2210 Request for Ex Parte Reexamination under 35 U.S.C. 302 [R-10.2019]
35 U.S.C. 302 Request for reexamination.
Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301. The request must be in writing and must be accompanied by payment of a reexamination fee established by the Director pursuant to the provisions of section 41. The request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested. Unless the requesting person is the owner of the patent, the Director promptly will send a copy of the request to the owner of record of the patent.
37 C.F.R. 1.510 Request for ex parte reexamination.
- (a) Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501, unless prohibited by 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). The request must be accompanied by the fee for requesting reexamination set in § 1.20(c)(1).
- (b) Any request for reexamination must include the following parts:
- (1) A statement pointing out each substantial new question of patentability based on prior patents and printed publications.
- (2) 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. For each statement of the patent owner and accompanying information submitted pursuant to § 1.501(a)(2) which is relied upon in the detailed explanation, the request must explain how that statement is being used to determine the proper meaning of a patent claim in connection with the prior art applied to that claim and how each relevant claim is being interpreted. If appropriate, the party requesting reexamination may also point out how claims distinguish over cited prior art.
- (3) 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.
- (4) 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.
- (5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirety 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.
- (6) A certification by the third party requester that the statutory estoppel provisions of 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.
- (c) If the request does not include the fee for requesting ex parte reexamination required by paragraph (a) of this section and meet all the requirements by paragraph (b) of this section, then the person identified as requesting 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 ex parte 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.
- (d) The filing date of the request for ex parte reexamination is the date on which the request satisfies all the requirements of this section.
- (e) A request filed by the patent owner may include a proposed amendment in accordance with § 1.530.
- (f) If a 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.
Any person, at any time during the period of enforceability of a patent, may file a request for ex parte reexamination by the U.S. Patent and Trademark Office of any claim of the patent based on prior art patents or printed publications, unless prohibited by the estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). The estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) are based on inter partes review and post grant review, respectively, and they only prohibit the filing of a subsequent request for ex parte reexamination, once estoppel attaches; there is no estoppel as to the Office maintaining an existing ex parte reexamination proceeding. The request must include the elements set forth in 37 CFR 1.510(b) (see MPEP § 2214) and must be accompanied by the appropriate fee under 37 CFR 1.20(c)(1) or (c)(2). A request filed with the fee under 37 CFR 1.20(c)(1) must comply with all the requirements of 37 CFR 1.20(c)(1) (e.g., the request has forty (40) pages or less). See MPEP § 2214, subsection II. If a request filed by the patent owner includes a proposed amendment in accordance with 37 CFR 1.530, excess claims fees under 37 CFR 1.20(c)(3) and (c)(4) may also apply; see MPEP § 2250.03. No attempt will be made to maintain a requester’s name in confidence.
A request for reexamination under 37 CFR 1.510 may be submitted to the Office via mail, hand-delivery, or via the Office’s Electronic Filing System (EFS, currently EFS-Web). See MPEP § 2224 for more information on submission via mail and hand-delivery. For submission via EFS, both registered and unregistered eFilers may submit a request for reexamination. A request for reexamination submitted via EFS must be submitted by selecting the option for a "new" reexamination proceeding in the EFS interface and not submitted as a follow-on paper into the patent. The Office may refer third-party inquiries, or submissions not provided for that are improperly submitted via EFS, by registered practitioners in applications and any other Office proceedings to the Office of Enrollment and Discipline for appropriate action.
After the request for reexamination, including the appropriate fee under 37 CFR 1.20(c)(1) or (c)(2), is received in the Office, no abandonment, withdrawal, or striking of the request is possible, regardless of who requests the same. In some limited circumstances, such as after a final court decision where all of the claims are finally held invalid, a reexamination order may be vacated if the decision was rendered prior to the order, and the reexamination may be terminated if the decision was rendered subsequent to the order, see MPEP § 2286.