37 C.F.R. § 1.948

Limitations on submission of prior art by third party requester following the order for inter partes reexamination

Read at: eCFRecfr.gov CornellLII GovInfogovinfo.gov CasesGoogle Scholar

(a) After the inter partes reexamination order, the third party requester may only cite additional prior art as defined under § 1.501 if it is filed as part of a comments submission under § 1.947 or § 1.951(b) and is limited to prior art:

(1) which is necessary to rebut a finding of fact by the examiner;

(2) which is necessary to rebut a response of the patent owner; or

(3) which for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination proceeding. Prior art submitted under paragraph (a)(3) of this section must be accompanied by a statement as to when the prior art first became known or available to the third party requester and must include a discussion of the pertinency of each reference to the patentability of at least one claim.

(b) [Reserved]

Notes of Decisions

Cited in 5 cases, 2012–2017 · leading case: K/S Himpp v. Hear-Wear Technologies, LLC

Sort: Relevance Newest Treatment

K/S Himpp v. Hear-Wear Technologies, LLC (2014) cafc · cites it 4× “37 C.F.R. § 1.948 (listing exceptions not applicable here).”

Ipcom Gmbh & Co. v. Htc Corporation (2017) cafc · cites it 2× “37 C.F.R. § 1.948 (a)(2). Section 1.948(a) provides that a third party requester may only cite additional prior art: (1) which is necessary to rebut a finding of fact by the examiner; (2) which is necessary to rebut a response of the patent owner; or (3) which for the first time…”

Airbus S.A.S. v. Firepass Corporation (2015) cafc · cites it 3× “37 C.F.R. § 1.948 (a) (emphasis added). Airbus argues that the Board erred in dismissing the cross-appeal relating to the Examiner’s refusal to consider proposed rejections to new claims because of a deemed lack of a substantial new question of patentability.”

Belkin International, Inc. v. Kappos (2012) cafc “See 37 C.F.R. § 1.948 (a). Here, Belkin has not argued that the three references were cited for such a purpose, and the limited record before us does not suggest that they were.”

Large Audience Display Systems, LLC v. Tennman Productions, LLC (2016) cafc “Specifically, the examiner rejected the Olympics Prior Art submission under 37 C.F.R. § 1.948 , stating that a third-party requester was only permitted to cite additional prior art to rebut a finding of fact by the examiner or a response of the patent owner, or when additional…”

Annotations are extracted automatically from the opinions in the Syfert caselaw corpus and ranked by authority, recency, and treatment. Dots show Syfertize treatment of the citing case itself.