M.P.E.P. 2200 Citation of Prior Art and Re-Examination of Patents

Question 1

What are the topics covered in 2200?

Answer 1

1. Citation of Prior Art/Written Submissions
2. Ex Parte Reexamination

Question 2

Who can file Citation of Prior Art (Written Submissions) and what items of information can be submitted?

Answer 2

Available to anyone.
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May submit prior art in the from of:
1. Printed Patents
2. Publications
3. Patent Owner Statements in which the patent owner took a position on the scope of any claim of the patent (must be filed in a proceeding before a federal court or USPTO–but NOT the ITC)
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* *Puts people on notice of what is out there.
* *Free filing.

Question 3

What must patent owner statements identify? (Citation of Prior Art)

Answer 3

1. The forum and proceeding in which the patent owner filed each statement;
2. The specific papers and portions of the papers submitted that contain the statement;
   AND
3. How each statement submitted is a statement in which the patent owner took a position on the scope of any claim in the patent.

Optionally:
4. Information regarding the status of the proceeding,
AND
5. The relationship of the proceeding to the patent.

Question 4

Is service required of the submission from a third party?

Answer 4

Yes, and it must include a certification that it has been served in its entirety upon the patent owner.

Question 5

What is Ex Parte Re-Examination?

Answer 5

A process by which the validity of an issued US patent is reviewed by the Patent Office upon limited grounds.

Anyone in the world can request for re-examination, including the patent owner.

Question 6

What must a Re-examination request contain?

Answer 6

1. A statement pointing out each substantial new question of patentability;
2. Identification of every claim for which reexamination is sought, and a detailed explanation applying the art to the claims;
3. A copy of every patent or publication relied upon + English translation;
4. A copy of the entire patent (specification and claims with two columns per page on one side only);
5. A certificate that the patent owner has been served if filed by someone other than the patent owner; and
6. Certification by 3rd party requester that the statutory estoppel provisions do not prohibit the requester from filing the ex parte reexamination request.

Question 7

What happens to the third party after requesting a re-exam?

Answer 7

They are done.

But they can attend and watch UNLESS owner/inventor requests for it to be closed.

Question 8

Substantial New Questions

Answer 8

Different prior art not looked at by the examiner.

Can be based upon any patent or printed publications qualifying as prior art.

Requester can petition a rejection of this threshold rejection.

Question 9

Ex Parte Prosecution

Answer 9

The reexamination goes into ex parte prosecution between the examiner and patent owner.

Question 10

Testable Points

Answer 10

1. While reexamination is public, a third party who initiates reexamination still cannot participate unless it is an inter partes re-exam.
2. Automatice extensions of time are not available in reexaminations ONLY extensions for cause under 1.550(c) and petition fee.
3. A reexamination is not an application, so no continuations are permitted.
4. A reexamination cannot be withdrawn or cancelled after filing;
5. New claims can be added, but not broader claims (that is re-issue before two years)
6. A final rejection of the examiner can be appealed like a normal application by the patent owner, but not by a third party requestor.
7. A re-exam can be revived if delay is unintentional;
8. Appeals from PTO decisions can only go to the Court of Appeals for the Federal Circuit (CAFC)
9. Intervening Rights exist as the do in Re-issue.
   
   • fixed claim that now you are covering a third party.
   • Opportunity to pay reasonable royalty.

Question 11

Inter Partes Reexamination

Answer 11

Discontinued in December 2012.

Almost certainly wrong answer on the exam.

Reasonable likelihood of success is the threshold

Question 12

What is the response period for reexam final rejection?

Answer 12

Same, three for free.

Question 13

If the examiner issues a decision denying the request for reexamination, what can a requester do?

Answer 13

File a petition to the Commissioner within one month of the mailing date of the decision.

Question 14

Who can file for a reexamination/ ex parte reexamination?

Answer 14

Anyone including patent owner and USPTO Commissioner

Question 15

How long do you have to file a request for reexamination?

Answer 15

As long as the patent is unexpired and until 6 years after the patent has expired.

Question 16

What items of information can the request for reexamination rely on?

Answer 16

patents and printed publications;
cannot rely on patent owner statements

Question 17

What happens after a citation or prior art/written submission is filed?

Answer 17

Citation is merely placed in the file available to the public. PTO will not take any further action to interpret what is it that has been submitted as to its effect on the claims in the patent without a separate request for reexamination or other post-grant proceeding.

Question 18

Does a copy need to be served to the patent owner in filing a citation of prior art?

Answer 18

yes–when the 3rd party files a submission, service on the patent owner is required and requires a certification that it has been served in its entirety upon the patent owner.

Question 19

Can submitter of the request for Citation of Prior Art be kept confidential?

Answer 19

Yes

Question 20

Is Citation of Prior art a post-grant proceeding?

Answer 20

Yes–so it only applies to issued patents.

Question 21

What does the submitter need to explain in writing in a Citation of Prior Art/Written Submission?

Answer 21

The relevance and manner of applying any prior art or written statement and the accompanying information to at least one claim of the patent. Otherwise, the submission will NOT become a part of the official file of the patent.

Question 22

Can the Office use patent owner statements to decide whether to order or institute a post-patent proceeding?

Answer 22

No. The USPTO may not use the statement filed (or a citation of prior art) for any purpose other than determining the claim scope in a proceeding that has already been ordered/instituted.

Question 23

Can patent owner file a response to a third party citation of prior art?

Answer 23

sort of–patent owner would file their own submission containing the same prior art and/or patent owner claim scope statement as that of the 3rd party and may include a written explanation of how the claims of the patent differ from the prior art or any patent owner claim scope statement and accompanying info submitted by the 3rd party.

Question 24

What is considered the date of the request for reexamination/ex parte reexamination

Answer 24

The date of the reexamination filing is the date the complete fee is received. So you can pay later, but you won’t be given a reexamination filing date until you pay.

Question 25

What is the threshold determination for granting a request for reexamination?

Answer 25

whether a SNQ of patentability has been raised.
If no –> refund of most of reexamination fee; proceedings end; not right of appeal.

If yes –> patent owner files a statement (not required). If statement is filed, 3rd party requestor can respond, so filing a statement is not advised.

Question 26

Is reexamination public?

Answer 26

Yes, but third party who initiates the reexamination still cannot participate unless it is an inter partes reexamination (discontinued with AIA).

Question 27

Are automatic extensions of time available in reexaminations?

Answer 27

No–only extensions for cause and petition fee are available.

Question 28

Are continuations allowed in reexamination?

Answer 28

No, b/c reexamination is not an application.

Question 29

Can a reexamination be withdrawn or cancelled after filing?

Answer 29

No. No legal estoppels.

Question 30

Can new claim be added/broadened in a reexamination proceeding?

Answer 30

New claims can be added, but cannot broaden. Broadening claims can occurring in a reissue if reissue is filed within 2 years from issue date.

Question 31

Can the final rejection be appealed in reexamination decision?

Answer 31

Yes, it can be appealed by patent owner, but not by third party requestor.

Question 32

What is the fee for filing a Citation of Prior Arts/Written Submission

Answer 32

$0

Question 33

Before reexamination is granted, the examiner must find a ______.

Answer 33

SNQ

Question 34

All extensions of time in a reexamination must be under Rule ______.

Answer 34

1.550(c)–not 1.136(a) or (b).