This chapter discusses inter partes reexamination proceedings. These
involve the initiator of the reexamination as well as the patent holder and an examiner. Many of the characteristics of an inter partes reexamination proceedings are identical to that of the ex pane reexamination proceedings discussed in chapter 2200. The major differences with inter partes proceedings are outlined here in this chapter.

Chapter 2600 is a brand new chapter. It was just added to the MPEP in the 8th edition, revision 2. There may be a question or two on the exam pertaining to this material.

2601 Introduction
The optional inter partes alternative provides third party requesters with a greater opportunity to participate in reexamination proceedings, while maintaining most of the features which make reexamination a desirable alternative to litigation in the Federal Courts (e.g., low cost relative to Court proceedings, expedited procedure)
it provides third party requesters with appeal rights to appeal to the Board of Patent Appeals and Interferences (Board) and to participate in the patent owner's appeal to the Board.
for any inter partes reexamination proceeding commenced on or after November 2, 2002, the third party requester also has the appeal rights to appeal to the Court of Appeals for the Federal Circuit and to participate in the patent owner's appeal to the Federal Circuit.

2602 Citation of Prior Art

35 U.S.C. 301 Citation of prior art.
Any person at any time may cite to the Office in writing prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent. If the person explains in writing the pertinency and manner of applying such prior art to at least one claim of the patent, the citation of such prior art and the explanation thereof will become a part of the official file of the patent. At the written request of the person citing the prior art, his or her identity will be excluded from the patent file and kept confidential.

§1.501 Citation of prior art in patent files.
(a)At any time during the period of enforceability of a patent, any person may cite, to the Office in writing, prior art consisting of patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability of any claim of the patent. If the citation is made by the patent owner, the explanation of pertinency and applicability may include an explanation of how the claims differ from the prior art. Such citations shall be entered in the patent file except as set forth in §§ 1.502 and 1.902.
(b)If the person making the citation wishes his or her identity to be excluded from the patent file and kept confidential, the citation papers must be submitted without any identification of the person making the submission.
(c)Citation of patents or printed publications by the public in patent files should either:(1)Reflect that a copy of the same has been mailed to the patent owner at the address as provided for in § 1..33(c);or in the event service is not possible (2)Be filed with the Office in duplicate.

§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 parses 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 § 1.915 or §1.948,will be delayed until the inter partes reexamination proceeding has been terminated. See § 1.502 for processing of prior art citations in patent and reexamination files during an ex parse reexamination proceeding filed under §1.510.

where an inter partes reexamination proceeding is pending when a prior art citation is filed, the prior art will be considered when:
it is cited during the period of enforceability of the patent
the citation includes an explanation of the pertinency of the prior art it is serviced to the patent owner (or it is sent in duplicate to the PTO)

2609 Inter Partes Reexamination
when the prosecution of an inter partes reexamination proceeding is terminated, an inter partes reexamination certificate is issued and the reexamination proceeding is concluded

35 U.S.C.311 Request for inter partes reexamination
(a)IN GENERAL. Any thirdparty 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 shall
(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. nonappealable. Upon a determination that no substantial new question of patentability has been raised, the Director may refund a portion of the inter partes reexamination fee required under section 311.

any third party requestor may request an inter partes reexamination of a patent provided that:
the patent issued from an original application filed on or after November 29, 1999
the fee is paid
a substantial new question of patentability is presented

characteristics of an inter partes reexamination:
a third party requester may participate throughout the proceeding
there is an action closing prosecution (ACP) and a right of appeal notice (RAN)
rather than a final rejection special forms must be used
an inter partes reexamination certificate is issued to indicate the status of all
claims following the reexamination
a decision on the request must be made no later than three months from its filing
date, and the remainder of the proceedings must proceed with "special dispatch"
within the PTO
the scope of the patent claims cannot be enlarged by amendment
reexamination and patent files are open to the public as an electronic file
paper versions are not available to the public

