Citation of Prior Art

What? Presentation of prior art patents and/or printed pubs to the PTO for placement in a patent’s file

Why? To ensure that art will be considered in subsequent reissue or reexamination proceedings

Who? Any person, including the patent owner, but not examiners

When? May cite prior art that has a bearing on the patentability of any claim of a particular patent at any time during period of enforceability of patent (expiration date plus 6 years)

Restrictions? Citations of prior art will not be entered into a patent’s file during a pending reexam, unless submitted by the patent owner; another reexamination requester; or as part of a 3^rd party requestor’s reply.

Filing Procedure –

Must include:

• cover sheet identifying patent, issue date and patentee;
• list of pertinent prior art (not already of record in patent file);
• explanation of pertinence of prior art cited, including application to at least one claim of the patent;
• If by 3^rd party – Certificate of Service or duplicate copy of papers
• NO FEE
• “Poor Man’s Reexam”

May also include:

• copy of each piece of prior art (English translations if necessary)
• affidavits or declarations relating to prior art documents (e.g., explaining effective date of art)
• If by patent owner – explanation of how claims of patent differ from cited prior art

PTO Handling of Prior Art Citations –

• forwarded to relevant Tech. Center
• if citation is proper and was filed by patent owner, it is entered into file
• if citation is proper and was filed by 3^rd party, it is entered into file, and notice and duplicate copy of papers (if filed) sent to patent owner
• if citation is proper and was filed by 3^rd party, but patent is under reexam, it is put in storage until reexam is terminated, notice sent to 3^rd party (if known), and notice and duplicate copy of papers sent to patent owner
• if citation is not proper and was filed by patent owner, it is returned to owner
• if citation is not proper and was filed by 3^rd party, notice is sent to 3^rd party, notice given to patent owner, duplicate copy of papers sent to owner, and original copy returned to 3^rd party (if known, else to owner)

Ex Parte Reexamination of Patents

A reexamination of a patent is a mechanism for correction of scope and contents of patent because there exists a substantial new question as to the patentability of one or more claims therein based on other patents or printed publications. (Do not mistake with reexam of an application.)

Who can request an ex parte reexam? Commissioner on his own accord; patentee; or any interested 3^rd party (corp. or individual).

Mechanics of an ex parte reexam request –

• must be in writing, giving a statement pointing out each substantial new question of patentability: proper basis – patent or printed pub serving as a basis for 102a,b,e,f,g,103 and DP; and admissions by patentee, but only in combination with patents or printed pubs; improper basis – 112, fraud, or on-sale or public use bars under 102(b)
• Fee – no small entity discount
• Submit: copy of patent with any disclaimers, CoC, or reexam certificates issued in the patent; and copy of each patent and printed pub relying upon (and English translation)
• Must identify claims for which reexamination is sought and the pertinence of prior art being submitted to each such claim
• If by 3^rd party, certificate of service to patentee or duplicate copy of papers if service was not possible; and preferably copy of power of attorney if filed by attorney/agent for 3^rd party
• If by patentee, may also file proposed amendment; request will be considered on claims of issued patent; prosecution will begin, if reexam is granted, based on amended claims
• Timing – must be filed within period of enforceability of patent
• PTO will give requester notice and time (typically 1 month) to respond if request contains any defects

Ex Parte Reexamination Procedure –

• request is announced in OG
• Assigned to same Art Unit (but usually not same examiner)
• PTO must decide whether to grant reexam within 3 months of request

If Denied (no substantial new question of patentability):

• order denying reexam is sent to requestor and patentee
• requester may petition for reconsideration once within one month of initial decision
• initial decision and decision on petition is final and nonappealable
• requester receives partial refund

If Granted:

• examiner will issue an order granting reexamination to requestor and patentee that states each substantial new question of patentability with respect to specific claims and prior art; and her position with respect to each issue raised by requestor in the proper form
• examiner’s position may be same or different from requestor’s
• Patentee may file R181 Petition to vacate reexam order if they believe grant was improper

