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2614 Content of Request for - 2600 Optional Inter Partes Reexamination
2614 Content of Request for Inter Partes Reexamination [R-7]
37 CFR 1.915 Content of request for inter partes reexamination.
(a) The request must be accompanied by the fee for requesting inter partes reexamination set forth in § 1.20(c)(2).
(b) A request for inter partes reexamination must include the following parts:
(1) An identification of the patent by patent number and every claim for which reexamination is requested.
(2) A citation of the patents and printed publications which are presented to provide a substantial new question of patentability.
(3) A statement pointing out each substantial new question of patentability based on the cited patents and printed publications, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested.
(4) A copy of every patent or printed publication relied upon or referred to in paragraphs (b)(1) through (3) of this section, accompanied by an English language translation of all the necessary and pertinent parts of any non-English language document.
(5) 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.
(6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address 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 of the request must be supplied to the Office.
(7) A certification by the third party requester that the estoppel provisions of § 1.907 do not prohibit the inter partes reexamination.
(8) A statement identifying the real party in interest to the extent necessary for a subsequent person filing an inter partes reexamination request to determine whether that person is a privy.
(c) **>If an inter partes 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 § 1.34.<
(d) If the inter partes request does not include the fee for requesting inter partes reexamination required by paragraph (a) of this section and meet all the requirements of paragraph (b) of this section, then the person identified as requesting inter partes 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 inter partes 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.
I. FEE FOR REQUEST FOR INTER PARTES REEXAMINATION
37 CFR 1.915(a) requires the payment of a fee specified in 37 CFR 1.20(c)(2). See MPEP § 2615 for a discussion of the fee to be paid. It is noted that, unlike a request for ex parte reexamination, a request for an inter partes reexamination cannot be filed by the patent owner; thus, there will be no proposed amendment to generate excess claims fees under 37 CFR 1.20(c)(3) and (c)(4) at the filing of a request for inter partes reexamination.
II. REQUIRED ELEMENTS OF REQUEST FOR INTER PARTES REEXAMINATION
37 CFR 1.915(b) sets forth the required elements of a request for inter partes reexamination. The elements are as follows:
"(1) An identification of the patent by patent number and every claim for which reexamination is requested."
The request should identify the patent by stating the patent number. Although not required by rule, it is strongly suggested that the request should also state the patentee and the title of the patent, so that they are available for comparison, in the event there is an error in the typing of the patent number. The patentee who would be stated is the first named inventor on the patent.
The request should clearly identify every claim that requester wants reexamined.
"(2) A citation of the patents and printed publications which are presented to provide a substantial new question of patentability."
The patents and printed publications which are presented in the request to provide a substantial new question of patentability must be listed. A form PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format equivalent to one of these forms), should be provided by the requester as part of the request, and all the art (patents and printed publications) cited would be listed thereon.
"(3) A statement pointing out each substantial new question of patentability based on the cited patents and printed publications, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested."
The request must assert a substantial new question of patentability. A statement which clearly points out what the requester considers to be the substantial new question of patentability based on cited patents and publications (the prior art or double patenting art) which would warrant a reexamination must be included. **>The request must identify each substantial new question of patentability raised and each proposed ground of rejection separately. For each identified substantial new question of patentability and each identified proposed ground of rejection, the request must explain how the cited documents identified for that substantial new question of patentability/proposed ground of rejection raise a substantial new question of patentability. The request must apply all of the cited prior art to the claims for which reexamination is requested. For each identified substantial new question of patentability and each identified proposed ground of rejection, the request must explain how the cited documents identified for that substantial new question of patentability/proposed ground of rejection are applied to meet or teach the patent claim limitations to thus establish the identified substantial new question of patentability or proposed ground of rejection.< See also MPEP § 2616 and § 2617.
"(4) A copy of every patent or printed publication relied upon or referred to in paragraphs (b)(1) through (3) of this section, accompanied by an English language translation of all the necessary and pertinent parts of any non-English language document."