2611 Time for requesting inter partes reexamination
any application issuing from an original application (not reissues) filed prior to November 29, 1999 may be eligible for an inter partes reexamination
a patent which issued from an application filed prior to November 29, 1999, in which an RCE was filed on or after May 29, 2000, is not eligible for inter partes reexamination
the period of enforceability is the same as for ex parte reexaminations

2612 Persons who may file a request

§1.907 Inter partes reexamination prohibited.
(a)Once an order to reexamine has been issued under § 1.931, neither the third party requester, nor its privies, may file a subsequent request for inter partes reexamination of the patent until an inter partes reexamination certificate is issued under § 1.997,,unless authorized by the Director. (b)Once a final decision has been entered against a party in a civil action arising in whole or in part under 28 U.S.C.1338 that the party has not sustained its burden of proving invalidity of any patent claiminsuit, then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claim on the basis of issues which that party, or its privies, raised or could have raised in such civil action, and an inter partes reexamination requested by that party, or its privies, on the basis of such issues may not thereafter be maintained by the Office.
(c)If a final decision in an inter partes reexamination proceeding instituted by a third party requester is favorable to patentability of any original, proposed amended, or new claims of the patent, then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claims on the basis of issues which that party, or its privies, raised or could have raised in such inter partes reexamination proceeding.
any person, other than the patent owner may file a request for the inter partes reexamination of a patent unless they are barred under 37 C.F.R. 1.907
since these proceedings include the third party who filed the request, the name of the person who filed the request will not be maintained in confidence
a statement identifying the real party in interest must be made along with the request

2614 Content of request for inter partes reexamination
This section discusses what the third party must include in their request for the inter partes reexamination proceeding to take place.

a request for inter partes reexamination cannot be filed by the patent owner, therefore, there will be no proposed amendment to generate excess claims fees at the filing of a
request for inter partes reexamination

§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 § I.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 nonEnglish 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(a).
(d)If the inter partes request does not meet all the requirements of subsection 1.915(b),the person identified as requesting inter partes reexamination may be so notified and given an opportunity to complete the formal requirements of the request within a specified time. Failure to comply with the notice may result in the inter partes reexamination proceeding being vacated.

the request should identify the patent by stating the patent number

patents and printed publications that provide a substantial new question of patentability must be listed in the reexamination request

a copy of each cited patent or printed publication as well as a translation of each nonEnglish document is required

each cited patent should be presented in double column format

a copy of any prior disclaimer, certificate of correction, or reexamination certificate issued for the patent should also be included with the request

the requester must include the required certifications:
a certification that a copy of the reexamination request has been served on the patent owner
a certification that the requester is not precluded from filing the request for reexamination

2617 Statement in the request applying prior art
the prior art cited may only consist of prior art patents or printed publications

the requester must present an explanation of how the cited patents or printed publications are applied to all claims which the requester considers to merit reexamination based on patents or printed publications

admissions by the patent owner as to any matter affecting patentability may be utilized to determine the scope and content of the prior art in conjunction with patents and printed publications

2624 Correspondence
a request for inter partes reexamination may not be sent by facsimile transmission

any letters sent to the Office relating to the reexamination proceeding should identify the proceeding by the number of the patent undergoing reexamination, the reexamination request control number assigned, the name of the examiner, and the examiner's Art Unit

"Express Mail" may be used to file any paper in an inter partes proceeding

2627 Incomplete request for inter partes reexamination
the request is considered to have a filing date only when the entire fee is paid

2632 Public access
Reexamination files are open to inspection by the general public by way of the Public PAIR via the USPTO Internet site

2640 Decision on request
where a request for reexamination is filed on a patent after a reissue patent for that patent has already issued, reexamination will be denied, because the patent on which the request for reexamination is based has been surrendered

a new request for reexamination, including and based on the specification and claims of the reissue patent, must be filed

§ 1.956 Patent owner extensions of time in inter partes reexamination.
The time for taking any action by a patent owner in an inter partes reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. Any request for such extension must be accompanied by the petition set forth in § 1.17(g). See § 1.304(a) for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit.

