37 CFR 1.915: Content of request for inter partes reexamination

Taken from the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

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1.915    Content of request for inter partes reexamination.

  • (a) The request must be accompanied by the fee for requesting inter partes reexamination set forth in § 1.20(c)(2).
  • (b) A request for inter partes reexamination must include the following parts:
    • (1) An identification of the patent by patent number and every claim for which reexamination is requested.
    • (2) A citation of the patents and printed publications which are presented to provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request.
    • (3) A statement pointing out, based on the cited patents and printed publications, each showing of a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested.
    • (4) A copy of every patent or printed publication relied upon or referred to in paragraphs (b)(1) through (3) of this section, accompanied by an English language translation of all the necessary and pertinent parts of any non-English language document.
    • (5) 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.
    • (6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address 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 of the request must be supplied to the Office.
    • (7) A certification by the third party requester that the estoppel provisions of § 1.907 do not prohibit the inter partes reexamination.
    • (8) A statement identifying the real party in interest to the extent necessary for a subsequent person filing an inter partes reexamination request to determine whether that person is a privy.
  • (c) If an inter partes request is filed by an attorney or agent identifying another party on whose behalf the request is being filed, the attorney or agent must have a power of attorney from that party or be acting in a representative capacity pursuant to § 1.34.
  • (d) If the inter partes request does not include the fee for requesting inter partes reexamination required by paragraph (a) of this section and meet all the requirements of paragraph (b) of this section, then the person identified as requesting inter partes reexamination will be so notified and will generally be given an opportunity to complete the request within a specified time. Failure to comply with the notice will result in the inter partes reexamination request not being granted a filing date, and will result in placement of the request in the patent file as a citation if it complies with the requirements of § 1.501.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (d) revised, 71 FR 9260, Feb. 23, 2006, effective Mar. 27, 2006; para. (d) revised, 71 FR 44219, Aug. 4, 2006, effective Aug. 4, 2006; para. (c) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; paras. (b)(2) and (b)(3) revised, 76 FR 59055, Sept. 23, 2011, effective Sept. 23, 2011]