• During reexam, all communications by patentee or 3^rd party requestor to the PTO must be served on the other party
• During reexam, file is open to public for inspection

Owner’s Statement –

• patentee may file owner’s statement within 2 months of, but not before, order granting reexamination
• EOT is typically one month and are only available for good cause (R550c)
• owner’s statement must particularly point out why claims are patentable over prior art, and may include an amendment

Requestor’s Reply to Owner’s Statement –

• If owner’s statement is filed, 3^rd party requestor may file a reply brief within 2 months
• EOT is not available for filing reply
• reply is limited to issues raised in owner’s statement
• reply may include additional prior art and printed pubs (see previous)
• reply is the requestor’s last chance to participate in ex parte reexam

Special Characteristics of Ex Parte Reexamination Prosecution –

• reexam proceedings are conducted with special dispatch
• all claims are examined for 102 and 103 issues without deference
• only new or amended claims are also examined for 112 issues
• duty of disclosure applies
• interviews are only allowed after first OA, and patent owner must file statement of reasons presented during interview in a separate paper or in next reply to OA
• correction of inventorship is allowed
• reexaminations are never abandoned
• no filing of continuation apps is allowed
• only patent owner can appeal to the Board (not 3^rd party)
• appeal process is the same as inter parte prosecution except for EOT (on or after 11/29/99, must be final rejection)

Ex Parte Reexamination Office Actions –

• First OA should be completed within one month and mailed within 6 weeks of filing/due date of: owner’s statement if no 3^rd party requestor; or reply if 3^rd party requestor
• First OA should address all claims; not include any restriction requirements; and only raise 112 issues as to new or amended claims
• Issues beyond scope of reexam should be noted by examiner, but not addressed, with suggestion for reissue
• Reply to first OA is typically due in 2 months (1 month if reexam ordered by court or stayed) with only good cause EOT (must be filed before due)
• Reply is same as ex parte prosecution, but amendments must be in [ Rule 530 d-j format]
• Failure to file reply to an office action results in termination of reexam and issuance of reexam certificate in accordance with last office action; rule 137 petition (unintentional or unavoidable) is the only way to revive
• Second OA is typically final

Conclusion of Ex Parte Reexamination –

• if examiner issues a final rejection, 2 month period for patent owner to reply or appeal
• if first response to a final rejection is a reply, patent owner get automatic one month EOT
• if no final rejection or appeal, examiner will issue a notice of intent to issue a reexam certificate (NIRC) which states reasons for allowance
• no issue fee is required after ex parte reexam
• reexam certificate is published in OG
• intervening rights (as in reissue) exist

Multiple Reexamination Requests –

• if subsequent request involves the same prior art cited in first reexam, it is automatically granted
• if subsequent request involves different prior art than that cited in first reexam, a decision whether to grant is made on its own merits
• if there is more than a three month difference between the date of a second request and the expected issue date of a reexam certificate in the first proceeding, the group director will merge first and subsequent reexams and suspend issuance of reexam certificate from first proceeding. When merged, patent owner must file original, identical papers in both files; same claims must be pending in both files; and examiner will issue identical OA in both files; but multiple reexam certificates will issue.
• if date of second request is within three months of expected issue date of reexam certificate in first proceeding, the group director will not normally merge proceedings, but any subsequent request will be decided with respect to new claims issuing from first reexam

Ex Parte Reexaminations in Conjunction with Other Proceedings –

• patent owner must disclose any other proceedings to examiner (e.g., litigation, reissue and interference)
• Reexamination – Interference: reexam is typically not stayed for resolution of interference
• Reexamination – Reissue: typically two proceedings are merged, reissue rules apply and reissue patent also serves as a reexam certificate
• Reexamination – Litigation: If litigation is stayed pending reexam or if court orders reexam, then certain time periods are shortened in reexam proceedings; final decision by court that claims are invalid or unenforceable is binding on PTO