A reexamination proceeding ordered under 35 U.S.C. 304 provides a complete reexamination of the patent claims on the basis of prior art patents and printed publications. Double patenting issues may also be considered during reexamination. See subsection I.D. below. Issues relating to 35 U.S.C. 112 are addressed only with respect to new claims or amendatory subject matter in the specification, claims or drawings. Any new or amended claims are examined to ensure that the scope of the original patent claims is not enlarged, i.e., broadened. See 35 U.S.C. 305.

In a reexamination proceeding ordered under 35 U.S.C. 257, however, reexamination is not limited to patents and printed publications. Reexamination ordered under 35 U.S.C. 257 may involve any information which is determined by the Office to raise a substantial new question of patentability in a supplemental examination proceeding. The information may include, for example, not only a patent or a journal article, but also a sales invoice, or a transcript of an audio or video recording. A reexamination proceeding ordered under 35 U.S.C. 257 may involve issues relating to 35 U.S.C. 112 which are not limited to matter that has been added or deleted during reexamination. Issues under 35 U.S.C. 112 in a reexamination ordered under 35 U.S.C. 257 may also involve the original subject matter of the patent under reexamination, including the original specification, claims, and drawings. Reexamination ordered under 35 U.S.C. 257 may involve any ground of patentability, such as, for example, patent eligible subject matter, anticipation, public use or sale, obviousness, written description, enablement, indefiniteness, and double-patenting. See MPEP §§ 2801 and 2809.01, subsection I.

I. PRIOR ART PATENTS OR PRINTED PUBLICATIONS, AND DOUBLE PATENTING

Rejections on prior art in reexamination proceedings ordered under 35 U.S.C. 304 may only be made on the basis of prior art patents or printed publications. The prior art regime under which the application for the patent was examined (the first-inventor-to-file prior art regime, or the first-to-invent prior art regime) will generally be applied in reexamination of the patent. One exception would be where an amended or new claim having an effective filing date for the new claim on or after March 16, 2013, is presented during the reexamination of a patent that was subject to the first-to-invent prior art regime, in which case the reexamination would be conducted under the first-inventor-to-file prior art regime. Similarly if a benefit claim to a prior application with a filing date before March 16, 2013 is made during the reexamination , then reexamination would be conducted under the first-to-invent prior art regime even if the application that matured into the patent was examined under the first-inventor-to-file prior art regime when the following conditions are met. Specifically, the written description of the prior application must provide adequate written support under 35 U.S.C. 112 for the following: (1) all of the patent claims; (2) all claims presented at any time during the prosecution of the application that matured into the patent under reexamination; and (3) all claims presented at any time during the prosecution of any application to which the benefit was sought by the application that matured into the patent under reexamination.

With respect to the first-inventor-to-file prior art regime, prior art rejections may be based upon the provisions of 35 U.S.C. 102 as it is in effect on and after March 16, 2013, applicable to prior art patents and printed publications. Thus “A person shall be entitled to a patent unless”:

(1) “the claimed invention was patented” or “described in a printed publication” “before the effective filing date of the claimed invention”; or

(2) “the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

These provisions are subject to the exceptions of 35 U.S.C. 102(b), and effective filing dates are determined pursuant to 35 U.S.C. 102(d). For further information as to the first-inventor-to-file prior art regime, see MPEP Chapter 700.

With respect to the first-to-invent prior art regime, prior art rejections may be based upon the following portions of prior 35 U.S.C. 102 (in effect prior to March 16, 2013):

“(a) . . . patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or”

“(b) the invention was patented or described in a printed publication in this or a foreign country . . . more than one year prior to the date of the application for patent in the United States, or”

*****

“(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or”

• (e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or”

*****

“(g)… (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.”

All citations to 35 U.S.C. discussing the first-to-invent prior art regime are to the relevant statute in effect on March 15, 2013.

