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Citation of Prior Art and Ex Parte Reexaminations Summary for the Patent Bar Exam

MPEP 2200 deals with the citation of prior art and Ex Parte Reexaminations.

         The citation of prior art deals with the presentation of patents and/or printed publications to be placed in the patent’s file wrapper. This is done to ensure their consideration is future reissue or reexamination proceedings. Ex Parte Reexaminations is a mechanism for a correction of scope and contents of a patent through a substantial new question of patentability regarding one or more claims through other patents or printed publications.

Citation Of Prior Art:

So who can file citations of prior art in a patents file wrapper? Any person can excluding examiners. This includes the patent owner or those material pertinent to the applications prosecution. The prior art citations can be made at anytime during the enforceability of the patent which includes the expiration date plus six years. Unless the citations are submitted by the patent owner, a reexamination requester or as part of a third party requester’s reply a prior art citation will not be entered into the file wrapper of a patent which is pending reexamination.

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5.9 – MPEP 2200 Citation of Prior Art and Ex Parte Re-examination

Ex Parte Reexamination AIA Citation of Prior Art and Pre Issuance Submissions by 3rd Parties

Ex Parte Reexamination AIA Citation of Prior Art and Pre Issuance Submissions by 3rd Parties

MPEP 2200 deals with the citation of prior art and Ex Parte Reexaminations.

The citation of prior art deals with the presentation of patents and/or printed publications to be placed in the patent’s file wrapper.  This is done to ensure their consideration is future reissue or reexamination proceedings.  Ex Parte Reexaminations is a mechanism for a correction of scope and contents of a patent through a substantial new question of patentability regarding one or more claims through other patents or printed publications.

Citation of prior art:

So who can file citations of prior art in a patents file wrapper?  Any person can excluding examiners.  This includes the patent owner or those material pertinent to the applications prosecution.  The prior art citations can be made at anytime during the enforceability of the patent which includes the expiration date plus 6 years.  Unless the citations are submitted by the patent owner, a reexamination requester or as part of a third party requester’s reply a prior art citation will not be entered into the file wrapper of a patent which is pending reexamination.

Filing procedure for citations of prior art:

A submission for prior art citations need to include a cover sheet which identifies the patent, issue date and patentee.  A list of the prior art documents which are not already of record along with an explanation of the pertinence of the prior art cited and how they apply to at least one claim of the patent.  If the submitter is a third party then a certificate of servicing to the patentee must be included or a copy of the papers serviced.  There are no fees.  Additionally, the submission can also include a copy of each piece of prior art (needs to be in English), as well as affidavits or declarations which are related to the prior art documents.  If they are submitted by the patent owner there should also be an explanation on how the claims of the patent are not anticipated or obvious over the cited prior art.

How does the USPTO handle prior art citations?

They are forwarded to the relevant technology center when received.  If the citation is proper and it was filed by the patent owner it will be entered into the patents file.  If it is proper but was done by a third party it is also entered into the patents file but a notice and duplicate copy of the papers are sent to the patent owner as well.  If the citation is not proper and filed by the patent owner they will be returned to the patent owner.  If the citation is not proper and filed by a third party a notice is sent to the third party and to the patent owner.  Duplicate copies of the papers are sent to the owner and the originals are returned to the third party.  If the third party was not known the originals are sent to the owner.

In the event that the citations were proper but the patent is under a reexamination, the filings are put in storage until the reexamination has terminated.  Notice is sent to the third party if they are known and the notice and duplicate copies are sent to the patent owner.

America Invents Act – Citation of Prior Art Update

Section 6(g) of the America invents act amends 35 USC 301 to expand the scope of information any party may cite in a patent file to include written statements regarding patentability made by the patent owner before a federal court or the office.  Previously, only patents or printed publications could be cited in a patent file.

Either 3rd party or the patent owner can cite patent owner statements in a patent file.  A 3rd party can request to have their identity remain unknown and it will not be included in the patent file.

