311

-

318

as they were in effect prior to September 16, 2012, continue to apply to the

inter

partes

reexamination proceedings. See

MPEP Chapter 2600

for guidance on the

procedures for

inter partes

reexamination proceedings, as well as with

respect to an

ex parte

reexamination proceeding merged (consolidated)

with an

inter partes

reexamination proceeding.

Flowcharts: The flowcharts show the general provisions of both the

citation of prior art and

ex parte

reexamination proceedings, including

reference to the pertinent rule sections.

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