Get It Right The First Time!

Darrin Auito and Yoshiya Nakamura | March 1, 2010


We’ve reviewed many requests for reexamination filed over the past few years and found that a large number were not granted in the first action because of one deficiency or another.

To help avoid such a result (e.g., notice from the PTO that your request is incomplete, or even, that your request is denied), we’ve prepared a checklist of requirements under the PTO rules and a checklist of practical suggestions to improve the likelihood that your initial request will be granted.

The following five formal requirements for reexamination requests are recited in 37 CFR §1.510 (“Rule 510”):

1. Point out each substantial new question of patentability (“SNPQ”) based on prior patents and printed publications.

2. Identify every claim for which reexamination is requested, and provide a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested.  If appropriate the party requesting reexamination may also point out how claims distinguish over cited prior art.

3. Include a copy of every patent or printed publication relied upon or referred to in requirements 1 and 2 accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication.

4. Include a copy of the entire patent (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. Provide 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 provided for in Rule 1.33(c).  The name and address of the party must be indicated.

The following requirements are recited in 37 CFR §1.915 (“Rule 915“) and apply to inter partes requests:

6. Certify that the estoppel provisions of 1.907 do not prohibit the inter partes reexamination.

7. Identify the real party in interest for an inter partes reexamination request.  Such identification is not needed for ex parte requests.

In addition to the requirements listed above, we suggest:

•  Include a table of contents identifying sections complying with the Rules and each of the arguments

• As a preliminary matter, compare the primary references in the request to the primary reference from the original prosecution of the patent.  This will emphasize that the new art (or the art viewed in a new way) is different than the original art, i.e., not cumulative.

• Point to KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), but describe previously submitted prior art in “a new light” from a technical point of view (especially when the prosecution history reveals that the applicant overcame an obviousness rejection using the old teaching-suggestion-motivation (“TSM”) analysis.)

• Limit the cited prior art to relevant references so that the patentee can’t later argue that certain references are not relevant to the case because the PTO did not rely on them.  In other words, do not identify hundreds of cumulative references when the likelihood is that the PTO is not going to rely on them.

• Apply the prior art references, one at a time, to each claim.  For example, explain that claim 1 is made obvious by Reference A in view of Reference B and that claim 1 is made obvious by Reference A in view of Reference C.  Do not explain that claim 1 is made obvious by Reference A in view of Reference B or C.

• Reduce the burden on the PTO by providing a detailed claim chart (similar to an invalidity chart used in litigation) that compares, limitation by limitation, each claim for which reexamination is requested with the relevant teachings of each reference cited in the request.

• Quote the pertinent teachings of the cited references, referencing each quote by page, column and line number and any relevant figure numbers.  However, do NOT lump together the proposed rejections.

• If the meaning of the prior art is in any way unclear, include a demonstrative and/or attach a declaration by an expert in the technology explaining the disclosure and its applicability to the patent claims.  The demonstrative and/or declaration should be consistent with the requestor’s claim construction and infringement/validity positions in any pending or anticipated litigation.

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