Request for ex parte
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 §
Any request for reexamination must include the
A statement pointing out each substantial
new question of patentability based on prior patents and
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.
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.
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.
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.
A certification by the third party
requester that the statutory estoppel provisions of
315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit
the requester from filing the ex parte
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.
The filing date of the request for ex
parte reexamination is the date on which the request
satisfies all the requirements of this section.
A request filed by the patent owner may include a
proposed amendment in accordance with § 1.530.
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 §
[46 FR 29185, May 29, 1981, effective July 1, 1981; para.
(a), 47 FR 41282, Sept. 17, 1982, effective Oct. 1, 1982; para. (e)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras.
(b)(4) and (e) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7,
2000; heading and para. (a) revised, 65 FR 76756, Dec. 7, 2000, effective
Feb. 5, 2001; paras. (c) and (d) revised, 71 FR 9260, Feb. 23, 2006,
effective Mar. 27, 2006; paras. (c) and (d) revised, 71 FR 44219, Aug. 4,
2006, effective Aug. 4, 2006; para. (f) revised, 72 FR 18892, Apr. 16,
2007, effective May 16, 2007; paras. (a) and (b)(2) revised and para.
(b)(6) added, 77 FR 46615, Aug. 6, 2012, effective Sept. 16,