35 U.S.C. 314 (pre-AIA): Conduct of inter partes reexamination proceedings

Taken from the 9th Edition of the MPEP, Revision 07.2022, Published February 2023

Current Pre-AIA AIA Redline

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35 U.S.C. 314 (pre-AIA) Conduct of inter partes reexamination proceedings.

[Editor Note: Applicable only to a request for inter partes reexamination filed prior to September 16, 2012.]

  • (a) IN GENERAL.— Except as otherwise provided in this section, reexamination shall be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133. In any inter partes reexamination proceeding under this chapter, the patent owner shall be permitted to propose any amendment to the patent and a new claim or claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted.
  • (b) RESPONSE.—
    • (1) With the exception of the inter partes reexamination request, any document filed by either the patent owner or the third-party requester shall be served on the other party. In addition, the Office shall send to the third-party requester a copy of any communication sent by the Office to the patent owner concerning the patent subject to the inter partes reexamination proceeding.
    • (2) Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the third-party requester shall have one opportunity to file written comments addressing issues raised by the action of the Office or the patent owner’s response thereto, if those written comments are received by the Office within 30 days after the date of service of the patent owner’s response.
  • (c) SPECIAL DISPATCH.— Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.

(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsection (b)(1) amended Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901.)