2218 Copies of Prior Art [R-08.2012]
It is required that a copy of each patent or printed publication relied on or referred to in the request, be filed with the request (37 CFR 1.510(b)(3)). If the copy provided is not legible, or is such that its image scanned into the Image File Wrapper system (IFW) will not be legible, it is deemed to not have been provided. The appropriate “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements” (see MPEP § 2227) will identify this defect. An exception is color photographs and like color submissions, which, if legible as presented, will be retained in an “artifact” file and used as such. If any of the documents are not in the English language, an English language translation of all necessary and pertinent parts is also required. See MPEP § 609.04(a), subsection III. An English language summary or abstract of a non-English language document is usually not sufficient. There is no assurance that the Office will consider the non-English language patent or printed publication beyond the translation matter that is submitted.
It is also helpful to include copies of the prior art considered (via a 37 CFR 1.555 information disclosure statement – separate from the listing of the patents or printed publications relied upon as raising a substantial new question of patentability) during earlier prosecution of the patent for which reexamination is requested. The presence of both the old and the new prior art allows a comparison to be made to determine whether a substantial new question of patentability is indeed present. See MPEP § 2242.
As to the requirement for a copy of every patent or printed publication relied upon or referred to in the request, or submitted under 37 CFR 1.98, this requirement is not currently being enforced to require copies of U.S. patents and U.S. patent publications; and the requirement is deemed waived to that extent. In addition, it is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide the application/proceeding number and its status (note that a submission that is not permitted entry will be returned, expunged or discarded, at the sole discretion of the Office). For example, where the patent for which reexamination is requested is a continuation in part of a parent application, the requester would notify the Office of the application number of the parent application and its status if the asserted substantial new question of patentability relates to a proposed rejection based on an intervening art and the question of whether the claimed subject matter in the patent has support in the parent application is relevant.