Chapter 2200

Question 1

Title of Chapter

Answer 1

Citation of Prior Art and Ex Parte Reexamination of Patents

Question 2

rules

Answer 2

35 USC 301

37 CFR 1.501, 502, 902

Question 3

37 CFR 1.501

Answer 3

• submission by 3rd party

- submission by patent owner

Question 4

ex parte reexam basics

Answer 4

• substantial new question of patentability (SNQ)
• anyone can request w/ fee and elements, not confidential
• can be requested at any time during enforceability
• not allowed on reissue apps because patent on which request based has been surrendered

Question 5

SNQ

Answer 5

• based on prior patents & publications
• owner has 2 months to file statement
• can’t be based on (list)
• rules for establishing (list)
• 35 USC 102
• case by case basis

Question 6

criteria of deciding request

Answer 6

• SNQ
• policy
• -> prior decisions by PTO on same/ substantially identical prior art in relation to same patent
• -> prior reissue app decision by director or based on grounds other than patents/printed pubs
• fed court decisions
• -> final holding of validity
• -> non-final holding of invalidity/unenforceability
• -> final holding of “” “”

Question 7

scope of ex parte

Answer 7

• 37 CFR 1.552
• 37 CFR 1.625
• prior patents/printed pubs
• compliance w/ 35 USC 112
• claims in proceeding must not enlarge scope
• other matters (lots)

Question 8

res judiciata

Answer 8

rejection on grounds of this not appropriate b/c all claims finally held invalid by fed court are withdrawn from consideration & not reexamined