Typically, substantial new questions of patentability and rejections in a reexamination proceeding are based on “prior art” patents and publications. However, there are exceptions, even for reexaminations ordered under 35 U.S.C. 304. For example, in In re Lonardo, 119 F.3d 960, 43 USPQ2d 1262 (Fed. Cir. 1997), the Federal Circuit upheld a nonstatutory double patenting rejection in which the patent upon which the rejection was based and the patent under reexamination shared the same effective filing date. See also the discussion as to double patenting in subsection I.D. below. Analogously, for reexamination proceedings examined under the first-to-invent prior art regime, a 35 U.S.C. 102(g)(2) rejection may be asserted in a reexamination proceeding based on the examples illustrated below:

A. Previously Considered Prior Art Patents or Printed Publications

After reexamination is ordered based on a proper substantial new question of patentability, the propriety of making a ground of rejection based on prior art previously considered by the Office (in an earlier examination of the patent) is governed by the guidance set forth in MPEP § 2258.01. See also In re Hiniker Co., 150 F.3d 1362, 1367, 47 USPQ2d 1523,1527 (Fed. Cir. 1998)(court held the reexamination proceeding was supported by a substantial new question of patentability where the rejection before the court was based on a combination of art that had been before the examiner during the original prosecution, and art newly cited during the reexamination proceeding.)

B. Matters Other Than Patents or Printed Publications in Reexaminations Ordered under 35 U.S.C. 304

Rejections will not be based on matters other than patents or printed publications, such as public use or sale, inventorship, 35 U.S.C. 101, conduct issues, etc. In this regard, see In re Lanham, 1 USPQ2d 1877 (Comm’r Pat. 1986), and Stewart Systemsv.Comm’r of Patents and Trademarks, 1 USPQ2d 1879 (E.D. Va. 1986). A rejection on prior public use or sale, insufficiency of disclosure (with respect to original subject matter), etc., cannot be made even if it relies on a prior art patent or printed publication. Prior art patents or printed publications must be applied under an appropriate portion of 35 U.S.C. 102 and/or 103 when making a rejection.

C. Intervening Patents or Printed Publications

Rejections may be made in reexamination proceedings based on intervening patents or printed publications where the patent claims under reexamination are entitled only to the filing date of the patent and are not supported by an earlier foreign or United States patent application whose filing date is claimed. For example, under 35 U.S.C. 120, the effective date of these claims would be the filing date of the application which resulted in the patent. Intervening patents or printed publications are available as prior art under In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958), and In re van Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972). See MPEP § 211. See also In re NTP, Inc., 654 F.3d 1268, 99 USPQ2d 1500 (Fed. Cir. 2011) (holding that the Office is not prohibited from performing a 35 U.S.C. 112 written description priority analysis during reexamination).

D. Double Patenting

Double patenting is normally proper for consideration in reexamination under 35 U.S.C. 302. See In re Lonardo, 119 F.3d 960, 43 USPQ2d 1262 (Fed. Cir. 1997). In Lonardo, the Federal Circuit reviewed and interpreted the language of 35 U.S.C. 303 and stated that:

Since the statute in other places refers to prior art in relation to reexamination, see id., it seems apparent that Congress intended that the phrases ‘patents and publications’ and ‘other patents or printed publications’ in section 303(a) not be limited to prior art patents or printed publications… . Finally, it is reasonable to conclude that Congress intended to include double patenting over a prior patent as a basis for reexamination because maintenance of a patent that creates double patenting is as much of an imposition on the public as maintenance of patent that is unpatentable over prior art. Thus, we conclude that the PTO was authorized during reexamination to consider the question of double patenting based upon the `762 patent.

In re Lonardo, 119 F.3d at 966, 43 USPQ2d at 1266. Accordingly, the issue of double patenting, over prior art patents or non-prior art patents, is appropriate for consideration in reexamination under 35 U.S.C. 302, both as a basis for ordering reexamination under 35 U.S.C. 304 and during subsequent examination on the merits. The issue of double patenting is to be considered by the examiner when making the decision on the request for reexamination. The examiner should determine whether the issue of double patenting raises a substantial new question of patentability. The issue of double patenting is also to be considered during the examination stage of reexamination proceeding. In the examination stage, the examiner should determine whether a rejection based on double patenting is appropriate.

Reexamination cannot be used to retroactively recover the safe harbor protection of 35 U.S.C. 121 by deleting, during a reexamination proceeding, subject matter from the patent that was not present in the parent application and amending the benefit designation to the parent application from a continuation-in-part (CIP) to a divisional. In re Janssen Biotech, Inc., 880 F.3d 1315, 125 USPQ2d 1525 (Fed. Cir. 2018).

Reexaminations ordered under 35 U.S.C. 257 may also involve double patenting grounds. See also Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (“Double patenting rejections are analogous to rejections under 35 U.S.C. 103 and depend on the presence of a prior patent as the basis for the rejection”).

See MPEP § 804 to § 804.03 for discussion on double patenting.

E. Affidavits or Declarations or Other Written Evidence

Affidavits or declarations or other written evidence which explain the contents or pertinent dates of prior art patents or printed publications in more detail may be considered in reexamination.

