I (5) A certification that a copy of the request filed by a person other than the patent owner has been served in
A o its entirety on the patent owner at the address as provided for in § 1.33(c). The name and address ofthe party
V served must be indicated. If service was not possible, a duplicate copy must be supplied to the OfHce.
(c) If the request does not include the fee f`or requesting reexamination or all of the parts required by
1 paragraph (b) of this section, the person identified as requesting reexamination will be so notified and given an 1
opportunity to complete the request within a specified time. If the fee for requesting reexamination has been
· paid but the defect in the request is not corrected within the specified time, the determination whether or not to
institute reexamination will be made on the request as it then exists. lf the fee for requesting reexamination
has not been paid, no determination will be made and the request will be placed in the patent file as a citation if ·
it complies with the requirements of § 1.501(a).
. (d) The filing date of the request is: (1) the date on which the request including the entire fee for requesting
A A reexamination is received in the Patent and Trademark Office; or (2) the date on which the last portion of the
q fee for requesting reexamination is received.
(e) A request filed by the patent owner may include a proposed amendment in accordance with § 1.530.
(f`) If a 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).
§ 1.515 Determination of the request for ex parte reexamination.
(a) Within three months following the filing date of a request for an ex parte reexamination, an examiner will
consider the request and determine whether or not a substantial new question of patentability affecting any
claim of the patent is raised by the request and the prior art cited therein, with or without consideration of
other patents or printed publications. The examiner’s determination will be based on the claims in effect at the
time of the determination, will become a part of the official file of the patent, and will be mailed to the patent
owner at the address as provided for in § 1.33(c) and to the person requesting reexamination.
(b) Vlfhere no substantial new question of patentability has been found, a refund of a portion of the fee for
requesting ex parte reexamination will be made to the requester in accordance with § 1.2fi(c).
(c) The requester may seek review by a petition to the Director under § 1.181 within one month of the
mailing date of the examiners determination refusing ex parte reexamination. Any such petition must comply
with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new
question of patentability has been raised, the determination shall be final and nonappealable.
§ 1.520 Ex parte reexamination at the initiative of the Director.
The Director, at any time during the period of enforceability of a patent, may determine whether or not a
substantial new question of` patentability is raised by patents or printed publications which have been discovered
by the Director or which have been brought to the Director’s attention, even though no request for
reexamination has been filed in accordance with § 1.510 or § 1.913. The Director may initiate ex parte
reexamination without a request for reexamination pursuant to § 1.510 or § 1.913. Normally requests from
o outside the Office that the Director undertake reexamination on his ovm initiative will not be considered. Any
determination to initiate ex parte reexamination under this section will become a part of the official file of the
patent and will be mailed to the patent owner at the address as provided for in § 1.33(c).
EX PARTE REEXAMINATION
1.525 Order f`or ex parte reexamination.
(a) If a substantial new question of patentability is found pursuant to § 1.515 or § 1.520, the determination
will include an order for ex parte reexaniinatiou of the patent for resolution ofthe question. If the order for ex
parte reexamination resulted from a petition pursuant to § 1.51502). the ex parte reexainination will ordinarily
be conducted by an examiner other than the examiner responsible for the initial determination under § 1.515(a).
(b) The notice published in the Official Gazette under § 1.11(c) will be considered to be constructive notice
and ex parte reexamination will proceed.
§ 1.530 Statement by patent owner in cx parte reexamination; amendment by patent owner in ex
pam- or inter partes rcexamination; invcntorship change in ex parte or inter partcs ~
reexamination.
(a) Except as provided in § 1.5l.0(e), no statement or other response by the patent owner in an ex parte
reexarniiiation proceeding shall be filed prior to the deteriuinatioiis made in 2
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r § 1.530 PATENTS
If a premature statement or other response is filed by the patent owner, it will not be acknowledged 0,-
†pg considered in making the determination.
_ (b) The order for ex parte reexamination will set a period of not less than two months from the date of the
t , order within which the patent owner may file a statement on the new question of patentability, including any
proposed amendments the patent owner wishes to make.
(c) Any statement filed by the patent owner shall clearly point out why the subject matter as claimed is not
anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any
reasonable combinations. Where the reexamination request was filed by a third party requester, any statement
filed by the patent owner must be served upon the ex parte reexamination requester in accordance with § 1.248,
(d) Making amendments in a reexamination proceeding. A proposed amendment in an ex parte or an inter
partes reexamination proceeding is made by filing a paper directing that proposed specified changes be made to
the patent specification, including the claims, or to the drawings. An amendment paper directing that proposed
specified changes be made in a reexamination proceeding may be submitted as an accompaniment to a request
filed by the patent owner in accordance with § 1.510(e), as part of a patent owner statement in accordance with
paragraph (b) of this section, or, where permitted, during the prosecution of the reexamination proceeding
pursuant to § 1.550(a) or § 1.937.
(1) Specification other than the claims. Changes to the specification, other than to the claims, must be made
by submission of the entire text of an added or rewritten paragraph including markings pursuant to paragraph
(f`) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph,
without presentation of the text of the paragraph. '1‘he precise point in the specification must be identified
where any added or rewritten paragraph is located. This paragraph applies whether the amendment is
` submitted on paper or compact disc (see §§ 1.96 and 1.825).
(2) Claims. An amendment paper must include the entire text of each patent claim which is being proposed
to be changed by such amendment paper and of each new claim being proposed to be added by such amendment
paper. For any claim changed by the amendment paper, a parenthetical expression "amended," "twice
amended," etc., should follow the claim number. Each patent claim proposed to be changed and each proposed
added claim must include markings pursuant to paragraph (f`) of this section, except that a patent claim or
proposed added claim should be canceled by a statement canceling the claim, without presentation of the text of
the claim.
