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2214    Content of Request for Ex Parte Reexamination

MPEP SECTION SUMMARY This section outlines the required elements of a request for ex parte reexamination. One essential item includes a statement pointing out each substantial new question of patentability based on prior patents and printed publications. Additional requirements are discussed in this section.

I. REQUIREMENTS UNDER 37 CFR 1.510

37 CFR 1.510(a) requires the payment of the fee for a request for reexamination.

• If a request filed by the patent owner includes a proposed amendment, excess claims fees may also apply.

The required elements of a request for ex parte reexamination are as follows:

• “A statement pointing out each substantial new question of patentability based on prior patents and printed publications.”
• “An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested.
• "A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non- English language patent or printed publication.”
• "A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.”
• "A certification that a copy of the request filed by a person other than the patent owner has been served in its entirely on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office.”
• "A certification by the third party requester that the statutory estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the ex parte reexamination request.”

The rules do not require an ex parte reexamination requester to identify themselves upon the filing of the request.

II. REQUESTS FILED ON OR AFTER JANUARY 16, 2018

Requests for ex parte reexamination filed on or after January 16, 2018 may be filed with a reduced filing fee.

• This reexamination filing option was created to make it financially less burdensome for requesters with limited resources.
  
  

MPEP SECTION SUMMARY This section discusses the fee guidelines for requesting ex parte reexamination. In order for a request to be accepted, be given a filing date, and be published in the Official Gazette, the request papers must satisfy all the requirements. The entire fee for filing a request for reexamination must be paid. If the request was filed by the patent owner and includes a proposed amendment, excess claims fees may also apply.

 

For ex parte reexamination requests, which are filed on or after January 16, 2018, the entire fee required under 37 CFR 1.20(c)(1) or 37 CFR 1.20(c)(2), as appropriate, must be paid if the request is to be granted a filing date.

• If the filing fee under 37 CFR 1.20(c)(1) is paid, the request must also comply with all of the requirements set forth in 37 CFR 1.20(c)(1).
• Similarly, if the filing fee under 37 CFR 1.20(c)(2) is paid, the request must also comply with the requirements set forth in 37 CFR 1.20(c)(2).

For ex parte reexamination requests which were filed before January 16, 2018, the entire filing fee set forth in former 37 CFR 1.20(c)(1), which was in effect on or before January 15, 2018, must have been paid in order for the request to have been granted a filing date.

In addition, regardless of which filing fee is submitted, if the request is filed by the patent owner and includes a proposed amendment in accordance with 37 CFR 1.530, excess claims fees under 37 CFR 1.20(c)(3) and (c)(4) may also apply.

I. FILING FEE FOR EX PARTE REEXAMINATION REQUESTS FILED ON OR AFTER JANUARY 16, 2018

For ex parte reexamination requests filed on or after January 16, 2018, the Office established a reduced fee, set forth in 37 CFR 1.20(c)(1), for filing a request which has forty (40) or fewer pages and which complies with all of the other requirements of 37 CFR 1.20(c)(1), i.e., a "streamlined" request.

For ex parte reexamination requests filed on or after January 16, 2018 which do not comply with the requirements (A) through (E) of 37 CFR 1.20(c)(1)(i) (such as, e.g., requests having greater than forty (40) pages), but which comply with the provisions of 37 CFR 1.20(c)(2), i.e., a "non-streamlined" request, the fee for filing the request is set forth in 37 CFR 1.20(c)(2).

A. The Filing Fee under 37 CFR 1.20(c)(1)

Requests for ex parte reexamination filed on or after January 16, 2018, which have forty (40) or fewer pages and which comply with all of the other requirements of 37 CFR 1.20(c)(1), i.e., "streamlined" requests, may be filed with a reduced filing fee set forth in 37 CFR 1.20(c)(1).

• This reexamination filing option was created to make it financially less burdensome for requesters with limited resources.

A request which is filed under 37 CFR 1.20(c)(1) remains subject to all applicable filing requirements, with the sole exception that the filing fee is reduced.

• Filing a request that meets the requirements of 37 CFR 1.20(c)(1) does not impact the subsequent reexamination process, including the order in which the case is taken up for action by the examiner.
• The filing of a request which meets the requirements of 37 CFR 1.20(c)(1) will not cause the prosecution of any resulting reexamination proceeding to be accelerated or prioritized.

B. The Filing Fee under 37 CFR 1.20(c)(2)

The filing fee set forth in 37 CFR 1.20(c)(2) applies to a request for reexamination which does not comply with requirements (A) through (E) of 37 CFR 1.20(c)(1)(i), i.e., a "non-streamlined" request.

• For example, the filing fee pursuant to 37 CFR 1.20(c)(2) must be paid when submitting a request having greater than forty (40) pages.

To be granted a filing date, a request for which the filing fee set forth in 37 CFR 1.20(c)(2) is paid must also have sufficient clarity and contrast to permit direct reproduction and electronic capture by use of digital imaging and optical character recognition, pursuant to the provisions of 37 CFR 1.20(c)(2).

II. FILING FEE FOR EX PARTE REEXAMINATION REQUESTS FILED BEFORE JANUARY 16, 2018

For ex parte reexamination requests which were filed before January 16, 2018, the filing fee is set forth in former 37 CFR 1.20(c)(1), which was in effect prior to January 16, 2018.

III. ENTITY STATUS

There are different filing fees for a large entity, a small entity and a micro entity, when filing a request for ex parte reexamination.

In order for a requester to pay small entity or micro entity fees, a requester must affirmatively state that it is eligible for small entity or micro entity status (respectively).

For example, a requester can affirmatively assert small entity status by checking the appropriate box on the transmittal form. 

• However, only a patent owner requester can establish micro entity status.
• A third party requester cannot establish micro entity status, since a third party requester is not provided for in 37 CFR 1.29. 

IV. INCOMPLETE REQUESTS

If the appropriate filing fee and any applicable excess claim fees are not paid in their entirety, or if the request fails to meet all of the requirements of the rule governing the filing fee submitted, and all of the requirements of 37 CFR 1.510(a) and (b), the request will be considered to be incomplete.

Where the entire filing fee and any applicable excess claim fees are not paid after the requester has been given one opportunity to do so (i.e., the defect is not cured), no determination on the request will be made.

• The request will not be granted a filing date.

V. REFUNDS

If the request for ex parte reexamination is subsequently denied, or vacated, a refund in accordance with 37 CFR 1.26(c)(1) will be made to the identified requester.

• If the request for ex parte reexamination is found to be incomplete and the defect is not cured, a refund in accordance with 37 CFR 1.26(a) will be made to the identified requester.

 

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