Chapter 2600

Optional Inter Partes Reexamination

Chapter 2600 covers optional inter partes reexamination, largely replaced by IPR under AIA. Key distinction: inter partes reexamination uses SNQ standard while IPR uses reasonable likelihood of prevailing standard.

Core Concepts

Inter Partes Reexamination — MPEP 2611 Available for patents granted from applications filed on or after November 29, 1999. Any third party may request. Based on patents and printed publications only — same as ex parte. SNQ standard required to order. Largely replaced by IPR for patents with effective filing date on or after March 16, 2013.

Third-Party Participation — MPEP 2612 Unlike ex parte: third-party requester has participation rights throughout. May file written comments after each patent owner response. May appeal to PTAB and Federal Circuit. Patent owner and third party both participate.

Estoppel — MPEP 2686 Third-party requester estopped from asserting in subsequent litigation that any claim is invalid on grounds that were raised or could have been raised in inter partes reexamination. Strong estoppel effect — broader than IPR estoppel.

IPR vs Inter Partes Reexamination IPR (AIA): reasonable likelihood of prevailing standard; 12-month deadline from service of complaint; PTAB trial proceeding; faster resolution. Inter partes reexamination (pre-AIA): SNQ standard; no filing deadline; examination proceeding; longer duration.

Key Rules

1.Inter partes reexamination: SNQ standard (not reasonable likelihood like IPR)

2.Third-party requester has participation rights throughout — unlike ex parte

3.Based on patents and printed publications only

4.Estoppel: requester estopped from raising same/raisable grounds in later litigation

5.Largely replaced by IPR for AIA patents

6.Both patent owner and third party may appeal

EXAM TIP

Know the contrast: inter partes reexamination (SNQ standard, examination proceeding) vs IPR (reasonable likelihood standard, trial proceeding). Third-party participation is the key difference from ex parte reexamination — requester participates throughout in inter partes.

Common Traps

1.Confusing SNQ standard (inter partes reexam) with reasonable likelihood (IPR)

2.Thinking third party has no participation rights — they do in inter partes reexamination

3.Forgetting estoppel effect bars future litigation on raised/raisable grounds

4.Assuming inter partes reexam is available for all patents — only post-November 29, 1999

Search Terms

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Sections

2601Introduction

2602Citation of Prior Art

2609Inter Partes Reexamination

2610Request for Inter Partes Reexamination

2611Time for Requesting Inter Partes Reexamination

2612Persons Who May File a Request

2613Representative of Requester

2614Content of Request for Inter Partes Reexamination

2615Fee for Requesting Inter Partes Reexamination

2616Substantial New Question of Patentability/Reasonable Likelihood That Requester Will Prevail

2617Statement in the Request Applying Prior Art

2618Copies of Prior Art (Patents and Printed Publications)

2619Copy of Printed Patent

2620Certificate of Service

2622Address of Patent Owner

2623Withdrawal of Attorney or Agent

2624Correspondence

2625Untimely Paper Filed Prior to First Office Action

2626Initial Processing of Request for Inter Partes Reexamination

2627Incomplete Request for Inter Partes Reexamination

2629Notice of Request for Inter Partes Reexamination in Official Gazette

2630Constructive Notice to Patent Owner

2631Processing of Request Corrections

2632Public Access

2634Fee Processing and Procedure

2635Record Systems

2636Assignment of Reexamination

2638Time Reporting

2640Decision on Request

2641Time for Deciding Request

2642Criteria for Deciding Request

2643Claims Considered in Deciding Request

2644Prior Art on Which the Determination Is Based

2646Decision Ordering Reexamination

2647Decision Denying Reexamination

2648Petition From Denial of Request

2654Conduct of Inter Partes Reexamination Proceedings

2655Who Reexamines

2656Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination

2657Listing of Prior Art

2658Scope of Inter Partes Reexamination

2659Res Judicata and Collateral Estoppel in Reexamination Proceedings

2660First Office Action

2661Special Status for Action

2662Time for Response and Comments

2664Mailing of Office Action

2665Extension of Time for Patent Owner Response

2666Patent Owner Response to Office Action

2667Handling of Inappropriate or Untimely Filed Papers

2668Petition for Entry of Late Papers for Revival of Reexamination Proceeding

2670Clerical Handling

2671Examiner Action Following Response/Comments or Expiration of Time for Same

2672Patent Owner Comments/Amendment After ACP and Third Party Requester Responsive Comments

2673Examiner Consideration of Submissions After ACP and Further Action

2674Appeal in Inter Partes Reexamination

2675Appellant Brief

2676Appeal Conference

2677Examiner’s Answer

2678Rebuttal Briefs

2679Office Treatment of Rebuttal Brief

2680Oral Hearing

2681Board Decision

2682Action Following Decision

2683Appeal to Courts

2684Information Material to Patentability in Reexamination Proceeding

2685No Interviews on Merits in Inter Partes Reexamination Proceedings

2686Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon

2687Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) and Conclusion of Reexamination Proceeding

2688Issuance of Inter Partes Reexamination Certificate

2689Reexamination Review

2690Format of Inter Partes Reexamination Certificate

2691Notice of Inter Partes Reexamination Certificate Issuance in Official Gazette

2692Distribution of Certificate

2693Intervening Rights

2694Concluded Reexamination Proceedings

2695Reexamination of a Reexamination

2696USPTO Forms To Be Used in Inter Partes Reexamination