Claim scope submission:

A statement regarding the scope of the claims made before federal court or the USPTO is allowed to be filed.  The following are required for this claim scope statement to be allowed: an explanation of the pertinence and manner of applying the written statement to at least one claim; Additional evidence, documents or pleadings from the proceeding where the statement took place that address statement; Explanation of the pertinence and manner of applying the written statement to at least one claim; Additional evidence, documents or pleadings from the proceeding where the statement took place that address statement; Identification of the proceeding where the patent owner made the statement; Identification of the papers or portion of the papers where the statement is made; Explanation of how the statement takes a position on the scope of any claim; Proof that the statement was served to the patent owner by the third party.  The patent owner can explain how the patentability is effected when submitting a claim scope statement.

These written statements can only be used by the office to determine the meaning of the patent claim in ex parte re-examination’s THAT HAVE ALREADY BEEN ORDERED, inter parte reviews and post-grant review proceedings that have been instituted.  The claim construction will not be solely based on submitted statement during the reexamination, but the statement will be weighed with other relevant information by the USPTO.

America Invents Act – Pre-Issuance Submissions by Third Parties

Third parties are given more opportunity to submit documents during pendency of a patent application through section 8 of the America invents act.  The time for submission is extended as well as the third-party’s ability to comment on each document submitted.  Document types for submission are unchanged and include patents, published patent applications and other printed publications.

Specifics

Requirements for pre-issuance submissions include: Document list; Identification of publications being submitted (or portions of); Concise description regarding it relevancy; Concise description regarding it’s relevancy, Legible copy of each item on the document list; English language translation of foreign language documents; Statement that party does not have duty to disclose based on application in question; Statement that the submission complies with 35 U.S.C. 122(e) and 37 C.F.R. 1.290; and required fees or that a fee exemption exists for the situation.

For the concise description regarding it’s relevancy.  This should not propose rejections but instead facts of how the documents are relevant.  Additionally, it should point out pages or lines in the documents providing focused description.

For the legible copy of each item on the document list requirement.  For items that are not U.S. Patents and Patent Applications unknown publication date document allowed.  However one must supply evidence of publication, the date of retrieval or time frame for when available as published.  Evidence of this can include: affidavits, declarations, etc…

The time for these submissions is the earlier of: the date of the notice of allowance or the later of six months after the date of publication or the date of a first office action on the merits.  They must be filed prior to and not on the above dates.  If submission is made within this time frame the documents will be included in the applications file wrapper even if the application has become abandoned.

Patent owner not required to respond to submissions.  The third-party is not required to serve items to the applicant.

These submissions are allowed during the pendency of non-provisional utility patents, design patents, plant patents, and any continuing applications.  Pre-issuance and submissions are not allowed in re-issue applications because these applications are considered post-issuance proceedings.

Third-party pre-issuance submissions can be filed to the offices electronic filing system (which is encouraged by the USPTO).  One is also allowed to file by: First-class mail, USPS Express Mail or hand delivered.  There can be some delays in processing if they are not submitted through the EFS system.  Facsimile is not an allowed method of filing.

Multiple submissions by same party allowed, however the can only use the fee exemption once.

Fees

The fees for these filings are $180 for every 10 pages or fraction of.  The fee must accompany the submission as any delay in paying the fee is not allowed.  A fee exemption can apply.  This can allow an exemption for 3 or fewer documents if it is the parties first submission (a “first and only” statement must be included).  Additional unrelated parties can also obtain a fee exemption.

The office continues to only accept third-party protest filed before the earlier of the publication of the application or the mailing of the notice of allowance.

Ex Parte Reexaminations of Patents:

A commissioner on his own accord, the patentee or any other interested third party can request an Ex Parte Reexamination.  The ex part reexamination request must be in writing and give a statement showing each substantial new question of patentability.  Additionally, there is a required fee and no small entity status discounts apply.  The requester should submit copies of the patent including any disclaimers, certificates of correction, reexamination certificates and all the cited art which is relied upon (must be in English).  The claims which reexamination is sought need to be identified and the relevance of each item and how they pertain to the claims disclosed.  If the patentee filed the request they may supply a proposed amendment.  The USPTO gives the requester notice an 1 month to respond to any defects found in the submission.

