MPEP Q & A 109: How Inter Partes Reexamination Differs From Ex Parte Reexamination

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Question:

List one way inter partes reexamination differs from ex parte reexamination.

Answer:

Inter partes reexamination differs from ex parte reexamination in matters of procedure, such as when the third party requester can participate, the types of Office actions and the timing of issuance of the Office actions, and the requirement for identification of the real party in interest.

Inter partes reexamination also differs from ex parte reexamination in the estoppel effect it provides as to the third party requesters and when the initiation of a reexamination is prohibited. Inter partes reexamination does not, however, differ from ex parte reexamination as to the substance to be considered in the proceeding.

Chapter Details:

The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers Optional Inter Partes Reexamination.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2658 of the MPEP.  The following is a brief summary of section 2658.

2658    Scope of Inter Partes Reexamination  

Inter partes reexamination differs from ex parte reexamination in matters of procedure, such as when the third party requester can participate, the types of Office actions and the timing of issuance of the Office actions, and the requirement for identification of the real party in interest.

Inter partes reexamination also differs from ex parte reexamination in the estoppel effect it provides as to the third party requesters and when the initiation of a reexamination is prohibited. Inter partes reexamination does not, however, differ from ex parte reexamination as to the substance to be considered in the proceeding.

This section discusses prior art patents or printed publications and double patenting, compliance with 35 U.S.C. 112, the criteria for enlargement of the scope of the claims, and other matters related to the scope of inter partes reexamination.