A copy of each cited patent or printed publication, as well as a translation of each non-English document (or a translation of at least the portion(s) relied upon), is required so that all materials will be available to the examiner for full consideration. See MPEP § 2618. >A listing of the patents and printed publications as provided for in 37 CFR 1.98 must also be provided. A comprehensive listing is required, since the identification of the cited art in reexamination by the requester is no less important than that of a patent owner or applicant, and furthers the statutory mandate of 35 U.S.C. 305 that reexamination proceedings must be "conducted with special dispatch within the Office."<
"(5) 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 copy of the patent, for which reexamination is requested, should be provided with the specification and claims submitted in a double column format. The drawing pages of the printed patent should be presented as they appear in the printed patent; the same is true for the front page of the patent. Thus, a full copy of the printed patent (including the front page) can be used to provide the abstract, drawings, specification, and claims of the patent for the reexamination request. The printed patent is to be reproduced on only one side of the paper; a two-sided copy of the patent is not proper.
A copy of any prior disclaimer, certificate of correction, or reexamination certificate issued for the patent should also be included with the request; since these are a part of the patent. Again, the copy must have each page plainly written on only one side of a sheet of paper. See also MPEP § 2619.
"(6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address 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 of the request must be supplied to the Office."
The request must include a certification that a copy of the request papers has been served on the patent owner. The certification must set forth the name and address employed in serving patent owner. If service was not possible >after a reasonable effort to do so<, a duplicate copy of the request must be supplied to the Office together with >a cover letter including< an explanation of what effort was made to effect service, and why that effort was not successful. >To avoid the possibility of the Office erroneously charging a duplicate filing fee, requesters are strongly encouraged to clearly word the cover letter by stating, for example, in bold print in the heading "Duplicate Copy of Request Filed under 37 CFR 1.915(b)(6) When Service on the Patent Owner Was Not Possible."<
"(7) A certification by the third party requester that the estoppel provisions of § 1.907 do not prohibit the inter partes reexamination."
The third party requester must make the certification required by 37 CFR 1.915(b)(7) in order to certify that the requester is not precluded from filing the request for reexamination by: 37 CFR 1.907 and the statute upon which those rules are based (35 U.S.C. 317). See MPEP § 2612.
"(8) A statement identifying the real party in interest to the extent necessary for a subsequent person filing an inter partes reexamination request to determine whether that person is a privy."
The reexamination request must identify the real party in interest who is responsible for filing the reexamination request. This information will be used by future parties requesting reexamination of the same patent, in making the certifications required by 37 CFR 1.915(b)(8).
37 CFR 1.915(c) states that if the request is filed by an attorney or agent and identifies another party on whose behalf the request is being filed, a power of attorney must be attached, or the attorney or agent must be acting in a representative capacity pursuant to 37 CFR 1.34.
The request should be as complete as possible, since there is no guarantee that the examiner will consider other art (patents and printed publications) when making the decision on the request.
37 CFR 1.919 Filing date of request for inter partes reexamination.
(a) The filing date of a request for inter partes reexamination is the date on which the request satisfies all the requirements for the request set forth in § 1.915.
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In order to obtain a reexamination filing date, the request papers must include the fee for requesting inter partes reexamination required by 37 CFR 1.915(a) and must satisfy all the requirements set forth in 37 CFR 1.915. 37 CFR 1.919(a). Request papers that fail to satisfy all the requirements of 37 CFR 1.915 are incomplete and will not be granted a filing date. See MPEP § 2627.
>An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a reexamination proceeding since a reexamination proceeding is not an "application."<
Form PTO/SB/58, reproduced following this page, is encouraged for use as the transmittal form and cover sheet of a request for inter partes reexamination. The use of this form is encouraged; however, its use is not a requirement of the law nor of the rules. Immediately following is a Form PTO/SB/58 and a sample of a request for reexamination that would be attached to the Form PTO/SB/58 cover sheet (that would be filled out by requester).
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