The second or subsequent request for a reexamination may raise a substantial new question of patentability with respect to any new or amended claim which has been proposed in the first (or prior) pending reexamination proceeding

2654 Conduct of inter partes reexamination proceedings

35 U.S.C. 314 Conduct of inter partes reexamination proceedings
(a)IN GENERAL.Except as otherwise provided in this section, reexamination shall be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133.In any inter partes reexamination proceeding under this chapter, the patent owner shall be permitted to propose any amendment to the patent and a new claim or claims, except that no
proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted. (b)RESPONSE.
(1)With the exception of the inter partes reexamination request, any document filed by either the patent owner or the thirdparty requester shall be served on the other party. In addition, the Office shall send to the thirdparty requester a copy of any communication sent by the Office to the patent owner concerning the patent subject to the inter partes reexamination proceeding.
(2)Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the thirdparty requester shall have one opportunity to file written comments addressing issues raised by the action of the Office or the patent owner 's response thereto, if those written comments are received by the Office within 30 days after the date of service of the patent owner 's response.
(c)SPECIAL DISPATCH. Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.

once an inter partes reexamination is ordered, a first Office action on the merits will be given

each time the patent owner responds to an Office action, the third party requester may comment on the Office action and the patent owner response, and thereby participate in the proceeding

a lack of a response from the patent owner will not delay reexamination

2658 Scope of inter partes reexamination

§1.906 Scope of reexamination in inter partes reexamination proceeding.
(a)Claims in an inter partes reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C.112.
(b)Claims in an inter partes reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent.
(c)Issues other than those indicated in paragraphs (a)and (b)of this section will not be resolved in an inter partes reexamination proceeding. If such issues are raised by the patent owner or the third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may desire to consider the advisability of filing a reissue application to have such issues considered and resolved.

inter partes reexamination differs from ex parte reexamination in the following ways:
in matters of procedure, such as when the third party requester can participate
the types of Office actions and the timing of issuance of the Office actions

the requirement for identification of the real party in interest

2660 First office action
the first Office action on the merits will ordinarily be mailed together with the order granting reexamination

where all the patent claims are found patentable in the first action, the examiner will issue an Action Closing Prosecution (ACP)

where the examiner finds that one or more of the patent claims should be rejected, a rejection will be made

2665 Extension of time for patent owner response

§1.956 Patent owner extensions of time in inter partes reexamination.
The time for taking any action by a patent owner in an inter partes reexamination proceeding will be extended only for sufficient cause and for a reason able time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. See § 1.304((a) for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit.

the provisions of 37 C.F.R. 1.136(a) and 1.136(b) are not applicable to inter partes reexamination proceedings under any circumstances

an extension of time in an inter partes reexamination is possible under 37 C.F.R. 1.956

2666 Patent owner response to office action
if an amendment is submitted to add claims to the patent being reexamined, then excess claims fees may apply

where there is failure to pay an excess claims fee by the patent owner, the third party requester does not have the new claim "package" to comment on
a. therefore, the third party requester comments may be filed within 30 days from the date of service of the patent owner's response correcting the excess claims fee deficiency

if the failure to comply with the notice of defective paper results in a patent owner failure to file a timely and appropriate response to any Office action, the prosecution of the reexamination proceeding will be terminated

