Brief Summary:
This chapter discusses inter partes reexamination proceedings. These involve the initiator of the reexamination as well as the patent holder and an examiner. Many of the characteristics of an inter partes reexamination proceeding are identical to that of the ex parte reexamination proceedings discussed in chapter 2200. The major differences with inter partes proceedings are outlined here in this chapter.
Key Terms:
| Appeal | An appeal is the process by which a party requests a higher authority, such as a patent appeals board or court, to review and change the decision of a lower authority regarding a patent application or dispute. |
| Citation of Prior Art | Citation of prior art involves referencing existing documents or inventions that are relevant to assessing the novelty and non-obviousness of a patent application, helping to determine its patentability. |
| Collateral Estoppel | Collateral estoppel is a legal principle that prevents a party from re-litigating an issue that has already been resolved in a previous case involving the same parties. |
| Inter Partes | Inter Partes refers to proceedings or actions involving opposing parties, such as inter partes review, where a third party can challenge the validity of a granted patent before a patent office. |
| Reexamination | Reexamination is a process where a patent office reevaluates the validity of an existing patent’s claims based on new evidence or prior art, potentially leading to confirmation, amendment, or cancellation of the patent. |
| Res Judicata | Res Judicata is a legal doctrine preventing the same dispute between the same parties from being litigated more than once after a final judgment has been rendered. |
37 CFR (Code of Federal Regulations):
| 37 CFR 1.501 – Citation of prior art in patent files. |
| 37 CFR 1.501 allows for the submission of prior art citations in patent files, enabling third parties to provide relevant information that may affect the patentability of an invention. |
| 37 CFR 1.111 – Reply by applicant or patent owner to a non-final Office action. |
| 37 CFR 1.111 details the procedures for applicants or patent owners to respond to a non-final Office action, including requirements for addressing objections and rejections to advance the examination process. |
35 USC (United States Code):
| 35 USC 141 – Appeal to the Court of Appeals for the Federal Circuit. |
| 35 USC 141 provides the right for applicants, patent owners, or adverse parties to appeal decisions from the Patent Trial and Appeal Board to the United States Court of Appeals for the Federal Circuit. |
| 35 USC 301 – Citation of prior art and written statements. |
| 35 USC 301 allows any person to submit prior art and written statements to the USPTO to be considered in the reexamination of a patent, potentially impacting its validity. |
Quick Statistics:
Number of Pages: 176 pgs
Sections: 2601 – 2696
List of Sections:
| 2601 | Introduction |
| • 2601.01 Flowcharts | |
| 2602 | Citation of Prior Art |
| 2603 – 2608 | [Reserved] |
| 2609 | Inter Partes Reexamination |
| 2610 | Request for Inter Partes Reexamination |
| 2611 | Time for Requesting Inter Partes Reexamination |
| 2612 | Persons Who May File a Request |
| 2613 | Representative of Requester |
| 2614 | Content of Request for Inter Partes Reexamination |
| 2615 | Fee for Requesting Inter Partes Reexamination |
| 2616 | Substantial New Question of Patentability/Reasonable Likelihood That Requester Will Prevail |
| 2617 | Statement in the Request Applying Prior Art |
| 2618 | Copies of Prior Art (Patents and Printed Publications) |
| 2619 | Copy of Printed Patent |
| 2620 | Certificate of Service |
| 2621 | [Reserved] |
| 2622 | Address of Patent Owner |
| 2623 | Withdrawal of Attorney or Agent |
| 2624 | Correspondence |
| 2625 | Untimely Paper Filed Prior to First Office Action |
| 2626 | Initial Processing of Request for Inter Partes Reexamination |
| 2627 | Incomplete Request for Inter Partes Reexamination |
| 2628 | [Reserved] |
| 2629 | Notice of Request for Inter Partes Reexamination in Official Gazette |
| 2630 | Constructive Notice to Patent Owner |
| 2631 | Processing of Request Corrections |
| 2632 | Public Access |
| • 2632.01 Determining If a Reexamination Request Was Filed for a Patent | |
| 2633 | [Reserved] |
| 2634 | Fee Processing and Procedure |
| 2635 | Record Systems |
| 2636 | Assignment of Reexamination |
