MPEP 2200 Citation of Prior Art and Reexamination of Patents

Question 1

Citation of prior art:
1. Who can submit prior art?
2. Is there a fee to submit prior art?
3. What is considered prior art?

Answer 1

1. Anyone can submit prior art.
2. A fee is not required.
3. Citation of prior art includes Patents, Publications, Written statements made by the patent owner, Publicly known or used devices, Methods, or Compositions of matter.

Question 2

When submitting prior art, what information should be supplied so that the USPTO can identify the prior art reference and understand its relevance to the patent?

Answer 2

Information should include:
Title of the prior art reference;
Authors of the prior art reference;
Date of publication;
Brief description of the relevant content.

Question 3

What is an ex parte reexamination and who can request them?

Answer 3

An ex parte reexamination is a proceeding in which the USPTO reviews a patent to determine whether is should be revoked or amended in light of newly cited prior art.

These proceedings can be requested by anyone, including the patent owner.

Question 4

What must a requester file to request an ex parte reexam?

Answer 4

The requester must file a petition with the USPTO that includes:
1. The identity of the patent to be reexamined;
2. The prior art that the requester is relying on;
3. A detailed explanation of why the requester believes that the prior art renders the patent claims invalid.

The USPTO will then review the request to determine whether there is a Substantial New Question of Patentability (SNQ). If there is one then the Ex parte reexam will take place.

Question 5

What is a Preissuance Submission?

Answer 5

Preissuance Submission (PIS) is a submission made during the pendency of a patent application before the patent is granted in which any person may challenge the validity of any of the pending claims. PIS was instituted by the Leahy-Smith America Invents Act (AIA), and became available to use as of September 16, 2012.

Question 6

What must be filed for a Preissuance Submission?

Answer 6

Submission must include:
1. Document list identifying the publications, or portions of publications submitted.
2. Concise description of the asserted relevance of each item identified in the document list.
Set forth facts and explain how an item is of potential relevance; no arguments or conclusions regarding patentability. Example formats: a narrative or claim chart.
3. Copy of those items listed on the document list, other than U.S. patents and U.S. patent application publications.
4. English language translation of any non-English language document.
5. Statement by the party making the submission that: The party is not an individual who has a duty to disclose information with respect to the application under 37 C.F.R. §1.56; and The submission complies with the requirements of 35 U.S.C. §122(e) and 37 C.F.R. §1.290.
6. Required fee or a statement regarding the fee exemption. Required fee for every ten documents listed or fraction thereof.
Fee exemption for three or fewer documents, as long as it’s the party’s first submission and a “first and only” statement is included. Small entity discount; no micro-entity discount.

Question 7

When can a Preissuance Submission be filed?

Answer 7

File before the earlier of: (1) a Notice of Allowance or (2) the later of either (a) six-months after publication of the application or (b) the first rejection of the application.

Question 8

What is an Inter Partes Review?

Answer 8

An Inter Partes Review of a patent is a type of administrative trial proceeding. Inter partes review became available in 2012 and replaced inter partes reexamination as a way to challenge patentability at the Patent Office. Any person who is not the owner of a patent can file a petition for a review of a patent. The Patent Trial and Appeal Board (PTAB) will act on the petition either instituting a trial or denying institution of a trial. This will occur a little over six months after the petition is filed. If trial is instituted, the proceeding will, with some limited exceptions, be resolved within one year.

Question 9

what is challenged during an Inter Partes Review and how?

Answer 9

A petition for inter partes review must allege the invalidity of at least one patented claim in an issued patent. The grounds for invalidity may be either anticipation or obviousness (§102 or §103), or both, but the scope of prior art is limited to patents and printed publications. Further, the threshold standard for the petition to be granted is the reasonable likelihood of the petitioner’s success with respect to at least one challenged claim. There is a 14,000 word limit to the petition, and it may include declarations or affidavits.

Question 10

Who can file an Inter Partes Review?

Answer 10

Any person who is not the owner of the allegedly invalid patent and who has not filed a civil action challenging the validity of a claim in the patent may file a petition for IPR. In a suit alleging infringement, counterclaiming for invalidity does not bar the defendant from filing an IPR.

Question 11

What is the fee for filing an Inter Partes Review?

Answer 11

The fee for filing a petition for IPR is $9,000 for challenging up to 20 claims and $200 for each additional claim. If the petition is granted, there is a post-institution fee of $14,000 for up to 15 claims, and $400 for each additional claim.

Question 12

What is the timing for filing an Inter Partes Review?

Answer 12

An IPR petition may be filed nine months following the grant of a patent. In addition, if a post-grant review (PGR) proceeding has been initiated on the patent, then an IPR petition may not be filed until the PGR proceeding has been terminated. The nine month waiting period does not apply to any patents ineligible for PGR, for example, those patents issued under the First-to-Invent system.

Question 13

What is a Post Grant Review of a Patent?

Answer 13

A post-grant review, or PGR, is a trial proceeding where the patentability of one or more claims in a patent is reviewed. The review process begins when a third party, who is not the patent owner, files a petition within nine months of a patent being granted or reissued. This filing challenges a patent’s claim or claims based upon a specific ground. The Patent Trial and Appeal Board (PTAB) is the branch of the U.S. Patent and Trademark Office that handles the trial proceeding. The post-grant review can be filed on any grounds that are available to dispute the validity of a patent claim, except for the following: failure to disclose the best mode requirement.

Question 14

What is the Standard of Review for a Post Grant Review?

Answer 14

More likely than not (preponderance of the evidence)

Question 15

What is the Standard of Review for an Inter Partes Review?

Answer 15

Reasonable likelihood of success

Question 16

What is the Standard of Review for an Ex Partes Reexamination?

