MPEP Q & A 22: Required Elements of a Request for Ex Parte Reexamination

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Question:

List one of the required elements of a request for ex parte reexamination.

Answer:

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.”

Chapter Details:

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

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 2214 of the MPEP.  The following is a brief summary of section 2214.

2214    Content of Request for Ex  Parte Reexamination

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.

 

 

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