Patent Owner’s Statement in Reexaminations Filed Under 35 U.S.C. 302
Ninth Edition of the MPEP, Revision 10.2019, Last Revised in June 2020
2249 Patent Owner’s Statement in Reexaminations Filed Under 35 U.S.C. 302 [R-08.2017]
37 C.F.R. 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
- (a) Except as provided in § 1.510(e), no statement or other response by the patent owner in an ex parte reexamination proceeding shall be filed prior to the determinations made in accordance with § 1.515 or § 1.520. If a premature statement or other response is filed by the patent owner, it will not be acknowledged or considered in making the determination, and it will be returned or discarded (at the Office’s option).
- (b) The order for ex parte reexamination will set a period of not less than two months from the date of the order within which the patent owner may file a statement on the new question of patentability, including any proposed amendments the patent owner wishes to make.
- (c) Any statement filed by the patent owner shall clearly point out why the subject matter as claimed is not anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any reasonable combinations. Where the reexamination request was filed by a third party requester, any statement filed by the patent owner must be served upon the ex parte reexamination requester in accordance with § 1.248.
The patent owner has no right to file a statement subsequent to the filing of the request under 35 U.S.C. 302 but prior to the order for reexamination. Any such premature statement will not be acknowledged nor considered by the Office when making the decision on the request and will be returned or discarded at the option of the Office, and will be expunged if inadvertently entered into the record. See MPEP § 2225 and Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 1985).
If reexamination is ordered under 35 U.S.C. 304, the decision will set a period of not less than two months within which period the patent owner may file a statement and any narrowing amendments to the patent claims. If necessary, an extension of time beyond the two months may be requested under 37 CFR 1.550(c) by the patent owner. See MPEP § 2265.
Any statement filed must clearly point out why the patent claims are believed to be patentable, considering the cited prior art patents or printed publications alone or in any reasonable combination.
A copy of the statement must be served by the patent owner on the requester, unless the request was filed by the patent owner.
Lack of proof of service especially poses a problem where the patent owner fails to indicate that service was made to the requester in the statement subsequent to the order for reexamination (37 CFR 1.530(c) ). In this situation, the Central Reexamination Unit should immediately contact the patent owner to see whether the indication of proof of service was inadvertently omitted from the patent owner’s response. If it was, the patent owner should be advised to submit a supplemental paper indicating the manner and date of service on requester. If the patent owner cannot be contacted, the Central Reexamination Unit will then contact the requester to verify that service has in fact been made by the patent owner and indicate that acknowledgment of proof of service should accompany requester’s reply (37 CFR 1.248(b)(1) ). If the 2-month period for response under 37 CFR 1.530 has expired and requester has not been served, the patent owner’s statement is considered inappropriate (37 CFR 1.248 ) and may be denied consideration; see MPEP § 2267.
See also MPEP § 2266.03 for further discussion as to the patent owner providing service on the third party requester.
It should be noted that the period for response by requester for a reply under 37 CFR 1.535 is two months from the owner’s service date and not two months from the date the patent owner’s statement was received in the Office.
Where the patent owner has determined that a statement under 37 CFR 1.530 will not be filed, the patent owner may expedite the reexamination proceeding by filing a paper that indicates that the patent owner waives the filing of a statement under 37 CFR 1.530 and serving the waiver on the requester, if any. This will permit reexamination of the proceeding to proceed pursuant to 37 CFR 1.550(a).
WAIVER OF STATEMENT PROGRAM
If the patent owner waives the right to file a patent owner’s statement in response to a request from the Office, the examiner will be able to act on the first Office action on the merits immediately after determining that reexamination will be ordered under 35 U.S.C. 304, and in a suitable case issue the reexamination order and the first Office action on the merits at the same time (the first action may be a Notice of Intent to Issue Reexamination Certificate, where appropriate). This eliminates the delay of waiting for a patent owner’s statement and the third-party requester’s reply, and it permits the examiner to utilize time more efficiently by drafting the order and the first Office action on the merits together.
Accordingly, the Central Reexamination Unit (CRU) will contact, via telephone, the patent owner to request the optional waiver of the patent owner’s statement after a reexamination proceeding under 35 U.S.C. 302 has been granted a filing date and before the examiner begins the review. The communication will be strictly limited to the CRU requesting the waiver of the patent owner’s statement and agreement (or non-agreement) to the waiver by the patent owner. Discussion of the merits of the proceedings, e.g., the patentability of claims in patents, is not permitted. The CRU will make the agreement or non-agreement of record in the reexamination file in an interview summary, using form PTOL-2292 (Ex Parte Reexamination Interview Summary – Pilot Program for Waiver of Patent Owner’s Statement). A copy of the completed form will then be mailed to the patent owner and any third party requester. The patent owner is not required to file a written statement as to the communication under 37 CFR 1.560(b) or otherwise, and such a statement should not be filed as it will slow the process. If the patent owner agrees to the waiver of the right to file a patent owner’s statement, the examiner may issue the reexamination order and the first Office action on the merits on the same day as the order, or within a few days thereafter.