2214 Content of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 [R-07.2022]

I. REQUIREMENTS UNDER 37 CFR 1.510

37 CFR 1.510(a) requires the payment of the appropriate fee, which is specified in 37 CFR 1.20(c)(1) or (c)(2), for a request for reexamination filed under 35 U.S.C. 302. See MPEP § 2215. If a request filed under 35 U.S.C. 302 by the patent owner includes a proposed amendment in accordance with 37 CFR 1.530, excess claims fees under 37 CFR 1.20(c)(3) and (c)(4) may also apply; see MPEP § 2250.03.

37 CFR 1.510(b) sets forth the required elements of a request for ex parte reexamination. The elements are as follows:

“(1) a statement pointing out each substantial new question of patentability based on prior patents and printed publications.”

This statement should clearly point out what the requester considers to be the substantial new question of patentability which would warrant a reexamination. The cited prior art should be listed on a form PTO/SB/08 or PTO/SB/42 (or on a form having a format equivalent to one of these forms) by the requester. See also MPEP § 2217.

A request for reexamination must assert a substantial new question of patentability. 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. See MPEP § 2216. A requester must not, in a request for reexamination, argue that the submitted references do not raise a substantial new question of patentability, and that no order for reexamination should be issued.

“(2) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. For each statement of the patent owner and accompanying information submitted pursuant to § 1.501(a)(2) which is relied upon in the detailed explanation, the request must explain how that statement is being used to determine the proper meaning of a patent claim in connection with the prior art applied to that claim and how each relevant claim is being interpreted. If appropriate, the party requesting reexamination may also point out how claims distinguish over cited prior art.”

The request must identify each substantial new question of patentability raised and proposed ground of rejection separately. 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 MPEP § 2217. If the request is filed by the patent owner, the patent owner may also indicate how the claims distinguish from the cited prior art patents and printed publications. If any statement of the patent owner submitted pursuant to 37 CFR 1.501(a)(2) is relied upon in the detailed explanation, requester must explain how that statement is being used to determine the proper meaning of a patent claim in connection with prior art applied to that claim. 37 CFR 1.510(b)(2) requires that the “detailed explanation” of applying prior art provided in the request for ex parte reexamination must explain how each patent owner claim scope statement is being used to determine the proper meaning of each patent claim in connection with the prior art applied to that claim. The explanation will be considered by the Office during the examination stage, if reexamination is ordered. At the order stage, the Office will not consider any patent owner claim scope statement discussed in the detailed explanation of the request. See 35 U.S.C. 301(d).

“(3) A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication.”

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. 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.” The requirement for the submission of a copy of every patent or printed publication relied upon or referred to in the request, pursuant to 37 CFR 1.510(b)(3), is waived to the extent that copies of U.S. patents and U.S. patent application publications which are relied upon or referred to in the request are not required to be submitted with the request, unless specifically required by the Office. See MPEP § 2218.

“(4) 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 are 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. See MPEP § 2219.

Any disclaimer, certificate of correction, or reexamination certificate issued in the patent becomes a part of the patent. Thus, a copy of each must be supplied in order to provide the complete patent. The copy must have each page plainly written on only one side of a sheet of paper.

“(5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirely on the patent owner at the address as 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 must be supplied to the Office.”

If the request is filed under 35 U.S.C. 302 by a person other than the patent owner, a certification that a copy of the request papers has been served on the patent owner must be included. The certification must set forth the name and address employed in serving the 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 1.510(b)(5) When Service on the Patent Owner Was Not Possible.” The request should be as complete as possible, since there is no guarantee that the examiner will consider other prior art when making the decision on the request. Also, this may be the third party requester’s only opportunity to participate in the proceeding since, if no statement under 37 CFR 1.530(b) is filed by the patent owner, no later reply under 37 CFR 1.535 or other submission may be filed by the requester in the ex parte reexamination proceeding. See also MPEP § 2220.

“(6) A certification by the third party requester that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the ex parte reexamination request.”

37 CFR 1.510(b)(6) requires that the request contain a certification by the third party requester that the statutory estoppel provisions of inter partes review and post grant review do not bar the third party from requesting ex parte reexamination under 35 U.S.C. 302. The basis for this requirement is the estoppel provisions of inter partes review and post grant review provided in AIA 35 U.S.C. 315(e)(1) and 35 U.S.C. 325(e)(1), respectively, which identify when a petitioner for inter partes review or post grant review, or a real party in interest or privy of the petitioner, may not file a request for ex parte reexamination.