Procedure:

Once the reexamination begins it is published in the official gazette.  The same art unit handles the reexamination, but usually a different examiner is tasked with it prosecution.  The USPTO has 3 months to determine if the reexamination is proper.

If the reexamination is denied and no new substantial question of patentability is found, an order is sent denying the reexamination to the requester and the patentee.  The requester has the option to petition the decision only once and it must be within 1 month of the mailing of the decision.  Both the decision to grant or not grant a reexamination and the decision from a petition to do so are not appealable.  The requester will receive a partial refund in fees if denied.

If the reexamination is granted the examiner issues an order granting the reexamination to the requester and the patentee stating each substantial new question of patentability relative to specific claims and the prior art.  The examiner will communicate their position regarding the issue raised by the requester.  Although the reexamination is granted, the examiner can take a different position on the material as the requester did to initiate the reexamination.  The patentee has the option to file a 37 C.F.R. § 1.181 petition to end the reexamination if they do not agree with it’s grant-ability.

All communications between the USPTO and the patentee or third party are served to the other party during the reexamination proceedings.  Also, the file is open to the public for inspection.

Office Actions during a Ex Parte Reexamination:

The first office action during an ex part reexamination should be completed within one month and mailed within 6 weeks of the filing or due date of the owner’s statement or the reply to the owners statement if submission is through a third party.  This office action needs to address all of the claims on a 35 U.S.C. § 102 or § 103 basis.  35 U.S.C. § 112 issues are only reviewed when new or amended claims are submitted by the patent owner.  The first office action shouldn’t have any restriction requirements.  If there are any issues which become apparent to the examiner which are not part of the reexamination they should be noted but not addressed.

The reply to the first office action is due within 2 months and only good cause situations can result in a extension of time.  Any good cause requests for extension of time need to be submitted before the due date.  The 2 month limit is reduced to 1 month if the reexamination is order by a court.  The reply is the same as regular, but amendment need to be made in a special format (37 C.F.R. § 1.530(d)-(j)).  If the requester fails to reply to an office action, the proceedings are terminated and a reexamination certificate is issued in accordance with the last office action.  The reexamination can be revived through a 37 C.F.R. § 1.137 petition and must be unintentional or unavoidable reasons for the delay resulting in the termination.  The second office action is almost always the final office action.

Conclusion of Ex Parte Reexaminations:

If there is no final rejection or appeal, the examiner will issue a notice of intent to issue a reexamination certificate stating the reasons for allowance.  There is no required issue fee.  The certificate will be published in the official gazette.  Intervening rights are granted similar to a reissue application.  If there is a final rejection the examiner issues a 2 month period for the patent owner to reply or appeal the decision.

Can there be only one reexamination request?

No there can be many.  If a later request for ex parte reexamination relies on the same prior art as cited in a previous request the reexamination is automatically granted.  Future requests which rely on different prior art at decided on a case by case basis.  For instances where there is more than three months between the date of second request and the expected issue date of a reexamination certificate a group director merges the first and any following examinations suspending the issuance of reexamination certificate from the first proceeding.  A patent owner needs to file original and identical papers in both of these cases and the same claims must be pending in both cases.  The examiner will issue an identical office action in both cases but multiple reexamination certificates will issue.  For instances where a second request for ex parte reexamination is received within 3 months form the expected issue date of a reexamination certificate from the first proceeding the group director will not merge (usually) the two proceedings together.  The subsequent requests are decided in view of any new claims formed in the first ex parte reexamination proceeding.

Ex Parte Reexaminations and how they effect other proceedings:

During an ex parte reexamination, a patent owner must disclose any other proceedings to the examiner.  In the case that an interference proceeding is taking place, the reexamination is not halted for resolution of the interference.  For reissue proceedings concurrent with an ex parte reexamination, the reissue and reexamination will be merged.  The resulting reissue patent will serve as the reexamination certificate.  The reissue rules will apply to this circumstance.  If cases where litigation of a patent case is stayed for conclusion of a reexamination proceeding certain time periods of the reexamination proceeding are shortened.  Any decision by the court regarding the invalidity or in-enforceability of the claims are binding on the USPTO.