2212 Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302 [R-07.2015]
37 CFR 1.510 Request for ex parte reexamination.
- (a) 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 § 1.20(c)(1).
35 U.S.C. 302 and 37 CFR 1.510(a) both indicate that “any person” may file a request for ex parte reexamination of a patent, unless prohibited by AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). Accordingly, there are no types of “persons” who are excluded from being able to seek reexamination under 35 U.S.C. 302. Corporations and/or governmental entities are included within the scope of the term “any person.” The only “person” who is barred from filing a request for ex parte reexamination of a patent under 35 U.S.C. 302 is one who is barred from doing so by the estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) based on inter partes review and post grant review, respectively, once the estoppel attaches. The patent owner can ask for reexamination which will be limited to an ex parte consideration of prior art patents or printed publications. If the patent owner wishes to have a wider consideration of issues by the Office, including matters such as prior public use or on sale, the patent owner may file a reissue application (see, e.g., MPEP § 1401 - § 1403), or, where appropriate, a supplemental examination proceeding (see, e.g., MPEP § 2801 – § 2803). It is also possible for the Director of the Office to initiate reexamination on the Director’s own initiative under 37 CFR 1.520. Some of the persons likely to use reexamination under 35 U.S.C. 302 are patentees, licensees, potential licensees, attorneys without identification of their real client in interest, infringers, potential exporters, patent litigants, interference applicants, and International Trade Commission respondents. The name of the person who files the request will not be maintained in confidence.
2212.01 Inquiries from Persons Other Than the Patent Owner [R-11.2013]
Examiners should not discuss or answer inquiries from third parties (i.e., parties who are not the patent owner) in reexamination proceedings. A party who is not the patent owner should be referred by the examiner to the Technology Center (TC) Quality Assurance Specialist (QAS) or Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) for the examiner’s art unit. The CRU SPRS or TC QAS will address any such questions. Only questions on strictly procedural matters, i.e., not directed to any specific reexamination proceeding, may be discussed by the CRU SPRS or TC QAS with that party.
Employees of the Office, particularly patent examiners who conducted a concluded reexamination proceeding, should not discuss or answer inquiries from any person outside the Office as to whether a certain reference or other particular evidence was considered during the proceeding and whether a claim would have been allowed over that reference or other evidence had it been considered during the proceeding.
Patent practitioners must not make improper inquiries of members of the patent examining corps and the Office as a whole. See 37 CFR 11.804. Inquiries from members of the public relating to the matters discussed above must, of necessity, be refused and such refusal should not be considered discourteous or an expression of opinion by the Office as to the validity, patentability, or enforceability of the patent.