The rules do not require ex parte reexamination requesters to identify themselves upon the filing of the request under 35 U.S.C. 302. The certification requirement of 37 CFR 1.510(b)(6), coupled with a party’s 37 CFR 11.18 certification obligations when transacting business before the Office, are considered sufficient to ensure compliance with the inter partes review and post grant statutory estoppel requirements. A real party in interest that wishes to remain anonymous when filing a request for reexamination under 37 CFR 1.510 can do so by utilizing the services of a registered practitioner. In such an instance, the registered practitioner submitting a request for reexamination on behalf of the real party in interest would be certifying that the real party in interest was not estopped from filing the request. Conversely, an individual filing a request for reexamination under 37 CFR 1.510 on behalf of the individual cannot remain anonymous, as the individual is required to sign the document that includes the 37 CFR 1.510(b)(6) certification.

Request papers that fail to satisfy all the requirements of 37 CFR 1.510(a) and (b) are incomplete and will not be granted a filing date. See MPEP § 2227.

In order to obtain a reexamination filing date, the request papers must also include the appropriate fee under 37 CFR 1.20(c)(1) or (c)(2) for requesting ex parte reexamination. Note that any request for ex parte reexamination, regardless of which filing fee is submitted, must have sufficient clarity and contrast to permit direct reproduction and electronic capture by use of digital imaging and optical character recognition to be granted a filing date. See 37 CFR 1.20(c)(1)(i)(F) and 37 CFR 1.20(c)(2).

An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a reexamination proceeding except as provided in MPEP § 2258.02.

II. REQUESTS FILED ON OR AFTER JANUARY 16, 2018A.Requirements under 37 CFR 1.20(c)(1)

Requests for ex parte reexamination under 35 U.S.C. 302 filed on or after January 16, 2018 may be filed with a reduced filing fee set forth in 37 CFR 1.20(c)(1) if the request (i.e., “streamlined” request) complies with all of the requirements of 37 CFR 1.20(c)(1) and 37 CFR 1.510(a) and (b). This reexamination filing option was created to make it financially less burdensome for requesters with limited resources.

This reexamination filing option only affects the fee for filing the request. A request which is filed under 37 CFR 1.20(c)(1) remains subject to all applicable filing requirements, with the sole exception that the filing fee is reduced. This reexamination filing option does not impact the subsequent reexamination process, including the order in which the case is taken up for action by the examiner. The filing of a request which meets the requirements of 37 CFR 1.20(c)(1) will not cause the prosecution of any resulting reexamination proceeding to be accelerated or prioritized over reexaminations filed with the filing fee set forth in 37 CFR 1.20(c)(2).

The filing fee set forth in 37 CFR 1.20(c)(1) applies to ex parte reexamination requests having:

• (1) forty (40) or fewer pages;
• (2) lines that are double-spaced or one-and-a-half spaced;
• (3) text written in a non-script type font such as Arial, Times New Roman, or Courier;
• (4) a font size no smaller than 12 point;
• (5) margins which conform to the requirements of 37 CFR 1.52(a)(1)(ii); and
• (6) sufficient clarity and contrast to permit direct reproduction and electronic capture by use of digital imaging and optical character recognition.

The following parts of an ex parte reexamination request are excluded from (1) through (5) above:

• (a) the copies of every patent or printed publication relied upon in the request pursuant to 37 CFR 1.510(b)(3);
• (b) the copy of the entire patent for which reexamination is requested pursuant to 37 CFR 1.510(b)(4);
• (c) the certifications required pursuant to 37 CFR 1.510(b)(5) and (6); and
• (d) completed forms such as the Request for Ex Parte Reexamination Transmittal Form (PTO/SB/57) or the information disclosure statement form (PTO/SB/08), or their equivalents.

Claim charts will be considered part of the request and will be included in the page limit. In addition, any other papers submitted with or as part of the request which contain argument directed to the patentability or unpatentability of the claims, such as affidavits, declarations, litigation papers (e.g., briefs, trial transcripts, invalidity contentions, and expert opinions), which are filed as part of the request submission, will be included in the page limit. If only a portion of the paper contains argument, the entire paper will be included in the page limit. The Office deems conclusions and/or definitions to be argumentative. For example, a request submission that includes 40 pages of argument and a 41st page that includes conclusions or definitions would be deemed to be a request having greater than 40 pages. A page that consists solely of a signature will not be included in the page limit. The determination of whether a paper contains argument will be within the sole discretion of the Office.

