MPEP Section 2609, Inter Partes Reexamination

Executive summary:

This document contains one section of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Fifth Revision (August 2006). This page was last updated in July 2007. You may return to the section index to find a particular section. Alternatively, you may search the MPEP use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the MPEP in the pop-up list.

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2609 Inter Partes Reexamination

The inter partes reexamination statute and rules permit any third party requester to request inter partes reexamination of a patent which issued from an original application was filed on or after November 29, 1999, where the request contains certain elements (see 37 CFR 1.915(b)) and is accompanied by the fee required under 37 CFR 1.20(c)(2). The Office initially determines if "a substantial new question of patentability" (35 U.S.C. 312(a)) is presented. If such a new question has been presented, reexamination will be ordered. The reexamination proceedings which follow the order for reexamination are somewhat similar to regular examination procedures in patent applications; however, there are notable differences. For example, there are certain limitations as to the kind of rejections which may be made, a third party requester may participate throughout the proceeding, there is an "action closing prosecution" and a "right of appeal notice" rather than a final rejection, special reexamination forms are to be used, and time periods are set to provide "special dispatch." When the **>prosecution of an inter partes reexamination proceeding is< terminated, an inter partes reexamination certificate is issued to indicate the status of all claims following the reexamination >and concludes the reexamination proceeding<.

The basic characteristics of inter partes reexamination are as follows:

(A) Any third party requester can request inter partes reexamination at any time during the period of enforceability of the patent (for a patent issued from an original application filed on or after November 29, 1999);

(B) Prior art considered during reexamination is limited to prior patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103;

(D) If ordered, the actual reexamination proceeding is essentially inter partes in nature;

(E) Decision on the request must be made not later than three months from its filing date, and the remainder of proceedings must proceed with "special dispatch" within the Office;

(F) If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of an inter partes reexamination certificate;

(G) The scope of the patent claims cannot be enlarged by amendment;

(H) Reexamination and patent files are open to the public, but see paragraph (I) below;

(I) The reexamination file is scanned to provide an electronic copy of the file. All public access to and copying of reexamination proceedings may be had from the electronic copy. The paper file is not available to the public.