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2266.03 Service of Papers [R-2] - 2200 Citation of Prior Art and Ex Parte Reexamination of Patents
2266.03 Service of Papers [R-2]
37 CFR 1.510 Request for ex parte reexamination.
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(b) Any request for reexamination must include the following parts:
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(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
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37 CFR 1.550 Conduct of ex parte reexamination proceedings.
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(f) The reexamination requester will be sent copies of Office actions issued during the ex parte reexamination proceeding. After filing of a request for ex parte reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party in the reexamination proceeding in the manner provided by § 1.248. The document must reflect service or the document may be refused consideration by the Office.
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Any paper filed >with the Office<, i.e., any submission made, in a third party requested reexamination by either the patent owner or the third party requester, must be served on every other party in the reexamination proceeding.
As proof of service, the party submitting the paper to the Office must attach a certificate of service to the paper. It is required that the name and address of the party served, and the method of service be set forth in the certificate of service. Further, a copy of the certificate of service must be attached with the copy of the paper that is served on the other party.
Papers filed in which no proof of service is included (where proof of service is required) may be denied consideration. Where no proof of service is included, the reexamination clerk should immediately contact the party making the submission by telephone to see whether the indication of proof of service was inadvertently omitted from the submission but there was actual service.
If service was in fact made, the party making the submission should be advised to submit a supplemental paper indicating the manner and date of service. The reexamination clerk should enter the submission for consideration, and annotate the submission with:
"Service confirmed by [name of person] on [date]"
If no service was made, or the party making the submission cannot be contacted, the submission is placed in the reexamination file and normally is not considered. The reexamination clerk should enter the submission on the contents of the file wrapper and place an "(N/E)" next to it. The "(N/E)" can be crossed through if the appropriate service is later made. The submission itself shall be annotated with "no service," which also can be crossed through if the appropriate service is later made.
If the party making the submission cannot be contacted, a Notice of Defective Paper (PTOL-475), giving 1 month to complete the paper, with a supplemental paper indicating the manner and date of service, will be mailed to the party.
If it is known that service of a submission was not made, notice of the requirement for service of copy is given (to the party that made the submission), and a 1-month period is set. Form paragraph 22.15 may be used to give notice.
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¶ 22.15 Lack of Service - 37 CFR 1.550(f)
The submission filed on [1] is defective because it appears that the submission was not served on the [2]. After the filing of a request for reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party (or parties where two or more third party requester proceedings are merged) in the reexamination proceeding in the manner provided in 37 CFR 1.248. See 37 CFR 1.550(f).
It is required that service of the submission be made, and a certificate of service be provided to the Office within a shortened statutory period of ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If service of the submission is not timely made, the submission may be denied consideration.
Examiner Note
1. This paragraph may be used where a submission to the Office was not served as required in a third party requester reexamination proceeding.
2. In bracket 2, insert --patent owner-- or --third party requester--, whichever is appropriate.
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The cover sheet to be used for mailing the notice will be form PTOL-473.
The failure of a party to serve the submission in response to the notice will have the following consequences:
(A) For a patent owner statement or a third party reply, the submission may be refused consideration by the Office. Where consideration is refused, the submission will not be addressed in the reexamination proceeding other than to inform parties of the lack of consideration thereof;
(B) For a patent owner response to an Office action, the response may be refused consideration by the Office. Where consideration of a response is refused, the proceeding will be terminated in accordance with 37 CFR 1.550(d), unless the patent owner has otherwise completely responded to the Office action.
See MPEP § 2220 as to the initial third party request.
See MPEP § 2249 as to the patent owner statement.
See MPEP § 2251 as to third party reply.
See MPEP § 2266 as to patent owner responses to an Office action.
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