2671 Examiner action following response/comments or expiration of time for same
after the response by the patent owner and any third party comments, the patent under reexamination will be reconsidered

although an Action Closing Prosecution (ACP) has many attributes similar to a "final rejection", it is not a final action, and it cannot be appealed from

an appeal can only be taken after the examiner issues a Right of Appeal Notice (RAN)
a Right of Appeal Notice (RAN) is a final Office action which presents a final decision to reject the claims
an amendment filed after the RAN will not be entered at all

once an ACP has been issued, there is no requirement for the patent owner to respond; where the patent owner does not respond to the rejection of the patent claims, a RAN

will still be issued and the patent owner can appeal at that point to the Board of Patent Appeals and Interferences

a reexamination proceeding may result in the final cancellation of claims from the patent and the patent owner does not have the right to continue the proceeding by refiling under 37 C.F.R. 1.53(b) or 1.53(d) nor by filing an RCE

a "patentability review conference" will be convened at two stages of the examination in an inter partes reexamination proceeding:
just prior to issuing an action closing prosecution (ACP)
just prior to issuing a right of appeal notice which includes a final rejection (RAN)

2673 Examiner consideration of submissions after ACT and further action
No amendment other than canceling claims, where such cancellation does not affect the scope of any other pending claims in the proceeding, can be made in an inter partes reexamination proceeding after the RAN except as provided in 37 C.F.R. 1.981 or as permitted by 37 C.F.R. 41.77(b)(1)

2680 Oral hearing

§1.973 Oral hearing in inter partes reexamination.
(a)An oral hearing in an inter partes reexamination appeal should be requested only in those circumstances in which an appellant or a respondent considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided without an oral hearing will receive the same consideration by the Board of Patent Appeals and Interferences as an appeal decided after oral hearing.
(b)If an appellant or a respondent desires an oral hearing, he or she must file a written request for such hearing accompanied by the fee set forth in §1.17(d)within two months after the date of the examiner ' s answer. The time for requesting an oral hearing may not be extended.
(c)An oral argument may be presented at oral hearing by, or on behalf of, the primary examiner if considered desirable by either the primary examiner or the Board of Patent Appeals and Interferences.
(d)If an appellant or a respondent has requested an oral hearing and has submitted the fee set forth in §1.17(d),a hearing date will be set, and notice given to all parties to the reexamination proceeding, as well as the primary examiner. The notice shall set a non extendable period within which all requests for oral hearing shall be submitted by any other party to the appeal desiring to participate in the oral hearing. A hearing will be held as stated in the notice, and oral argument will be limited to thirty minutes for each appellant and respondent who has requested an oral hearing, and twenty minutes for the primary examiner unless otherwise ordered before the hearing begins. No appellant or respondent will be permitted to participate in an oral hearing unless he or she has requested an oral hearing and submitted the fee set forth in § 1.17(d).
(e)If no request and fee for oral hearing have been timely filed by an appellant or a respondent, the appeal will be assigned for consideration and decision on the written record.

if an appellant or a respondent desires an oral hearing in an appeal of in inter partes reexamination proceeding, he/she must file a written request for such hearing, accompanied by the appropriate fee within two months after the date of the examiner's answer

there is no extension of time for requesting a hearing

2687 Notice of intent to issue inter partes reexamination certificate and conclusion of reexamination proceeding
upon conclusion of the inter partes reexamination proceeding, the examiner must complete a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC)

an NIRC is proper:
when there is no timely response by the patent owner to an Office action requiring a response
all claims are under rejection and all claims will be canceled
after a Right of Appeal Notice (RAN) where no party to the reexamination timely files a notice of appeal
after the filing of a notice of appeal, where all parties who filed a notice of appeal fail to timely file an appellant brief
after a final decision by the Board of Patent Appeals and Interferences, where there is no further timely appeal to the Court of Appeals or for a rehearing by the Board
after the Federal Court appeal process has been completed and the case is returned to the examiner

when all claims are rejected, the examiner will issue a NIRC indicating that all claims have been canceled and terminate the prosecution

if at least one claim is free of rejection and objection, the examiner will issue a NIRC, in which all patentable claims and canceled claims will be identified

2691 Notice of inter partes reexamination certificate issuance in official gazette
the official gazette notice will include bibliographic information, and an indication of the status of each claim after the termination of the reexamination proceeding