| 2637 | [Reserved] |
| 2638 | Time Reporting |
| 2639 | [Reserved] |
| 2640 | Decision on Request |
| 2641 | Time for Deciding Request |
| 2642 | Criteria for Deciding Request |
| 2643 | Claims Considered in Deciding Request |
| 2644 | Prior Art on Which the Determination Is Based |
| 2645 | [Reserved] |
| 2646 | Decision Ordering Reexamination |
| 2647 | Decision Denying Reexamination |
| • 2647.01 Examples of Decisions on Requests • 2647.02 Processing of Decision | |
| 2648 | Petition From Denial of Request |
| 2649 – 2653 | [Reserved] |
| 2654 | Conduct of Inter Partes Reexamination Proceedings |
| 2655 | Who Reexamines |
| 2656 | Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination |
| 2657 | Listing of Prior Art |
| 2658 | Scope of Inter Partes Reexamination |
| 2659 | Res Judicata and Collateral Estoppel in Reexamination Proceedings |
| 2660 | First Office Action |
| • 2660.01 [Reserved] • 2660.02 The Title • 2660.03 Dependent Claims | |
| 2661 | Special Status for Action |
| 2662 | Time for Response and Comments |
| 2663 | [Reserved] |
| 2664 | Mailing of Office Action |
| 2665 | Extension of Time for Patent Owner Response |
| 2666 | Patent Owner Response to Office Action |
| • 2666.01 Amendment by Patent Owner • 2666.02 Correction of Patent Drawings • 2666.03 Correction of Inventorship • 2666.04 Fees for Adding Claims • 2666.05 Third Party Comments After Patent Owner Response • 2666.06 Service of Papers • 2666.07-2666.09 [Reserved] • 2666.10 Patent Owner Does Not Respond to Office Action • 2666.11 – 2666.19 [Reserved] • 2666.20 Third Party Does Not Comment After Patent Owner Response • 2666.21 – 2666.29 [Reserved] • 2666.30 Submission Not Fully Responsive to Non-final Office Action • 2666.31 – 2666.39 [Reserved] • 2666.40 Patent Owner Completion of Response and Third Party Comments Thereon • 2666.41-2666.49 [Reserved] • 2666.50 Examiner Issues Notice of Defective Paper in Inter Partes Reexamination • 2666.51-2666.59 [Reserved] • 2666.60 Response by Patent Owner/Third Party to Notice of Defective Paper | |
| 2667 | Handling of Inappropriate or Untimely Filed Papers |
| 2668 | Petition for Entry of Late Papers for Revival of Reexamination Proceeding |
| 2669 | [Reserved] |
| 2670 | Clerical Handling |
| 2671 | Examiner Action Following Response/Comments or Expiration of Time for Same |
| • 2671.01 Examiner Issues Action on Merits That Does Not Close Prosecution • 2671.02 Examiner Issues Action Closing Prosecution (ACP) • 2671.03 Panel Review | |
| 2672 | Patent Owner Comments/Amendment After ACP and Third Party Requester Responsive Comments |
| 2673 | Examiner Consideration of Submissions After ACP and Further Action |
| • 2673.01 Reopening Prosecution After ACP • 2673.02 Examiner Issues Right of Appeal Notice (RAN) | |
| 2674 | Appeal in Inter Partes Reexamination |
| • 2674.01 Cross Appeal After Original Appeal | |
| 2675 | Appellant Brief |
| • 2675.01 Respondent Brief • 2675.02 Informalities in One or More of the Briefs | |
| 2676 | Appeal Conference |
| 2677 | Examiner’s Answer |
| 2678 | Rebuttal Briefs |
| 2679 | Office Treatment of Rebuttal Brief |
| 2680 | Oral Hearing |
| 2681 | Board Decision |
| 2682 | Action Following Decision |
| 2683 | Appeal to Courts |
| 2684 | Information Material to Patentability in Reexamination Proceeding |
| 2685 | No Interviews on Merits in Inter Partes Reexamination Proceedings |
| 2686 | Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon |
| • 2686.01 Multiple Copending Reexamination Proceedings • 2686.02 Copending Reexamination and Interference Proceedings • 2686.03 Copending Reexamination and Reissue Proceedings • 2686.04 Reexamination and Litigation Proceedings • 2686.05 Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review | |
| 2687 | Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) and Conclusion of Reexamination Proceeding |
| • 2687.01 Examiner Consideration of Submissions After NIRC | |
| 2688 | Issuance of Inter Partes Reexamination Certificate |
| 2689 | Reexamination Review |
| 2690 | Format of Inter Partes Reexamination Certificate |
| 2691 | Notice of Inter Partes Reexamination Certificate Issuance in Official Gazette |
| 2692 | Distribution of Certificate |
| 2693 | Intervening Rights |
| 2694 | Concluded Reexamination Proceedings |
| 2695 | Reexamination of a Reexamination |
| 2696 | USPTO Forms To Be Used in Inter Partes Reexamination |