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

Question 1

Two topics covered

Answer 1

1. Citation of Prior Art

1. Re-Examination

Question 2

Who can do this: Citation of Prior Art

What can they submit?

Answer 2

Available to anyone.

May submit prior art in the from of: 
1. Printed Patents
2. Publications
OR
3. Patent Owner Statements

• *Puts people on notice of what is out there.
• *Free filing.

Question 3

What must patent owner statements identify?

Answer 3

1. The forum and proceeding in which the patent owner filed each statement; (list)
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.
   
   • in federal court or USPTO
   • Paragraph length

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

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.

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;
4. A copy of the specification and claims with two columns per page on one side only;
   AND
5. A certificate that the patent owner has been served if filed by someone other than the patent owner.

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.