All papers filed with or as part of the request must conform to the requirement of 37 CFR 1.20(c)(1)(i)(F) (requirement (6) above). Affidavits and declarations drafted by the requester for submission in the reexamination proceeding should conform to the requirements of 37 CFR 1.20(c)(1)(i)(B)-(E) (requirements (2) – (5)) in addition to the page limit requirement of 37 CFR 1.20(c)(1)(i)(A) (requirement (1) above). Claim charts drafted by the requester for submission in the reexamination proceeding may be single-spaced, but should conform to the requirements of 37 CFR 1.20(c)(1)(i)(C)-(E) (requirements (3) – (5) above) in addition to the page limit requirement of 37 CFR 1.20(c)(1)(i)(A) (requirement (1) above). Original documents which were not drafted by the requester, or which were drafted by the requester for earlier submission in another Office proceeding or in litigation, should not be altered or modified for submission in the reexamination proceeding.

Any paper that is not submitted with or as part of the request, other than the statement pursuant to 37 CFR 1.530 and the reply by the ex parte reexamination requester pursuant to 37 CFR 1.535, will not be considered prior to examination. See 37 CFR 1.540. In addition, any statement or other response filed by the patent owner prior to the determinations made in 37 CFR 1.515 or 37 CFR 1.520, other than an amendment pursuant to 37 CFR 1.510(e), will not be acknowledged or considered, and will be expunged from the record. See 37 CFR 1.530(a).

B.Requirements under 37 CFR 1.20(c)(2)

The filing fee set forth in 37 CFR 1.20(c)(2) applies to a request for reexamination under 35 U.S.C. 302 which does not comply with requirements of 37 CFR 1.20(c)(1), i.e., a “non-streamlined” request. For example, the filing fee pursuant to 37 CFR 1.20(c)(2) must be paid when submitting a request having greater than forty (40) pages.

To be granted a filing date, a request for which the filing fee set forth in 37 CFR 1.20(c)(2) is paid must also have sufficient clarity and contrast to permit direct reproduction and electronic capture by use of digital imaging and optical character recognition, pursuant to the provisions of 37 CFR 1.20(c)(2).

C.Filing Date Requirements

In order for a request filed on or after January 16, 2018 to receive a filing date, the request must 1) meet all of the requirements of 37 CFR 1.510(a) and (b); 2) be accompanied by the appropriate fee under 37 CFR 1.20(c)(1) or (c)(2) and any appropriate excess claim fees; and 3) meet the requirements of the rule governing the filing fee submitted, i.e., 37 CFR 1.20(c)(1) or 37 CFR 1.20(c)(2).

A request which is accompanied by the reduced filing fee pursuant to 37 CFR 1.20(c)(1), but which fails to meet the requirements set forth in 37 CFR 1.20(c)(1) (for example, a request having greater than 40 pages), will not be granted a filing date in the absence of an authorization to charge any deficiency to a deposit account . If such a request is accompanied by an authorization to charge any deficiency to a deposit account, and if the request meets all other filing date requirements, the filing fee pursuant to 37 CFR 1.20(c)(2) will be charged and the request will be granted a filing date.

A request which is accompanied by the filing fee pursuant to 37 CFR 1.20(c)(2), and which meets all of the other filing date requirements, will be granted a filing date. If, on the Request for Ex Parte Reexamination Transmittal Form PTO/SB/57 or an equivalent, the requester checks the box indicating the requester’s intent to submit a reduced filing fee pursuant to 37 CFR 1.20(c)(1), but submits a filing fee pursuant to 37 CFR 1.20(c)(2), the filing fee pursuant to 37 CFR 1.20(c)(2) will be accepted. In such a case, if desired, the requester may file a request for refund accompanied by the reasons why the requester believes that the request meets the requirements for a reduced filing fee pursuant to 37 CFR 1.20(c)(1). See MPEP § 2215, subsection V.

III. TRANSMITTAL FORM FOR FILING A REQUEST

Form PTO/SB/57 should be helpful to persons filing requests for reexamination under 37 CFR 1.510. The use of this form as the transmittal form and cover sheet of a request for reexamination is encouraged, but its use is not a requirement of the law nor the rules. Immediately following is a form PTO/SB/57 and a sample of a request for reexamination that would be attached to the form PTO/SB/57 cover sheet.

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