In reexaminations ordered under 35 U.S.C. 304, any rejection must be based upon the prior art patents or printed publications as explained by the affidavits or declarations or other written evidence. The rejection in such circumstances cannot be based on the affidavits or declarations or other written evidence as such, but must be based on the prior art patents or printed publications.

F. Admissions; Use of Admissions in Reexaminations Filed under 35 U.S.C. 302 and Ordered under 35 U.S.C. 304

1. Initial Reexamination Determination and Order

The consideration under 35 U.S.C. 303 of a request for reexamination is limited to prior art patents and printed publications. See Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988). Thus an admission, per se, may not be the basis for establishing a substantial new question of patentability. However, an admission by the patent owner of record in the file or in a court record may be utilized in combination with a patent or printed publication. While such an admission may be utilized in combination with a patent or printed publication, a written statement of the patent owner submitted pursuant to 37 CFR 1.501 and accompanying 37 CFR 1.510(b)(2) explanation (of how each patent owner claim scope statement is being used to determine the proper meaning of patent claim) cannot be considered in making the initial reexamination determination and issuance of the order granting or denying reexamination. See 35 U.S.C. 301(d).

2. Reexamination Ordered under 35 U.S.C. 304, Examination on the Merits

After reexamination has been ordered under 35 U.S.C. 304, the examination on the merits is dictated by 35 U.S.C. 305, see Ex parteMcGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988).

35 U.S.C. 301(a)(2) permits a submission under 35 U.S.C. 301 to contain written “statements of the patent owner filed in a proceeding before a federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.” This provision of the statute has been implemented via 37 CFR 1.501(a)(2). If any statement of the patent owner submitted pursuant to 37 CFR 1.501(a)(2) is relied upon in the request, requester must explain how that statement is being used to determine the proper meaning of a patent claim in connection with prior art applied to that claim. 37 CFR 1.510(b)(2) requires that the “detailed explanation” of applying prior art provided in the request for ex parte reexamination must explain how each patent owner claim scope statement is being used to determine the proper meaning of each patent claim in connection with the prior art applied to that claim. The explanation will be considered by the Office during the examination stage, if reexamination is ordered, to determine the proper meaning of a patent claim in connection with prior art applied to that claim.

Further, admissions by the patent owner in the record as to matters affecting patentability may be utilized during a reexamination proceeding under 35 U.S.C. 302 in combination with a patent or printed publication with respect to the determination of anticipation and obviousness; see 37 CFR 1.104(c)(3).

37 CFR 1.104(c)(3) provides that admissions by the patent owners as to matters affecting patentability may be utilized in a reexamination proceeding. The Supreme Court when discussing 35 U.S.C. 103 in Grahamv.John Deere Co., 383 U.S. 6, 148 USPQ 459 (1966) stated, inter alia, “the scope and content of the prior art are to be determined.” Accordingly, a proper evaluation of the scope and content of the prior art in determining obviousness would require a utilization of any “admission” by the patent owner which can be used to interpret or modify a patent or printed publication applied in a reexamination proceeding. This is true whether such admission results from a patent or printed publication or from some other source. An admission as to what is in the prior art is simply that, an admission, and requires no independent proof. It is an acknowledged, declared, conceded, or recognized fact or truth, Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988). While the scope and content of the admission may sometimes have to be determined, this can be done from the record and from the paper file or IFW file history in the same manner as with patents and printed publications. To ignore an admission by the patent owner, from any source, and not use the admission as part of the prior art in conjunction with patents and printed publications in reexamination would make it impossible for the examiner to properly determine the scope and content of the prior art as required by Graham,supra.

The Board upheld the use of an admission in a reexamination proceeding under 35 U.S.C. 302 in Ex parteSeiko Koko Kabushiki Kaisha, 225 USPQ 1260 (Bd. Pat. App. & Inter. 1984), Ex parteKimbell, 226 USPQ 688 (Bd. Pat. App. & Inter. 1985) and in Ex parte McGaughey, 6 USPQ2d 1334 (Bd. Pat. App. & Inter. 1988). In Seiko, the Board relied on In re Nomiya, 509 F.2d 566, 184 USPQ 607 (CCPA 1975) holding an admission of prior art in the specification of the parent undergoing reexamination is considered prior art which may be considered as evidence of obviousness under 35 U.S.C. 103. In Kimbell, the Board referred to the patent specification and noted the admission by appellant that an explosion-proof housing was well known at the time of the invention. In Ex parteMcGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988), the Board held that any unequivocal admission relating to prior art is a fact which is part of the scope and content of the prior art and that prior art admissions established in the record are to be considered in reexamination. An admission from any source can be used with respect to interpreting or modifying a prior art patent or printed publication, in a reexamination proceeding. The Board expressly overruled the prior Board decision in Ex parte Horton, 226 USPQ 697 (Bd. Pat. App. & Inter. 1985) which held that admissions which are used as a basis for a rejection in reexamination must relate to patents and printed publications.