Answer 16

Substantial new question of patentability (SNQ)

Question 17

35 U.S. Code § 301

Answer 17

35 U.S. Code § 301 - Citation of prior art and written statements

Question 18

35 U.S. Code § 302

Answer 18

35 U.S. Code § 302 - Request for reexamination - allows any person to request an ex parte reexamination of a patent.

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.

Question 19

35 U.S. Code § 303

Answer 19

35 U.S. Code § 303 - Determination of issue by Director - sets the criteria for the USPTO determination of an exparte reexamination.

Question 20

35 U.S. Code § 304

Answer 20

35 U.S. Code § 304 - Reexamination order by Director - the ordering and procedure for conducting an ex parte reexamination proceedings; especially for the owner of the patent. If, in a determination made under the provisions of subsection 303(a), the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question. The patent owner will be given a reasonable period, not less than two months from the date a copy of the determination is given or mailed to him, within which he may file a statement on such question, including any amendment to his patent and new claim or claims he may wish to propose, for consideration in the reexamination.

Question 21

35 U.S. Code § 305

Answer 21

35 U.S. Code § 305 - Conduct of reexamination proceedings - outlines the procedures for carrying out and concluding an ex parte reexamination.

Question 22

35 U.S. Code § 306

Answer 22

35 U.S. Code § 306 - Appeal by patent owner in reexamination proceedings.
The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134, and may seek court review under the provisions of sections 141 to 144, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.

Question 23

35 U.S. Code § 307

Answer 23

35 U.S. Code § 307 - Certificate of patentability, unpatentability, and claim cancellation

In a reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Director will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.

Question 24

37 CFR § 1.501

Answer 24

37 CFR § 1.501 - Citation of prior art and written statements in patent files (to the USPTO)

Question 25

37 CFR § 1.510

Answer 25

37 CFR § 1.510 - Request for ex parte reexamination

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).

Question 26

37 CFR § 1.515

Answer 26

37 CFR § 1.515 - Determination of the request for ex parte reexamination

Within three months following the filing date of a request for an ex parte reexamination, an examiner will consider the request and determine whether or not a substantial new question of patentability affecting any claim of the patent is raised by the request and the prior art cited therein, with or without consideration of other patents or printed publications.

Question 27

37 CFR § 1.520

Answer 27

37 CFR § 1.520 - Ex parte reexamination at the initiative of the Director

The Director, at any time during the period of enforceability of a patent, may determine whether or not a substantial new question of patentability is raised by patents or printed publications which have been discovered by the Director or which have been brought to the Director’s attention, even though no request for reexamination has been filed in accordance with § 1.510 or § 1.913.

Question 28

37 CFR § 1.525

Answer 28

37 CFR § 1.525 - Order for ex parte reexamination

If a substantial new question of patentability is found pursuant to § 1.515 or § 1.520, the determination will include an order for ex parte reexamination of the patent for resolution of the question.

Question 29

37 CFR § 1.530

Answer 29

37 CFR § 1.530 - Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination

Question 30

37 CFR § 1.570

Answer 30

37 CFR § 1.570 - Issuance and publication of ex parte reexamination certificate concludes ex parte reexamination proceeding

To conclude an ex parte reexamination proceeding, the Director will issue and publish an ex parte reexamination certificate in accordance with 35 U.S.C. 307 setting forth the results of the ex parte reexamination proceeding and the content of the patent following the ex parte reexamination proceeding.

Question 31

When is an ex parte reexamination certificate issued?

Answer 31

An ex parte reexamination certificate is issued at the close of each ex parte reexamination proceeding in which reexamination has been ordered under 37 CFR 1.525, except for the following two cases: (A) The ex parte reexamination proceeding is merged with a reissue application pursuant to 37 CFR 1.565(d).

Question 32

What is Inter Partes Reexamination?

Answer 32

The inter partes reexamination statute and rules permit any third party requester to request, prior to September 16, 2012, inter partes reexamination of a patent which issued from an original application filed on or after November 29, 1999, where the request contains certain elements (see 37 CFR 1.915(b)) and is accompanied by the fee required under 37 CFR 1.20(c)(2). (MPEP 2609)

Question 33

§ 1.913 Persons eligible to file, and time for filing, a request for inter partes reexamination.

Answer 33

§ 1.913 Persons eligible to file, and time for filing, a request for inter partes reexamination.

(a) Except as provided for in § 1.907 and in paragraph (b) of this section, any person other than the patent owner or its privies may, at any time during the period of enforceability of a patent which issued from an original application filed in the United States on or after November 29, 1999, file a request for inter partes reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501.

(b) Any request for an inter partes reexamination submitted on or after September 16, 2012, will not be accorded a filing date, and any such request will not be granted.

Question 34

What happens in a reexamination proceeding where a patent owner fails to file a timely and appropriate response to any Office Action?

What happens if it was unintentional, etc.?

Answer 34

In a reexamination proceeding where patent owner fails to file a timely and appropriate response to any Office action, the reexamination proceeding will be terminated via issuance of the Notice of Intent to Issue Reexamination Certificate. See MPEP 2266.

The registered practitioner should file a petition for revival of a terminated reexamination proceeding showing the delay was unavoidable or unintentional, and the appropriate petition fee for entry of late papers. The patent owner will need to file a petition for entry of late papers in order to have their response entered, considered and acted upon. According to MPEP 2268, “[pursuant to 37 CFR 1.550(d),an ex parte reexamination proceeding is terminated if the patent owner fails to file a timely and appropriate response to any Office . . . An ex parte reexamination proceeding terminated under 37 CFR 1.550(d) can be revived if the delay in response by the patent . . . was unavoidable in accordance with 37 CFR 1.137(a), or unintentional in accordance with 37 CFR 1.137(b).”