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2602    Citation of Prior Art [R-11.2013]

37 C.F.R. 1.902   Processing of prior art citations during an inter partes reexamination proceeding.

Citations by the patent owner in accordance with § 1.933 and by an inter partes reexamination third party requester under § 1.915 or § 1.948 will be entered in the inter partes reexamination file. The entry in the patent file of other citations submitted after the date of an order for reexamination pursuant to § 1.931 by persons other than the patent owner, or the third party requester under either § 1.913 or § 1.948, will be delayed until the inter partes reexamination proceeding has been concluded by the issuance and publication of a reexamination certificate. See § 1.502 for processing of prior art citations in patent and reexamination files during an ex parte reexamination proceeding filed under § 1.510.

American Inventors Protection Act of 1999 (the AIPA) did not affect the manner of the public’s citation of prior art under 37 CFR 1.501 in a patent. Likewise, it did not affect the Office’s handling of a 37 CFR 1.501 prior art citation in a patent where no reexamination proceeding is pending for that patent when the citation is filed.

Where an inter partes reexamination proceeding is pending when a prior art citation is filed, the following applies:

If the prior art citation satisfies 37 CFR 1.501 and was submitted prior to an order for reexamination, the cited documents (citations) will be considered in an inter partes reexamination proceeding as a prior art citation would be considered in an ex parte reexamination proceeding. See MPEP § 2206.

If the prior art citation satisfies 37 CFR 1.501 and is submitted after an order for reexamination, the citation will be treated as follows:

  • (A) A patent owner citation will normally be considered if it is submitted in time to do so before the reexamination certificate issues.
  • (B) A third party requester citation will be considered if it is submitted as part of a third party requester comments submission under 37 CFR 1.947 or 1.951(b) (made as required by 37 CFR 1.948), or in a properly filed request for reexamination under 37 CFR 1.915 or 1.510 (whose art is subject to consideration in the ongoing inter partes reexamination being examined). It is observed that the Leahy-Smith America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, enacted September 16, 2011, provided, under 35 U.S.C. 301(a)(2) for submission of “statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent”; however, there is no provision of the statute that applies a submission under 35 U.S.C. 301(a)(2) to an ongoing inter partes reexamination. Thus, a submission under 35 U.S.C. 301(a)(2) is not proper for an inter partes reexamination.
  • (C) Any other prior art citation satisfying 37 CFR 1.501 which is submitted after an order to reexamine will be retained (stored) in the Central Reexamination Unit or Technology Center (in which the reexamination proceeding is being examined) until the reexamination is concluded by the issuance and publication of a reexamination certificate, after which it will be placed in the file of the patent. 37 CFR 1.902.

See MPEP §§ 2202 through 2206 and 2208 for the manner of making such citations and Office handling of same.

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Last Modified: 03/27/2014 10:10:34