Chapter 2200

Question 1

What are the 2 general types of reexamination?

Answer 1

ex parte

inter partes

Question 2

What is the difference between ex parte and inter partes reexaminations?

Answer 2

They are both initiated by the member of the public, but for ex parte reexamination, once the requestor has submitted her request, she no longer participates in the proceedings, whereas, during inter partes reexamination, the initiator continues to participate in the proceedings

Question 3

What can reexaminations be used for?

Answer 3

It can be used to correct defects in an issued patent or by others who wish to have a patent reexamination in light of written prior art

Question 4

How do you request a reexamination?

Answer 4

The requestor submits a request and pays the required fee

Question 5

What does the request include?

Answer 5

The request includes a prior art citation that concisely describes the alleged defects in the patent

explanation is required of how the person submitting the prior art considers it to be pertinent to the patent

Question 6

What are prior art limitations in reexaminations?

Answer 6

Prior art citations in reexaminations are limited to written prior art consisting of patents and printed publications

allegations of prior use, inequitable conduct, and other information not based on written prior art is not a valid grounds for reexamination

Question 7

What is the first thing that the Patent Office will determine with the reexamination request?

Answer 7

the PO will initially determine if a substantial new question of patentability is presented by prior art in the reexamination request and if so, then the reexamination moves forward in an expedited fashion and it is very similar to regular examination procedure in patent applications

Question 8

What are some basic characteristics of ex parte reexamination?

Answer 8

anyone can request the reexamination that anytime during the period of enforceability of the patent

prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of Section 102 and 103

a substantial new question of patentability must be presented for reexamination to be ordered

decision on the request must be made no later than 3 months from its filing, and the remainder of proceedings must proceed with “special dispatch” within the office

the scope of a claim cannot be enlarged by amendment during reexamination

all examination and patent files are open to the public