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2628 - 2600 Optional Inter Partes Reexamination
2628 Informal Request for Inter Partes Reexamination [Added R-2]
37 CFR 1.915 Content of request for inter partes reexamination.
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(b) A request for inter partes reexamination must include the following parts:
(1) An identification of the patent by patent number and every claim for which reexamination is requested.
(2) A citation of the patents and printed publications which are presented to provide a substantial new question of patentability.
(3) A statement pointing out each substantial new question of patentability based on the cited patents and printed publications, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested.
(4) A copy of every patent or printed publication relied upon or referred to in paragraphs (b)(1) through (3) of this section, accompanied by an English language translation of all the necessary and pertinent parts of any non-English language document.
(5) A copy of the entire patent including the front face, drawings, and specification/claims (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.
(6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address 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 of the request must be supplied to the Office.
(7) A certification by the third party requester that the estoppel provisions of § 1.907 do not prohibit the inter partes reexamination.
(8) A statement identifying the real party in interest to the extent necessary for a subsequent person filing an inter partes reexamination request to determine whether that person is a privy.
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(d) If the inter partes request does not meet all the requirements of subsection 1.915(b), the person identified as requesting inter partes reexamination may be so notified and given an opportunity to complete the formal requirements of the request within a specified time. Failure to comply with the notice may result in the inter partes reexamination proceeding being vacated.
All requests for inter partes reexamination which are accompanied with the entire fee under 37 CFR 1.20(c)(2) will be assigned a filing date. If the fee under 37 CFR 1.20(c)(2) has been paid, but the request for inter partes reexamination does not contain all the elements required by 37 CFR 1.915(b), the request is considered to be informal. The reexamination preprocessing staff of the Central Reexamination Unit will attempt to notify the requester of any informality in the request in order to give the requester time to respond before a decision is made on the request. If the requester does not timely respond and correct the informality, the decision on the request will be made on the information presented. The decision on the request will either:
(A) Vacate the reexamination proceeding based upon the informality of the request; or
(B) Decide the request as to whether the information which is presented raises "a substantial new question of patentability." If yes, the request for reexamination will be granted, if not the request will be denied.
The choice as to which of the above options to exercise will be made at the Office's sole discretion. In making the decision, the Office will take into account the nature of the informality, and how it affects or impacts the reexamination proceeding.
In the event the certification required by 37 CFR 1.915(b)(7) has not been included with the request for reexamination, and is not later provided even after request by the Office for same; the Office may (at its option) construe the filing of the reexamination request as a constructive certification under 37 CFR 1.915(b)(7), absent evidence to the contrary. If so, the requester and patent owner shall be so-notified in the decision on the request.
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