Ex Parte Reexamination

Procedures for reexamination of issued patents began on July 1, 1981, the

date when the reexamination provisions of Public Law 96-517 came into effect.

The reexamination statute,

35 U.S.C. 302

, and rules permit any

person to file a request for an

ex parte

reexamination containing

certain elements and the appropriate fee under

37 CFR 1.20(c)(1) or (c)(2)

. The Office

initially determines if “a substantial new question of patentability” (

35 U.S.C. 303(a)

) is

presented. If such a new question has been presented, reexamination will be ordered. The

reexamination proceedings which follow the order for reexamination are very similar to

regular examination procedures in patent applications; however, there are notable

differences. For example, there are certain limitations as to the kind of rejections which

may be made in a reexamination ordered under

35 U.S.C. 304

, special reexamination

forms to be used, and time periods set to provide “special dispatch.” When the prosecution

of a reexamination proceeding is terminated, a reexamination certificate is issued which

indicates the status of all claims following the reexamination.

The following sections of this chapter explain the details of

reexamination.

The intent of the reexamination procedures covered in this chapter include

the following:

(A) To provide procedures for reexamination of patents;

(B) To implement reexamination in an essentially

ex

parte

manner;

(C) To minimize the processing costs and complexities of

reexamination;

(D) To maximize respect for the reexamined patent;

(E) To provide procedures for prompt and timely determinations by the

Office in accordance with the “special dispatch” requirements of

35 U.S.C.

305

.

The basic characteristics of

ex parte

reexamination

are as follows:

(A) Anyone can request reexamination at any time during the period of

enforceability of the patent;

(B) In

ex parte

reexaminations ordered under

35 U.S.C

for the reexamined patent;

(E) To provide procedures for prompt and timely determinations by the

Office in accordance with the “special dispatch” requirements of

35 U.S.C.

305

.

The basic characteristics of

ex parte

reexamination

are as follows:

(A) Anyone can request reexamination at any time during the period of

enforceability of the patent;

(B) In

ex parte

reexaminations ordered under

35 U.S.C.

304

, prior art considered during reexamination is limited to

prior art patents or printed publications applied under the appropriate parts of

35 U.S.C.

102

and

103

. Patents may also be applied

in a double patenting rejection as discussed in

MPEP § 2258

subsection I.D. (However, in

ex parte

reexaminations ordered under

35

U.S.C. 257

, the prior art considered during reexamination is

not limited. See

MPEP § 2801

);

(C) A substantial new question of patentability must be present for

reexamination to be ordered;

(D) If ordered, the actual reexamination proceeding is

ex

parte

in nature;

(E) Decision on a request for reexamination submitted under

35 U.S.C.

302

must be made no later than 3 months from its filing, and

the remainder of the proceeding must proceed with “special dispatch” within the

Office. (Similarly, a decision on a request for supplemental examination submitted

under

35

U.S.C. 257

must be made no later than 3 months from its filing

(see

MPEP

§ 2815

), and any

ex parte

reexamination

proceeding ordered as a result of a supplemental examination proceeding must proceed

with “special dispatch” within the Office);

(F) If ordered, a reexamination proceeding will normally be conducted to

its conclusion and the issuance of a reexamination certificate;

(G) The scope of a claim cannot be enlarged by amendment;

(H) All reexamination and patent files are open to the public, but see

paragraph (I) below;

(I) The reexamination file is scanned into IFW to provide an electronic

format copy of the file

thin the Office);

(F) If ordered, a reexamination proceeding will normally be conducted to

its conclusion and the issuance of a reexamination certificate;

(G) The scope of a claim cannot be enlarged by amendment;

(H) All reexamination and patent files are open to the public, but see

paragraph (I) below;

(I) The reexamination file is scanned into IFW to provide an electronic

format copy of the file. All public access to and copying of the reexamination file

may be made from the electronic format copy available through Patent Center. Any

remaining paper files are

not

available to the public. Images

of non-patent literature (NPL) cited in public files are not available for either

viewing or downloading through Patent Center. Certified copies of the full contents

of the files, including NPL, are available from the Patent and Trademark Copy

Fulfillment Branch of the Public Records Division, and may be ordered online through

the Certified Copy Center storefront at

https://certifiedcopycenter.uspto.gov

.

For a discussion of public access to papers filed in a supplemental

examination proceeding, see

MPEP § 2803.02

.

Parties are cautioned that the reexamination statute,

regulations, and published examining procedures do not countenance so-called “litigation

tactics” in reexamination proceedings. The parties are expected to conduct themselves

accordingly. For example, it is expected that submissions of papers that are not provided

for in the reexamination regulations and/or appear to be excluded by the regulation will

either be filed with an appropriate petition to accept the paper and/or waive the

regulation(s), or not filed at all. Parties are advised that multiple submissions, such as

a reply to a paper opposing a petition and a sur-reply directed to such a reply are not

provided for in the reexamination regulations or examining procedures. It is expected that

the parties will adhere to the provisions of

37 CFR 11.18(b)

throughout the course

of a reexamination proceeding.

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