2610 Request for Inter Partes Reexamination [R-7]
35 U.S.C. 311 Request for inter partes reexamination
- (a) IN GENERAL.— Any third-party requester at any time may file a request for inter partes reexamination by the Office of a patent on the basis of any prior art cited under the provisions of section 301.
- (b) REQUIREMENTS.— The request
- (1) be in writing, include the identity of the real party in interest, and be accompanied by payment of an inter partes reexamination fee established by the Director under section 41; and
- (2) set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.
- (c) COPY.— The Director promptly shall send a copy of the request to the owner of record of the patent.
37 C.F.R. 1.913 Persons eligible to file request for inter partes reexamination.
Except as provided for in § 1.907, any person other than the patent owner or its privies may, at any time during the period of enforceability of a patent which issued from an original application filed in the United States on or after November 29, 1999, file a request for inter partes reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501.
37 C.F.R. 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.
37 C.F.R. 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.
Any third-party requester, at any time during the period of enforceability of a patent issued from an original application filed on or after November 29, 1999, may file a request for an inter partes reexamination by the Office of any claim of the patent based on prior patents or printed publications. (Note: "original application" is defined in MPEP § 2611.)
The request must include the elements set forth in 37 CFR 1.915(b) (see MPEP § 2614) and must be accompanied by the fee as set forth in 37 CFR 1.20(c)(2). See MPEP § 2612 for situations where a party may be barred from filing a request for inter partes reexamination.
After the request for inter partes reexamination, including the entire fee for requesting reexamination, is received in the Office, no abandonment, withdrawal, or striking, of the request is possible, regardless of who requests the same. In some limited circumstances, such as after a final court decision where all of the claims are held invalid, a reexamination order may be vacated. See MPEP § 2686.04.