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.
(L) 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 fee 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 lnventorship 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. lf the patent owner does not file a
statement under § 1.530, 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 forth 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.
(a) 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
i under§ 1.570.
(ln) The patent owner in an ex parte reexamination proceeding will be given at least thirty days to respond to
any Office action. ln response to any rejection, such response may include f`urther 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 § 1.17(g). See § l.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 file a timely and appropriate response to any Office action or any written
statement of an interview required under § 1.560(b), the ex parte reexamination proceeding will be terminated,
and the Director will proceed to issue a certificate under § 1.570 in accordance with the last action of the Ofhce.
(c) lf a response by the patent owner not timely filed in the Office, ‘
(1) The delay in filltifi such response may be cxci.ise<.l if it is shown to the S1.lll%l`Il('ilOll of the Director that the
delay was unavoidalile; a petition lo accept an nnavoi
(2) The response may nevcrtlieless be accepted if the delay was unintentional; a petition to accept an
unintvnlionally
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§ 1.550 PATENTS
(f') The reexamination requester will be sent copies of Office actions issued during the ex parte reexamination
proceeding. After filing of a request for ex parte reexamination by a third party requester, any document filed
· by either the patent owner or the third party requester must be served on the othe1· party in the reexamination
proceeding in the manner provided by § 1.248. The document must reflect service or the document may be
refused consideration by the Office.
(g) The active participation of the ex parte reexamination requester ends with the reply pursuant to § 1.535,
and no further submissions on behalf of the reexamination requester will be acknowledged or considered.
Further, no submissions on behalf of any third parties will be acknowledged or considered unless such
submissions are:
(1) in accordance with § 1.510 or § 1.535; or
(2) entered in the patent file prior to the date of the order for ex parte reexamination pursuant to § 1.525.
(h) Submissions by third parties, filed after the date of the order for ex parte reexamination pursuant to
§ 1.525, must meet the requirements of and will be treated in accordance with § 1.501(a).
§ 1.552 Scope of reexamination in ex parte reexamination proceedings.
(a) Claims in an ex parte 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 ex parte 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 a
reexamination proceeding. If such issues are raised by the patent owner or 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 consider the advisability of filing a reissue application to have such issues
considered and resolved.
§ 1.555 Information material to patentability in ex parte reexamination and inter partcs reexamina-
tion proceedings.
(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the
most effective reexamination occurs when, at the time a reexamination proceeding is being conducted. the Office
is aware of and evaluates the teachings of all information material to patentability in a reexamination
proceeding. Each individual associated with the patent owner in a reexamination proceeding has a duty of
candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information
known to that individual to be material to patentability in a reexamination proceeding. The individuals who
have a duty to disclose to the Office all inf`ormation known to them to be material to patentability in a
reexamination proceeding are the patent ovmer, each attorney or agent who represents the patent oimer, and
` every other individual who is substantively involved on behalf of the patent owner in a reexamination
proceeding. The duty to disclose the information exists with respect to each claim pending in the reexamination
proceeding until the claim is cancelled. information material to the patentability of a cancelled claim need not
be submitted if the information is not material to patentability of any claim remaining under consideration in
the reexamination proceeding. The duty to disclose all information known to be material to patentability in a
reexamination proceeding is deemed to be satisfied if all information known to be material to patentability of
any claim in the patent after issuance of the reexamination certificate was cited by the Office or submitted to
the Of`fice in an information disclosure statement. However, the duties of candor, good faitli, and disclosure
have not been complied with if any fraud on the Office was practiced or attempted or the duty of disclosure was
violated through bad faith or intentional misconduct hy, or on behalf of`, the patent owner in the reexamination
proceeding. Any information disclosure statement must be filed with the items listed in § 1.98ta) as applied to
individuals associated with the patent owner in a reexamination proceeding, and should be filed within t .`.» ro
months of the date of the order for reexamination, or as soon thereafter as possible.
(b) Under this section, information is material to patentability in a reexamination proceeding when it is not
cumulative to information of record or being made of record in the reeronnination procoecling, and
(1) lt is a patent or printed publication that establishes, by itself or in conibination with other patents: or `
printed publications, a prima facie case of unpatentability of a claim; or
(2) lt refutes, or is inconsistent, with, a position the patent owner takes in;
fi) Opposing an argiunent of unpatentability relied on by the tilitire, or
(ui Assertiiig an argument of patentabiin._y.
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