Terms and Concepts

Request Requirements

Requests Compliant with 37 C.F.R. §§ 1.510 and 1.915

First, always refer to materials made available through the USPTO at Reexamination Information such as the following resource entitled “Filing Compliant Reexamination Requests” (USPTO Best Practices for Filing Requests for Reexamination – Dated 05-10-2010).

Each request for reexamination is reviewed in the Central Reexamination Unit (CRU) for compliance with 37 CFR §§ 1.510 or 1.915 before it is assigned a filing date. After it is assigned a filing date, it is sent to an examiner who decides if reexamination should be ordered.

Failure to comply with the technical requirements will result in issuance of a Notice of Incomplete or Non-Compliant Request for Reexamination (”Notice of Incomplete”) if the request is defective in one or more respects. The Notice of Incomplete will provide a detailed description of why the request cannot be processed. A fully compliant response must be received within 30 days or else the filing date will be vacated.

According to the CRU, compliance with these rules also tends to highlight information relevant to the examiner’s decision on whether to grant the reexamination. Clarification to the requirements was noticed in the Federal Register on August 4, 2006 . See Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings, 71 Fed. Reg. 44219 (4 Aug 2006), 1309 OG 216 (29 Aug 2006).

Best Practices for Filing Reexamination Proceedings

(1) File electronically.

a. Requests for reexamination may be filed as “new applications” in EFS-Web. After selecting “New applications,” select either utility or design as appropriate, with a type of “Reexam.” Once “Reexam” is selected, there is a drop-down box that designates if the request is an ex parte request or an inter partes request.

b. A guide to document codes for EFS-Web filing provides a list directed to the category “reexamination.”

(2) Get the basics correct.

a. Use form PTO/SB/57 for ex parte requests, and use form PTO/SB/58 for inter partes requests, in addition to an attached detailed request. The forms
are available at the USPTO forms index.

b. Include the correct fee. Current fee schedules are at the USPTO fee schedule index. As of August 12, 2010, the fee for an ex parte request filing under 1.20(c)(1) cost $2,520 and an inter partes request filing under 1.20(c)(2) cost $8,800. Under 1.20(c)(3), reexamination of independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination cost $220. Under 1.20(c)(4), reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination cost $52.

c. Include a copy of the patent to be reexamined including any disclaimer(s), certificate(s) of correction or prior reexamination certificate(s).

d. Remember that the papers filed will be scanned or transferred into the image file wrapper system. Small type (below 12 point), colors, photographs and small detailed drawings do not scan well and may be illegible in the image file wrapper system. Also, line spacing of at least 1.5 should be used to ensure the scanned text is legible.

(3) Provide a clear Statement of a Substantial New Question of Patentability (SNQ)

a. For at least one patent or publication cited in each proposed rejection or application of the art, provide a concise statement of what the new technological teaching is, e.g., state what the new technological teaching is or how the reference is technologically presented in a “new light,” for every claim for which reexamination is requested.

b. A new technological teaching presentation includes, for example, a discussion of subject matter in the cited reference that relates to at least one of the claim limitations and provides a teaching that was not considered by an examiner in the application of the art in the prior examination(s).

i. This discussion can be done in a single section of the request for all of the cited references.
ii. The requester should provide citations to specific portion(s) of the references that support the showing of a SNQ.
iii. In general, do not attempt to identify every limitation of the claim as the new technical teaching. This tends to obscure what new information, in comparison to the prior examination, is being added by the patents or printed publications.

c. State whether the reference was previously considered and to what extent it was considered in addition to stating what the new technological teaching is.

d. Provide the statements of the SNQs separate from the identification and explanation of the proposed rejections to which the SNQ is directed.

e. See the Manual of Patent Examiner Procedure (MPEP), sections 2216 and 2616.

(4) State clearly each and every Proposed Rejection

a. Do not “lump” together multiple proposed rejections based on different grounds.

i. Separate rejections based on anticipation and rejections based on obviousness.
ii. Separate rejections based on alternative primary or secondary teachings in obviousness rejections.
iii. Do not lump together multiple rejections by using “and/or.”

b. Be sure to group together rejections for multiple claims based on the same ground of rejection (e.g., claims 1-4, 6, 8, and 12 should be rejected under 35 U.S.C. 102(b) as anticipated by Smith).

i. Clearly state what claims are applicable to each and every proposed rejection.
ii. Do NOT use the phrase “at least” in front of listing the claims (e.g., “at least claims 1 and 2”).

c. Do not “suggest” other proposed rejections in footnotes or “disclaimertype” language.

d. For Patent Owner filed requests in ex parte reexamination, clearly state which references apply to which claims and how. The application of the art in the detailed explanation should be similar in format to a rejection based on anticipation or obviousness except that it will identify which elements of the claim are shown or taught by the references and also identify which elements are not.