The admission can reside in the patent file (made of record during the prosecution of the patent application) or may be presented during the pendency of the reexamination proceeding or in litigation. Admissions by the patent owner as to any matter affecting patentability may be utilized to determine the scope and content of the prior art in conjunction with patents and printed publications in a prior art rejection, whether such admissions result from patents or printed publications or from some other source. An admission relating to any prior art (e.g., on sale, public use) established in the record or in court may be used by the examiner in combination with patents or printed publications in a reexamination proceeding under 35 U.S.C. 302. Any admission submitted by the patent owner is proper. A third party, however, may not submit admissions of the patent owner made outside the record of the file or the court record. Such a submission would be outside the scope of reexamination.

Reexaminations ordered under 35 U.S.C. 257 may involve an admission by the patent owner, and the admission need not be combined with patents or printed publications.

G. Claim Interpretation and Treatment

Original patent claims will be examined only on the basis of prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103 in reexaminations ordered under 35 U.S.C. 304. See MPEP § 2217. Where there is related litigation and a federal court has made a judicial interpretation of a disputed claim term, the examiner in treating the disputed claim term should set forth the reasoning by, for example, acknowledging the judicial interpretation and assessing whether the judicial interpretation is consistent with the broadest reasonable construction of the term. Moreover, if adopting a different claim construction than the judicial interpretation, the examiner should supply reasoning to support the different interpretation.

35 U.S.C. 301(a)(2) permits a submission under 35 U.S.C. 301 to contain written “statements of the patent owner filed in a proceeding before a federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.” This provision of the statute has been implemented via 37 CFR 1.501(a)(2). Pursuant to 37 CFR 1.552, any written statement of the patent owner and any accompanying information submitted pursuant to 37 CFR 1.501(a)(2) which is of record in the patent being reexamined (which includes any reexamination files for the patent) should be considered (after a reexamination proceeding has been ordered, but not at the order stage) to determine the proper meaning of a patent claim when applying patents or printed publications.

During reexamination ordered under 35 U.S.C. 304, and also during reexamination ordered under 35 U.S.C. 257, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims (In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984)). In a reexamination proceeding involving claims of an expired patent, claim construction pursuant to the principle set forth by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (words of a claim “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention) should be applied since the expired claim are not subject to amendment. See Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986). The statutory presumption of validity, 35 U.S.C. 282, has no application in reexamination (In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985)).

II. COMPLIANCE WITH 35 U.S.C. 112

In reexaminations ordered under 35 U.S.C. 304, where new claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. 112. Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim. Thus, a term in a patent claim which the examiner might deem to be too broad cannot be considered as too broad in a new or amended claim unless the amendatory matter in the new or amended claim creates the issue. If a limitation that appears in an existing patent claim also appears in a claim newly presented in a reexamination proceeding, that limitation cannot be examined as to 35 U.S.C. 112. If a dependent claim is rewritten as an independent claim in a reexamination proceeding, that independent claim cannot be examined as to 35 U.S.C. 112, unless the nature of the rewriting raises a new question (e.g., by newly providing a lack of claim antecedent for a term in the claim). However, a specific determination regarding whether the claimed invention (including original patent claims) is entitled to a particular priority or benefit date is permitted. See In re NTP, Inc., 654 F.3d 1268, 99 USPQ2d 1500 (Fed. Cir. 2011)(holding that the USPTO is not prohibited from performing a 35 U.S.C. 112 written description priority analysis during reexamination).

In contrast, reexaminations ordered under 35 U.S.C. 257 may involve any issues under 35 U.S.C. 112. Such issues are not limited to matter that has been added or deleted during reexamination. Issues under 35 U.S.C. 112 may also include the original subject matter of the patent under reexamination, including the original specification, claims, and drawings.

