Request for Ex Parte Patent Reexamination

Summary

This is a template for the detailed request for ex parte reexamination of a patent that must be filed at United States Patent and Trademark Office (USPTO), along with the USPTO's Request for Ex parte Reexamination Transmittal Form, to initiate a patent reexamination. This template includes practical guidance and drafting notes. 35 U.S.C. § 302 (commonly known as the reexamination statute) permits any person, including the patent owner, to file a request for reexamination of any claim of a patent based on any prior art consisting of patents or printed publications that the requester believes to have a bearing on the patentability of any claim. The request must: • Be in writing • Be accompanied by payment of the required reexamination fee • Explain the pertinence and manner of applying the cited prior art to every claim for which reexamination is requested The USPTO reviews the request to determine if a substantial new question of patentability (SNQP) is presented. See 35 U.S.C. § 303(a). If there is an SNQP, the USPTO will order reexamination. The reexamination process is similar to the examination of patent applications, with a few notable differences. The kinds of rejections that an examiner may make in a reexamination are more limited, special forms must be used, and the times to respond to the examiner are generally shorter. When the proceeding concludes, the USPTO issues a reexamination certificate, indicating the status of all claims following the reexamination. The certificate is appended to the patent. Note the following: • Anyone, including a third party or the patent owner, can request ex parte reexamination during the period of enforceability of the patent. • The real party in interest does not have to be identified, so ex parte reexamination requests are often filed by attorneys acting on behalf of unidentified clients. • The type of prior art considered during an ex parte reexamination is limited to prior art patents and printed publications. • An SNQP must be present for reexamination to be ordered. • The reexamination process within the USPTO must proceed with special dispatch and requests for reexamination of patents involved in pending litigation have priority. See 37 C.F.R. § 1.550(a) and MPEP § 2261. Be aware of the following timing considerations for filing the request: • Under 37 C.F.R. § 1.510(a), an ex parte reexamination request can be filed only during the period that the patent is enforceable. • The patent enforceability period is generally determined by adding the six-year effective statute of limitation period under 35 U.S.C. § 286 to the patent's expiration date. However, the period might be extended if enforcement litigation remains pending beyond six years. To identify the expiration date of a utility patent, investigate the following: • The term of the patent • Whether all required maintenance fees have been paid • Whether any disclaimer was filed on the patent to shorten its term • Whether there were any patent term extensions or adjustments for delays within the USPTO under 35 U.S.C. § 154 -and- • Whether there were any patent term extensions under 35 U.S.C. § 156 for marketing delay caused by premarket regulatory review Be aware that this template on its own does not constitute a proper request for ex parte reexamination. It must be filed with the following: • The USPTO's Request for Ex parte Reexamination Transmittal Form • The appropriate filing fee under 37 C.F.R. § 1.20(c) • A copy of the patent to be reexamined in double-column format (i.e., as it is issued by the USPTO) • Copies of the prior art references cited in the request • A listing of the cited prior art references on the USPTO's IDS form (Form PTO/SB/08) This template includes a sample format for each section of the request. The drafting notes provide examples of the types of arguments that can be made. The request must be served on the patent owner. This form includes the necessary certificate of service. For additional discussion, see Ex Parte Reexamination Fundamentals. For a quick reference, see Ex Parte Reexamination Checklist.