(5) Provide a Detailed Explanation for each Proposed Rejection or Application of the Art

a. Provide a separate explanation for each proposed rejection, or, for Patent-Owner requests, for each application of the art.

b. Clearly state how the references apply to every claim limitation for each claim to which the proposed rejection is applied.

i. For every limitation:

1. Apply at least one of the references (i.e., point out how the reference meets/teaches the limitation);
2. In the case of a patent owner filed request, state that the limitation is not covered by the references; OR
3. In the case of a patent owner request, say/admit that the limitation is known or old in the art, or similar language.

ii. For a dependent claim, the explanation should clearly state how the prior art applies to the limitation(s) added by way of the dependent claim and also refer to the explanation of the claims from which it depends for the limitations set forth in those claims.

c. For obviousness proposed rejections, explain:

i. What claim limitations the primary or base reference teaches and what limitations it fails to teach;

ii. How the prior art teaches limitations not taught by the primary or base reference, or (in the case of a patent owner filed request) that such limitations are known in the art; and

iii. Why it would be obvious to one of ordinary skill in the art at the time the invention was made to combine or modify the teachings (e.g., provide a reason for the combination or modification).

d. The explanation must be in a claim chart or prose (narrative) format.

i. Do NOT do both as it lengthens the request and may result in inconsistencies between the claim chart and prose explanations.

e. Make sure the detailed explanation is consistent and congruent with the proposed rejections.

i. The explanation should include only the claims and references listed in the proposed rejection.
ii. The explanation should only explain anticipation when the proposed rejection is under 35 U.S.C. 102 and only explain obviousness when the proposed rejection is under 35 U.S.C. 103.
iii. Make sure a dependent claim is not subject to a proposed anticipation rejection when the claim it depends from is only subject to a proposed obviousness rejection.

(6) Citation of Patents and Publications

a. Provide a listing of all patents and publications that form the basis of the proposed rejections on form PTO/SB/08, PTO/SB/42, PTO-1449, or equivalent.

i. Only list documents that form the basis of a proposed rejection.

ii. Do not include litigation documents or “background” documents on the listing. “Background” documents should be avoided. If a document, that the requester considers to be a “background” document, is discussed in the detailed explanation of any proposed rejection, then the document must be cited as a basis for the proposed rejection, and must be included in the listing of all patents and publications that form the basis of the proposed rejection.

b. Provide a copy of each and every reference that is cited, except for U.S. Patent documents.

c. Provide an English language translation for the entire document or relevant portions, if the reference is not in the English language.

(7) If Third-Party Requesting, Serve the Request and All Related Papers

Serve to the Patent Owner’s correspondence address (37 CFR 1.33(a)) in the patent file.

a. Check PAIR to see the current address that is of record in the file of the patent for which reexamination is being requested.

b. Do not use the correspondence address in the assignment records or the address on the front of the patent without verifying the address with current records in PAIR.

(8) Patent Owner Must Update the Correspondence Address in the Patent

Correspondence is sent to the address in the patent file. See MPEP 2222.

(9) If Filing an Inter Partes Reexamination Request

a. Identify the real party or parties in interest.

b. Make the required certification that the estoppel provisions of 37 CFR 1.907 do not prohibit inter partes reexamination.

c. Check to see if the patent issued from an application filed on or after November 29, 1999. See MPEP 2611.

(10) Sign the Request.

a. Do not just sign the transmittal or cover letter.

b. Make sure the request is signed by a patent practitioner under 37 CFR 1.34 or a person authorized to act on behalf of the requester (e.g., the president of the company requesting reexamination).

c. Make sure the signature is in compliance with 37 CFR 1.4(d)(1) for handwritten signatures or 37 CFR 1.4(d)(2) for s-signatures.

(11) Be Mindful of the Statutory Constraints

Information that may be included in a reexamination (patents and printed publications), by not including:

a. Comments pertaining to any alleged misconduct, including inequitable conduct, of the patent owner.

b. Notification of litigation must be limited to bare notice, and must not include arguments or information. See MPEP 2282 and 2686.

c. Proposed rejections based on lack of utility or enablement under 35 U.S.C. 101.

d. Proposed rejections based on 35 U.S.C. 112.

e. Proposed rejections based on prior use or prior knowledge.