A. 35 U.S.C. 112 Issues To Be Considered in Reexaminations Ordered under 35 U.S.C. 304

Compliance of new or amended claims with the enablement and/or description requirements of the first paragraph of 35 U.S.C. 112 should be considered as to the amendatory and new text in the reexamination proceeding. Likewise, the examiner should determine whether the new or amended claims comply with the second paragraph of 35 U.S.C. 112. MPEP § 2163 – § 2173.05(v) provide extensive guidance as to these matters.

B. New Matter

35 U.S.C. 305 provides for examination under 35 U.S.C. 132, which prohibits the introduction of new matter into the disclosure. Thus, the question of new matter should be considered in a reexamination proceeding. See MPEP § 2163.06 as to the relationship of the written description requirement of the first paragraph of 35 U.S.C. 112 and the new matter prohibition under 35 U.S.C. 132. Where the new matter is added to the claims or affects claim limitations, the claims should be rejected under 35 U.S.C. 112, first paragraph, for failing to meet the written description requirement.

C. Amendment of the Specification

Where the specification is amended in a reexamination proceeding, the examiner should make certain that the requirements of 35 U.S.C. 112 are met. An amendment to the specification can redefine the scope of the terms in a claim such that the claim is no longer clear or is not supported by the specification. Thus, an amendment to the specification can result in the failure of the claims to comply with 35 U.S.C. 112, even where the claims are not amended in any respect.

III. CLAIMS IN PROCEEDING MUST NOT ENLARGE SCOPE OF THE CLAIMS OF THE PATENT

Where new or amended claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding should be examined under 35 U.S.C. 305, to determine whether they enlarge the scope of the original claims. 35 U.S.C. 305 states that “no proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding….”

A. Criteria for Enlargement of the Scope of the Claims

A claim presented in a reexamination proceeding “enlarges the scope” of the claims of the patent being reexamined where the claim is broader than each and every claim of the patent. See MPEP § 1412.03 for guidance as to when the presented claim is considered to be a broadening claim as compared with the claims of the patent, i.e., what is broadening and what is not. If a claim is considered to be a broadening claim for purposes of reissue, it is likewise considered to be a broadening claim in reexamination.

B. Amendment of the Specification

Where the specification is amended in a reexamination proceeding, the examiner should make certain that the amendment to the specification does not enlarge the scope of the claims of the patent. An amendment to the specification can enlarge the scope of the claims by redefining the scope of the terms in a claim, even where the claims are not amended in any respect.

C. Rejection of Claims Where There Is Enlargement

Any claim in a reexamination proceeding which enlarges the scope of the claims of the patent should be rejected under 35 U.S.C. 305. Form paragraph 22.11 is to be employed in making the rejection.

IV. OTHER MATTERS

A. Patent Under Reexamination Subject of a Prior Office or Court Decision

Where some of the patent claims in a patent being reexamined have been the subject of a prior Office or court decision, see MPEP § 2242. Where other proceedings involving the patent are copending with the reexamination proceeding, see MPEP § 2282 – § 2286.

Patent claims not subject to reexamination because the claims were held invalid by a court should be identified. See MPEP § 2242. For handling a claim under reexamination which is dependent on a claim not subject to reexamination, see MPEP § 2260.01. All added claims will be examined.

For reexaminations ordered under 35 U.S.C. 304, where grounds are set forth in a prior Office decision or federal court decision, which are not based on patents or printed publications and which clearly raise questions as to the validity of the claims, the examiner’s Office action should clearly state that the claims have not been examined as to those grounds not based on patents or printed publications that were stated in the prior decision. See 37 CFR 1.552(c). See In re Knight, 217 USPQ 294 (Comm’r Pat. 1982).

B. “Live” Claims That Are Reexamined During Reexamination

The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the “live” claims (i.e., existing claims not held invalid by a final decision, after all appeals) for which reexamination has been requested. If the requester was interested in having all of the claims reexamined, requester had the opportunity to include them in its request for reexamination. However, if the requester chose not to do so, those claim(s) for which reexamination was not requested under 35 U.S.C. 302 will generally not be reexamined by the Office. It is further noted that 35 U.S.C. 302 requires that “[t]he request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.” If requester fails to apply the art to certain claims, requester is not statutorily entitled to reexamination of such claims. If a request fails to set forth the pertinency and manner of applying the cited art to any claim for which reexamination is requested as required by 37 CFR 1.510(b), that claim will generally not be reexamined.

The decision to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302 lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case. If the Office chooses to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302, it is permitted to do so. In addition, the Office may always initiate a reexamination on its own initiative of the non-requested claim (35 U.S.C. 303(a)).

