[Rule 1.510(b)] sets forth the mandatory elements of an ex parte reexamination request, and [Rule 1.915(b)] sets forth the mandatory elements of an inter partes reexamination.  Both ex parte and inter partes reexamination requests require (1) a statement pointing out each SNQ and (2) a detailed explanation of the pertinence and manner of applying cited patents and printed publications to every claim for which reexamination is requested.  The SNQ must be based on prior patents and/or printed publications [37 C.F.R. §§ 1.510(b)(1), 1.915(b)(3)].  Other patentability issues, such as prior public use or insufficiency of the disclosure, will not be considered for instituting a reexamination.

The PTO will only reexamine those claims for which a SNQ is alleged and found.  The PTO will consider an undated document if it is accompanied by reliable evidence, such as an affidavit or deposition transcripts, supporting an asserted publication date.  Where a reference originated with the patent owner, the CRU might consider issuing a request to the patent owner for additional information under 37 C.F.R. § 1.105.  For reexaminations ordered on or after November 2, 2002, a finding of an SNQ, and claim rejections, can be based solely on previously cited/considered “old” prior art, or in combination with other prior art [MPEP §§ 2242(II)(A), 2258.01(A)].

The request must also include an identification of every claim for which reexamination is requested, and a detailed explanation of the pertinence and manner of applying each of the cited prior art to every claim for which reexamination is requested [37 C.F.R. §§ 1.510(b)(2), 1.915(b)(3)].  Failure to address each submitted reference in the detailed request will result in a denial of a filing date.

It is not uncommon for reexamination requests, particularly inter partes reexamination requests, to have hundreds of pages.  Some commentators note that such lengthy requests are unduly long and amount to an abuse of the reexamination process.  However, other commentators note that, particularly in inter partes reexamination where the requester is faced with “use it or lose it” estoppel provision for known references, a third party requester is forced into lengthy requests in order to fully develop all SNQs available when the reexamination request is filed.

The filing date of the reexamination request starts the two-year period in which the PTO strives to issue a final office action or otherwise conclude the reexamination proceeding.  The CRU and its staff are known to be hyper-technical in reviewing reexamination requests.  Any procedural defects will cause the reexamination request to be rejected.  We recommend close adherence to the guidelines outlined in the MPEP and to the rules in the C.F.R.  We also recommend obtaining publicly available recent requests (i.e., after the latest amendments to 37 C.F.R. § 1.915 and § 1.510) that have been successful to use as a template.