MPEP Ch. 2200

Question 1

MPEP Ch. 2200

Answer 1

Citation of Prior Art and Reexamination of Patents

Question 2

Reexamination Flow Chart

Answer 2

MPEP 2201, 2205, 2206 - Remember to look up.

Question 3

Who may request Reexam

Answer 3

Anyone, including patent owner. Must be based on prior art in the form of either printed pub or patents. Can request until 6-years after patent expires.

Question 4

Citation of Prior Art

Answer 4

Anyone may submit prior art at any time. No fee is required. Copy must be served on patent owner. Placed in file but not considered unless a request for reexam or other post grant proceeding (then fee).

Question 5

Submitter of Prior Art Must:

Answer 5

ID form, papers, and how each statement was made.
Must explain in writing the relevance and manner of applying and PA or statement and the accompanying info to at least one claim of the patent.
Must serve on patent owner/agent.

Question 6

Consideration of Statements or citations of PA by USPTO

Answer 6

May not consider such statements when deciding whether to order or institute a post grant proceeding. May only use them to determine claim scope in a proceeding already ordered or instituted.

Question 7

Reexamination

Answer 7

Anyone can request. Validity reviewed by PTO upon limited grounds.
Request must include:
(1) statement pointing out each substantial new question of patentability;
(2) ID of every claim for which reexam is sought and a detailed explanation applying the art to the claims;
(3) a copy of every patent or pub relied upon;
(4) a copy of the spec 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 patent owner.
Fee can be paid later, but reexam filing is the date the fee is received.

Question 8

Substantial new question

Answer 8

Greater than preponderance, not C&C.

Question 9

Patent Owner Statement

Answer 9

If PTO decides a new question of patentability exists, patent owner is given 2 months to file a statement (not required to do so).

Question 10

Reexam proceedings

Answer 10

ex parte prosecution between examiner and patent owner. Third-party requesters not allowed to participate. At the end, a reexam certificate is issued that cancels, confirms, and/or adds claims.

Question 11

Reexam test points

Answer 11

(1) while reexam is public, third party cannot participate unless it is an inter pares reexam.
(2) automatic extension of time are not available, only extensions for cause and fee;
(3) reexam is not an app so no continuations are permitted;
(4) reexam cannot be withdrawn or cancelled after filing;
(5) new claims can be added, but not broader claims
(6) final rejection of the examiner can be appealed like a normal app by the patent owner, but not by a third-party requestor.
(7) reexam can be revived if delay is unintentional.
(8) appeal from PTO decision can only go to CAFC
(9) Interening rights exist as they do in re-issue.

Question 12

Inter Partes Reexam

Answer 12

Discontinued 9/16/12.
only apply to apps filed on or after Nov. 29, 1999.
Answer with I.P. Reexam is probably wrong.