(a) Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501, unless prohibited by 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). The request must be accompanied by the fee for requesting reexamination set in § 1.20(c)(1).
(b) Any request for reexamination must include the following parts:
(1) A statement pointing out each substantial new question of patentability based on prior patents and printed publications.
(2) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. For each statement of the patent owner and accompanying information submitted pursuant to § 1.501(a)(2) which is relied upon in the detailed explanation, the request must explain how that statement is being used to determine the proper meaning of a patent claim in connection with the prior art applied to that claim and how each relevant claim is being interpreted. If appropriate, the party requesting reexamination may also point out how claims distinguish over cited prior art.
(3) A copy of every patent or printed publication relied upon or referred to in paragraph (b) (1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication.
(4) 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.
(5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as 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 must be supplied to the Office.
(6) A certification by the third party requester that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the ex parte reexamination request.
(c) If the request does not include the fee for requesting ex parte reexamination required by paragraph (a) of this section and meet all the requirements by paragraph (b) of this section, then the person identified as requesting reexamination will be so notified and will generally be given an opportunity to complete the request within a specified time. Failure to comply with the notice will result in the ex parte reexamination request not being granted a filing date, and will result in placement of the request in the patent file as a citation if it complies with the requirements of § 1.501.
(d) The filing date of the request for ex parte reexamination is the date on which the request satisfies all the requirements of this section.
(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.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[46 FR 29185, May 29, 1981, as amended at 47 FR 41282, Sept. 17, 1982; 62 FR 53200, Oct. 10, 1997; 65 FR 54678, Sept. 8, 2000; 65 FR 76775, Dec. 7, 2000; 71 FR 9262, Feb. 23, 2006; 71 FR 44223, Aug. 4, 2006; 72 FR 18905, Apr. 16, 2007; 77 FR 46626, Aug. 6, 2012]
Notes of Decisions
alarm.com Inc. v. Hirshfeld, 26 F.4th 1348 (Fed. Cir. 2022).
· cites it 5× “” § 302; see also 37 C.F.R. § 1.510 . Normally, “[w]ithin three months fol- lowing the filing of a request for reexamination .”
Synopsys, Inc. v. Matal, 280 F. Supp. 3d 823 (E.D. Va. 2017).
· cites it 4× “See 37 C.F.R. § 1.510 (b)(6). 7 If the third party challenger does not include this certification, or if the certification is riot accurate, then the request will not be deemed filed and the Director will not institute an ex parte reexamination proceeding.”
In Re Enhanced Sec. Rsch., LLC, 739 F.3d 1347 (Fed. Cir. 2014).
· cites it 2× “The primary regulation governing reexamination, 37 C.F.R. § 1.510 , permits parties to submit partial prior art references: under § 1.”
Telemac Corp. v. Teledigital, Inc., 450 F. Supp. 2d 1107 (N.D. Cal. 2006).
“On July 24, 2006, the PTO notified Teledigital of its failure to comply with ex parte reexamination request filing requirements, set forth in 37 C.F.R. § 1.510 (c), with respect to four of the five patents.”
Cardpool, Inc. v. Plastic Jungle, Inc., 817 F.3d 1316 (Fed. Cir. 2016).
“For reexamination, Card-pool presented both amended and additional claims, in accordance with 37 C.F.R. § 1.510 (e) (2013), alongside certain claims that stood unamended.”
Patlex Corp., Inc. v. Mossinghoff, 585 F. Supp. 713 (E.D. Pa. 1983).
· cites it 2× “37 C.F.R. § 1.510 (a). If reexamination is not instituted, $1,200 is refunded to the requester of the reexamination proceeding.”
In Re Vamco Mach. & Tool, Inc, 752 F.2d 1564 (Fed. Cir. 1985).
“We copy the following paragraphs from Vamco’s statement in the PTO under 37 C.F.R. § 1.510 (b) in the reexamination petition: On January 28, 1982 Judge Bua issued an order (Exhibit 1) in which the Defendant Littell was ordered to make a diligent search for all prior art and file…”
Syntex (u.s.a.) Inc. v. U.S. Pat. & Trademark Off., 882 F.2d 1570 (Fed. Cir. 1989).
“See also 37 C.F.R. § 1.510 (1988). A person who requests reexamination of another’s patent is identified herein as a "third-party requester” to distinguish from a requester who is the patent owner.”
Fortel Corp. v. Phone-Mate, Inc., 825 F.2d 1577 (Fed. Cir. 1987).
“On April 7, 1986, the Patent and Trademark Office (PTO) granted a Request for Reexamination filed by Phone-Mate on February 7, 1986 pursuant to 37 C.F.R. § 1.510 . In its order, the PTO stated that a “substantial new question of patentability affecting claims 8-12” had been…”
In Re Burton D. Morgan, 990 F.2d 1230 (Fed. Cir. 1993).
“Morgan points to 37 C.F.R. § 1.510 (a), a reexamination rule, which provides in pertinent part: Any person may, at any time during the period of enforceability of a patent, file a request for reexamination by the Patent and Trademark Office of any claim of the patent on the…”
— 37 C.F.R. § 1.510(a) — 1 case
— 37 C.F.R. § 1.510(c) — 1 case
Synopsys, Inc. v. Matal, 280 F. Supp. 3d 823 (E.D. Va. 2017).
“See 37 C.F.R. § 1.510 (b)(6). 7 If the third party challenger does not include this certification, or if the certification is riot accurate, then the request will not be deemed filed and the Director will not institute an ex parte reexamination proceeding.”
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