(3) Drawings. Any change to the patent drawings must be submitted as a sketch on a separate paper
showing the proposed changes in red for approval by the examiner. Upon approval of the changes by the
examiner, only new sheets of drawings including the changes and in compliance with § 1.84 must be filed.
Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the
event a figure is canceled, the figure must be surrounded by brackets and identified as "()anceled."
(4) The formal requirements for papers making up the reexamination proceeding other than those set forth in
this section are set out in § 1.52.
(e) Status of claims and support f`or claim changes. Whenever there is an amendment to the claims pursuant
~ to paragraph (d) of this section, there must also be supplied, on pages separate from the pages containing the
changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all
added claims, and an explanation of the support in the disclosure of the patent for the changes to the claims
made by the amendment paper.
(f') Changes shown by markings. Any changes relative to the patent being reexamined which are made to
the specification, including the claims, must include the following markings:
(1) The matter to be omitted by the reexamination proceeding must be enclosed in brackets; and
(2) The matter to be added by the reexamination proceeding must be underlined.
(g) Numbering of patent claims preseived. Patent claims may not be renumbered. The numbering of any
claims added in the reexamination proceeding must follow the number of the highest numbered patent claim.
(h) Amendment of disclosure may be required. The disclosure must be amended, when required by the
. Office, to correct inaccuracies of description and definition, and to secure substantial correspondence bctweén
the claims, the remainder ofthe specification, and the drawings.
(i) Amendments made relative to patent. All amendments must be relative to the patent specification,
including the claims, and drawings, which are in effect as of the date of filing the request for reexamination.
(_j) No enlargement of claim scope. No amendment may enlarge the scope of the claims of the patent OY
introduce new matter. No amendment may be proposed for entry in an expired patent. Moreover, no
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RULES OF PRACTICE IN PATENT CASES 1.550
i' amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued
( after the expiration of the patent.
(k) Amendments not effective until certificate. Although the Office actions will treat proposed amendments
as though they have been entered, the proposed amendments will not be effective until the reexamination
certificate is issued.
(Z) Correction of inventorship in an ex parte or inter partes reexamination proceeding.
(1) When it appears in a patent being reexamined that the correct inventor or inventors were not named
through error without deceptive intention on the part of the actual inventor or inventors, the Director may, on
petition of all the parties set forth in § 1.324(b)(1)—(3), including the assignees, and satisfactory proof of the
facts and payment of the f`ee set forth in § 1.20(b), or on order of a court before which such matter is called in
question, include in the reexamination certificate to be issued under § 1.570 or § 1.977 an amendment naming
only the actual inventor or inventors. The petition must be submitted as part of the reexamination proceeding
and must satisfy the requirements of § 1.324.
(2) Notwithstanding the preceding paragraph (1)(1) of this section, if a petition to correct inventorship
satisfying the requirements of § 1.324 is filed in a reexamination proceeding, and the reexamination proceeding
is terminated other than by a reexamination certificate under § 1.570 or § 1.977, a certificate of correction
indicating the change of inventorship stated in the petition will be issued upon request by the patentee.
§ 1.535 Reply by third party requester in ex parte reexamination.
A reply to the patent owner’s statement under § 1.530 may be filed by the ex parte reexamination requester
within two months from the date of service of the patent owner’s statement. Any reply by the ex parte
requester must be served upon the patent owner in accordance with § 1.248. If the patent owner does not file a
statement under § 1.50, no reply or other submission from the ex parte reexamination requester will be
considered.
§ 1.540 Consideration of responses in ex parte reexamination.
The failure to timely file or serve the documents set f`orth in § 1.530 or in § 1.535 may result in their being
refused consideration. No submissions other than the statement pursuant to § 1.530 and the reply by the ex
parte reexamination requester pursuant to § 1.535 will be considered prior to examination.
§ 1.550 Conduct of ex parte reexamination proceedings.
(al All ex parte reexamination proceedings, including any appeals to the Board of Patent Appeals and
Interferences, will be conducted with special dispatch within the Office. After issuance of the ex parte .
reexamination order and expiration of the time for submitting any responses, the examination will be conducted
in accordance with §§ 1.104 through 1.116 and will result in the issuance of an ex parte reexamination certificate
under § 1.570.
(b) The patent owner in an ex parte reexamination proceeding will be given at least thirty days to respond to
any Office action. In response to any rejection, such response may include further statements and/or proposed
amendments or new claims to place the patent in a condition where all claims, if amended as proposed, would be
` patentable.
(c) The time for taking any action by a patent owner in an ex parte reexamination proceeding will be
extended only for sufficient cause and f`or 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 fee set forth
in § l.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 or for commencing a civil action.
(d) lf the patent owner fails to f`ile a timely and appropriate response to any Office action or any written
statement of an interview required under § l.5ti0(b), the ex parte reexamination proceeding will be terminated,
and the l)i1·ector will proceed to issue a certificate under Si 1.570 in accordance with the last action of the Office.
(e) If a response by the patent owner is not timely filed in the Office,
(1) The delay in filing such response may be excused if it is shown to the satisfaction of the Director that the
delay was unavoidable; a petition to accept an unavoidabiy delayed response must be filed in compliance with .
§ 1.l37(a); or
(2) The response may nevertheless be accepted if the delay was unintentional; a petition to accept an
unintentionally delayed response must be filed in compliance with § 1.l37(b). `
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