MPEP Q & A 182: Characteristics of Ex Parte Reexamination

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Question:

List one of the basic characteristics of ex parte reexamination.

Answer:

The basic characteristics of ex parte reexamination are as follows:

  • Anyone can request reexamination at any time during the period of enforceability of the patent;
  • In ex parte reexaminations, prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103. Patents may also be applied in a double patenting rejection;
  • A substantial new question of patentability must be present for reexamination to be ordered;
  • If ordered, the actual reexamination proceeding is ex parte in nature;
  • Decision on a request for reexamination submitted under 35 U.S.C. 302 must be made no later than 3 months from its filing, and the remainder of the proceeding must proceed with “special dispatch” within the Office;
  • If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of a reexamination certificate;
  • The scope of a claim cannot be enlarged by amendment;
  • All reexamination and patent files are open to the public;
  • The reexamination file is scanned into IFW to provide an electronic format copy of the file.

Chapter Details:

The answer to this question can be found in chapter 2200 of the MPEP. This chapter covers Citation of Prior Art and Ex Parte Reexamination of Patents.

The answer is from the 9th Edition, Revision 08.2017. 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 2209 of the MPEP.  The following is a brief summary of section 2209.

2209  Ex Parte Reexamination

The reexamination statute and rules permit any person to file a request for an ex parte reexamination containing certain elements and the fee required. The Office initially determines if “a substantial new question of patentability” is presented. If such a new question has been presented, reexamination will be ordered.

This section covers how reexamination proceedings differ from regular examination procedures and the basic characteristics of ex parte reexamination. For instance, anyone can request reexamination at any time during the period of enforceability of the patent and the prior art considered during reexamination is limited to prior art patents or printed publications.