Request for Ex Parte Reexamination under 35 U.S.C. 302

35 U.S.C. 302

Request for reexamination.

Any person at any time may file a request for reexamination by the

Office of any claim of a patent on the basis of any prior art cited under the provisions

of

section

301

. The request must be in writing and must be accompanied by

payment of a reexamination fee established by the Director pursuant to the provisions of

section

41

. The request must set forth the pertinency and manner of

applying cited prior art to every claim for which reexamination is requested. Unless the

requesting person is the owner of the patent, the Director promptly will send a copy of

the request to the owner of record of the patent.

37 CFR 1.510  Request for ex parte reexamination.

(a) Any person may, at any time during the period of enforceability

of a patent, file a request for an

ex parte

reexamination by

the Office of any claim of the patent on the basis of prior art patents or printed

publications cited under

§ 1.501

, unless prohibited by

35

U.S.C. 315(e)(1)

or

35 U.S.C.

325(e)(1)

. The request must be accompanied by the fee for

requesting reexamination set in

§ 1.20(c)(1)

.

(b) Any request for reexamination must include the following

parts:

(1) A statement pointing out each substantial new question of

patentability based on prior patents and printed publications.

(2) An 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. For each statement of the patent owner and accompanying

information submitted pursuant to

§

1.501(a)(2)

which is relied upon in the detailed

explanation, the request must explain how that statement is being used to

determine the proper meaning of a patent claim in connection with the prior

art applied to that claim and how each relevant claim is being interpreted.

If appropriate, the party requesting reexamination may also point out how

claims distinguish over cited prior art.

suant to

§

1.501(a)(2)

which is relied upon in the detailed

explanation, the request must explain how that statement is being used to

determine the proper meaning of a patent claim in connection with the prior

art applied to that claim and how each relevant claim is being interpreted.

If appropriate, the party requesting reexamination may also point out how

claims distinguish over cited prior art.

(3) A copy of every patent or printed publication relied upon

or referred to in paragraph (b)(1) and (2) of this section accompanied by an

English language translation of all the necessary and pertinent parts of any

non-English language patent or printed publication.

(4) A copy of the entire patent including the front face,

drawings, and specification/claims (in double column format) for which

reexamination is requested, and a copy of any disclaimer, certificate of

correction, or reexamination certificate issued in the patent. All copies

must have each page plainly written on only one side of a sheet of

paper.

(5) A certification that a copy of the request filed by a

person other than the patent owner has been served in its entirety on the

patent owner at the address as provided for in

§

1.33(c)

. The name and address of the party served must

be indicated. If service was not possible, a duplicate copy must be supplied

to the Office.

(6) A certification by the third party requester

that the statutory estoppel provisions of

35 U.S.C.

315(e)(1)

or

35 U.S.C.

325(e)(1)

do not prohibit the requester from filing

the

ex parte

reexamination request.

wner at the address as provided for in

§

1.33(c)

. The name and address of the party served must

be indicated. If service was not possible, a duplicate copy must be supplied

to the Office.

(6) A certification by the third party requester

that the statutory estoppel provisions of

35 U.S.C.

315(e)(1)

or

35 U.S.C.

325(e)(1)

do not prohibit the requester from filing

the

ex parte

reexamination request.

(c) If the request does not include the fee for requesting

ex parte

reexamination required by paragraph (a) of this

section and meet all the requirements by paragraph (b) of this section, then the

person identified as requesting reexamination will be so notified and will

generally be given an opportunity to complete the request within a specified time.

Failure to comply with the notice will result in the

ex parte

reexamination request not being granted a filing date, and will result in

placement of the request in the patent file as a citation if it complies with the

requirements of

§ 1.501

.

(d) The filing date of the request for

ex parte

reexamination is the date on which the request satisfies all the

requirements of this section.

(e) A request filed by the patent owner may include a proposed

amendment in accordance with

§ 1.530

.

(f) If a request is filed by an attorney or agent identifying another

party on whose behalf the request is being filed, the attorney or agent must have

a power of attorney from that party or be acting in a representative capacity

pursuant to

§

1.34

.

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

AIA 35 U.S.C.

315(e)(1)

or

35 U.S.C. 325(e)(1)

. The estoppel

provisions of

AIA 35 U.S.C. 315(e)(1)

or

35 U.S.C

.

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

AIA 35 U.S.C.

315(e)(1)

or

35 U.S.C. 325(e)(1)

. The estoppel

provisions of

AIA 35 U.S.C. 315(e)(1)

or

35 U.S.C.

325(e)(1)

are based on

inter partes

review and

post-grant review, respectively, and they only prohibit the filing of a subsequent request

for

ex parte

reexamination, once estoppel attaches; there is no estoppel

as to the Office maintaining an existing

ex parte

reexamination

proceeding. The request must include the elements set forth in

37 CFR 1.510(b)

(see

MPEP

§ 2214

) and must be accompanied by the appropriate fee under

37 CFR 1.20(c)(1) or

(c)(2)

. A request filed with the fee under

37 CFR

1.20(c)(1)

must comply with all the requirements of

37 CFR

1.20(c)(1)

(e.g., the request has forty (40) pages or less). See

MPEP §

2214

, subsection II. If a request filed by the patent owner

includes a proposed amendment in accordance with

37 CFR 1.530

, excess claims fees under

37 CFR

1.20(c)(3)

and

(c)(4)

may also apply; see

MPEP §

2250.03

. No attempt will be made to maintain a requester’s name

in confidence.

A request for reexamination under

37 CFR 1.510

may be

submitted to the Office via mail, hand-delivery, or via the USPTO patent electronic filing

system. See

MPEP §

2224

for more information on submission via mail and

hand-delivery. For electronic submissions, both registered and unregistered users of the

USPTO patent electronic filing system may submit a request for reexamination

electronically. A request for reexamination submitted via the USPTO patent electronic

filing system must be submitted as a new request in the electronic interface and not

submitted as a follow-on paper into the patent

ion via mail and

hand-delivery. For electronic submissions, both registered and unregistered users of the

USPTO patent electronic filing system may submit a request for reexamination

electronically. A request for reexamination submitted via the USPTO patent electronic

filing system must be submitted as a new request in the electronic interface and not

submitted as a follow-on paper into the patent. The Office may refer third-party inquiries,

requests, or submissions that are improperly submitted via the USPTO patent electronic

filing system by registered practitioners in applications and any other Office proceedings

to the Office of Enrollment and Discipline for appropriate action.

After the request for reexamination, including the appropriate fee under

37 CFR 1.20(c)(1) or

(c)(2)

, is received in the Office, no abandonment, withdrawal, or

striking of the request is possible, regardless of who requests the same. In some limited

circumstances, such as after a final court decision where all of the claims are finally

held invalid, a reexamination order may be vacated if the decision was rendered prior to

the order, and the reexamination may be terminated if the decision was rendered subsequent

to the order, see

MPEP §

2286

.

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