Similarly, if prior art patents or printed publications are discovered during reexamination which raise a substantial new question of patentability as to one or more patent claims for which reexamination has not been ordered under 35 U.S.C. 304 (while reexamination has been ordered under 35 U.S.C. 304 for other claims in the patent), then such claims may be added, within the sole discretion of the Office, during the examination phase of the proceeding.

C. Restriction Not Proper in Reexamination

Restriction requirements cannot be made in a reexamination proceeding since no statutory basis exists for restriction in a reexamination proceeding. Note also that the addition of claims to a “separate and distinct” invention to the patent would be considered as being an enlargement of the scope of the patent claims. See Ex parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989). See MPEP § 1412.03.

D. Ancillary Matters

There are matters ancillary to reexamination which are necessary and incident to patentability which will be considered. Amendments may be made to the specification to correct, for example, an inadvertent failure to claim foreign priority or the continuing status of the patent relative to a parent application if such correction is necessary to overcome a reference applied against a claim of the patent.

E. Claiming Foreign Priority and Domestic Benefit in Reexamination

See MPEP § 2258.02 for guidance on claiming foreign priority or domestic benefit in a reexamination proceeding.

F. Correction of Inventorship

Correction of inventorship may also be made during reexamination. See 37 CFR 1.324 and MPEP § 1481 for petition for correction of inventorship in a patent. If a petition filed under 37 CFR 1.324 is granted, a Certificate of Correction indicating the change of inventorship will not be issued, because the reexamination certificate that will ultimately issue will contain the appropriate change-of-inventorship information (i.e., the Certificate of Correction is in effect merged with the reexamination certificate).

G. Affidavits in Reexamination

Affidavits under 37 CFR 1.131(a) and 1.132 may be utilized in a reexamination proceeding. Note, however, that an affidavit under 37 CFR 1.131(a) may not be used to “swear behind” a reference patent if the reference patent is claiming the “same invention” as the patent undergoing reexamination. In such a situation, the patent owner may, if appropriate, seek to raise this issue via an affidavit under 37 CFR 1.131(c) (see MPEP § 718) or in an interference or derivation proceeding via an appropriate reissue application if such a reissue application may be filed (see MPEP § 1449.02).

H. Issues Not Considered in Reexamination Ordered under 35 U.S.C. 304

If questions other than those indicated above (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under pre-AIA 35 U.S.C. 102(c) for a patent that was examined under the first-to-invent prior art regime, etc.) are raised by the third party requester or the patent owner during a reexamination proceeding, the existence of such questions will be noted by the examiner in an Office action. Such questions could arise in a reexamination requester’s 37 CFR 1.510 request or in a 37 CFR 1.535 reply by the requester. Note form paragraph 22.03.

If questions of patentability based on public use or on sale, conduct issues, abandonment under pre-AIA 35 U.S.C. 102(c) for reexamination proceedings under 35 U.S.C. 302 examined under the first-to-invent prior art regime, etc. are independently discovered by the examiner during a reexamination proceeding but were not raised by the third party requester or the patent owner, the existence of such questions will not be noted by the examiner in an Office action, because 37 CFR 1.552(c) is only directed to such questions “raised by the patent owner or the third party requester.”

I. Request for Reexamination under 35 U.S.C. 302 Filed on Patent After It Has Been Reissued

Where a request for reexamination under 35 U.S.C. 302 is filed on a patent after it has been reissued, reexamination will be denied because the patent on which the request for reexamination is based has been surrendered under 35 U.S.C. 252. Should reexamination of the reissued patent be desired, a new request for reexamination including, and based on, the specification and claims of the reissue patent must be filed.

Any amendment submitted by the patent owner to accompany the initial reexamination request under 35 U.S.C. 302, or filed after reexamination has been ordered under 35 U.S.C. 304 (or, for that matter, under 35 U.S.C. 257), should treat the changes made by the granted reissue patent as the text of the patent, and all bracketing and underlining made with respect to the patent as changed by the reissue.

Where the reissue patent issues after the filing of a request for reexamination, see MPEP § 2285.

J. No Preissuance Submissions

Because a reexamination proceeding is a post-issuance proceeding, a preissuance submission under 35 U.S.C. 122(e) is not permitted to be filed in a reexamination proceeding; 35 U.S.C. 122(e) is limited to preissuance submissions by third parties in patent applications. A preissuance submission filed in a reexamination proceeding is not to be entered, and will be expunged if it is inadvertently entered.