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2249 Patent Owner's Statement - 2200 Citation of Prior Art and Ex Parte Reexamination of Patents
2249 Patent Owner's Statement
37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
(a) Except as provided in § 1.510(e), no statement or other response by the patent owner in an ex parte reexamination proceeding shall be filed prior to the determinations made in accordance with § 1.515 or § 1.520. If a premature statement or other response is filed by the patent owner, it will not be acknowledged or considered in making the determination.
(b) The order for ex parte reexamination will set a period of not less than two months from the date of the order within which the patent owner may file a statement on the new question of patentability, including any proposed amendments the patent owner wishes to make.
(c) Any statement filed by the patent owner shall clearly point out why the subject matter as claimed is not anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any reasonable combinations. Where the reexamination request was filed by a third party requester, any statement filed by the patent owner must be served upon the ex parte reexamination requester in accordance with § 1.248.
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The patent owner has no right to file a statement subsequent to the filing of the request but prior to the order for reexamination. Any such premature statement will not be acknowledged nor considered by the Office when making the decision on the request. See MPEP § 2225 and Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 1985).
If reexamination is ordered, the decision will set a period of not less than 2 months within which period the patent owner may file a statement and any narrowing amendments to the patent claims. If necessary, an extension of time beyond the 2 months may be requested under 37 CFR 1.550(c) by the patent owner. Such request is decided by the TC Director.
Any statement filed must clearly point out why the patent claims are believed to be patentable, considering the cited prior art patents or printed publications alone or in any reasonable combination.
A copy of the statement must be served by the patent owner on the requester, unless the request was filed by the patent owner.
In the event the decision is made to reexamine, 35 U.S.C. 304 provides that the owner will have a period, not less than 2 months, to file a statement directed to the issue of patentability. Since the 2-month period is the minimum provided by statute, first extensions may be granted up to one (1) month based upon good and sufficient reasons. Further extensions should be granted only in the most extraordinary situations; e.g., death or incapacitation of the representative or owner.
Lack of proof of service especially poses a problem where the patent owner fails to indicate that he or she has served the requester in the statement subsequent to the order for reexamination ( 37 CFR 1.530(c)). In this situation, the Reexamination Clerk should immediately contact the patent owner by telephone to see whether the indication of proof of service was inadvertently omitted from the patent owner's response. If it was, the patent owner should be advised to submit a supplemental paper indicating the manner and date of service on requester. If the patent owner cannot be contacted, the Reexamination Clerk will then contact the requester to verify that service has in fact been made by the patent owner and indicate that acknowledgment of proof of service should accompany requester's reply ( 37 CFR 1.248(b)(1)). If the 2-month period for response under 37 CFR 1.530 has expired and requester has not been served, the patent owner's statement is considered inappropriate ( 37 CFR 1.248) and may be denied consideration; see MPEP § 2267.
See also MPEP § 2266.03 for further discussion as to the patent owner providing service on the third party requester.
It should be noted that the period for response by requester for a reply under 37 CFR 1.535 is 2 months from the owner's service date and not 2 months from the date the patent owner's statement was received in the Office.
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