Link to the USPTO homepage for information including methods for searching by control number, links to historical and operational statistics, documents defining terms and milestones highlighted by the Central Reexamination Unit (CRU).
Upon completion of reexamination, the Commissioner will issue and publish a certificate canceling any claim not found patentable, confirming any claims found patentable, and incorporating any amended or new claim determined to be patentable.
The USPTO publishes the Official Gazette weekly, including notice of requests for reexamination and issuance of reexamination certificates. To access this information, click on the date of the Official Gazette of interest and check Notices or Browse Granted Patents.
Comprehensive index of forms available to help meet certain requirements for the proceeding, including but not limited to the Request for Ex Parte Reexamination Transmittal (PTO SB-57) and the Request for Inter Partes Reexamination Transmittal (PTO SB-58).
USPTO provides a glossary of terms defined for their purposes, including definitions related to patent reexamination administrative and substantive procedure. The glossary links to related webpages and subdomains of the USPTO website.
Filing Compliant Reexamination Requests
This document is intended to assist reexamination requesters in filing requests for reexamination that are compliant with 37 CFR 1.510 and 1.915, so that the requests will be assigned a filing date and forwarded to the examiner. Compliance with these rules will also tend to highlight information relevant to the examiner’s decision on whether to grant the reexamination.
Rules, Guidelines, and Statements
The Chief Judge of the Board of Patent Appeals and Interferences (BPAI) or his designee (collectively “Chief Judge”), will have the sole responsibility for determining whether appeal briefs filed in inter partes reexamination proceedings (i.e., appellant’s briefs, respondent’s briefs, and rebuttal briefs) comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The examiner will no longer review appeal briefs for compliance with the applicable regulations. Read More Here.
The USPTO recognizes the need to reduce pendency and improve efficiency and is thus considering a number of short and long-range initiatives that can be implemented in phases. In this notice, a pilot program in which patent owners may waive the right to file a patent owner’s statement upon a request made by the USPTO. This will enable USPTO in suitable cases to issue the first Office action on the merits together with or soon after the reexamination order, and thereby reduce the pendency of the proceeding by about three to five months. Read More Here.
June 25, 2010 - The USPTO published in the Federal Register a notice “clarifying the procedure for seeking review of a determination that a substantial new question (SNQ) has been raised in an ex parte reexamination proceeding.” The notice clarifies that Director Kappos has delegated to the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) the authority to review issues relating to the grant of the SNQ. The Chief Judge can further delegate the SNQ review to a panel of Administrative Patent Judges who are deciding the appeal in the ex parte reexamination proceeding. Read More Here.
Streamlined Procedure for Appeal Brief Review in Ex Parte Reexamination Proceedings
May 25, 201 – The USPTO published in the Federal Register a notice of “Streamlined Procedure for Appeal Brief Review in Ex Parte Reexamination Proceedings” for the review of appeal briefs in ex parte reexamination appeals to increase the efficiency of the appeal process and reduce pendency of appeals. According to the Federal Register, the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) or his designee (collectively “Chief Judge”), will have the sole responsibility for determining whether appeal briefs filed in ex parte reexamination proceeding appeals comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The examiner will no longer review appeal briefs for compliance with the applicable regulations. The USPTO expects to achieve a reduction in ex parte reexamination proceeding appeal pendency as measured from the filing of a notice of appeal to docketing of the appeal by eliminating duplicate reviews by the examiner and the BPAI. Read More Here.
Requirements for Ex Parte and Inter Partes Reexamination
April 9, 2007 – USPTO announces revisions to the rules of practice relating to ex parte and inter partes reexamination:
- Designating the correspondence address for the patent as the correct address for all communications for patent owners;
- Providing for the use of a single “mail stop” address for the filing of substantially all reexamination papers;
- Prohibiting supplemental patent owner responses to an Office action in an inter partes reexamination proceeding without showing of sufficient cause;
- Miscellaneous clarifying changes as to terminology and applicability of the rules;
The PTO did not implement its proposal to newly provide for a patent owner reply to a request for reexamination, prior to the Office’s decision on the request.
Office Policy To Exercise Discretion in Reexamining Fewer Than All the Patent Claims
October 31, 2006 – Clarification regarding general policies on addressing requests for reexamination of fewer than all the claims in a patent, and on conducting examination following requests that fail to raise a substantial new question of patentability (SNQ) for some of the claims requested.
Revisions and Technical Corrections Affecting Requirements for Reexamination – 2006
April 25, 2006 – USPTO proposes changes to the rules of practice relating to ex parte and inter partes reexamination:
- Providing for a patent owner reply to a request for an ex parte or an inter partes reexamination prior to the examiner’s decision on the request;
- Prohibit supplemental patent owner responses to an Office action in an inter partes reexamination without a showing of sufficient cause;
- Designate the correspondence address for the patent as the correct address for all communications for patent owners;
- Providing for the use of a single “mail stop” address for the filing of substantially all reexamination papers; and
- Miscellaneous clarifying changes as to terminology and applicability of the rules.
Clarification of Filing Date Requirements – 2006
March 21, 2006 – The USPTO specifically revises rules of practice relating to the filing date requirement such that a request for ex parte reexamination or for inter partes reexamination must meet all the applicable statutory requirements before a filing date is accorded.
USPTO Press Release Announcing Central Reexamination Unit
July 29, 2005 – Press release of USPTO announcing implementation of new processes for handling reexamination proceedings to improve timeliness and quality. States that patent reexamination will be “a valuable, low-cost alternative to litigation for determining the patentability of the claims.”
Oral Testimony of Jon Dudas to the Senate Including Comments on Patent Reexamination
April 21, 2005 – Testimony provided by Jon Dudas, Director of the United States Patent and Trademark Office to the Subcommittee on Intellectual Property Committee on the Judiciary of the United States Senate, entitled “The Patent System of Today and Tomorrow.”
Report to Congress on Inter Partes Reexamination
June 24, 2004 – Addressed (1) the progress of the inter partes reexamination procedure since they were established on Nov. 29, 1999, and (2) the results of the USPTO’s internal evaluations and round table meeting with the USPTO’s customers to identify any inequities and challenges.
Public Comments Received Regarding Inter Partes Reexamination Proceedings
February 17, 2004 – Organizations and persons listed submitted comments in response to the “Request for Comments and Notice Regarding Round Table Meeting Regarding Equities of Inter Partes Reexamination Proceedings” in the Federal Register at 68 Fed. Reg. 75217 (December 30, 2003).
USPTO Round Table on Equity of Inter Partes Reexamination Proceedings
February 17, 2004 – Comments received by the USPTO to evaluate the equities of inter partes reexamination proceedings in preparation for a USPTO Round Table and report to Congress on the topic. Panel includes Michele A. Cimbala submitting comments (PDF).
Reexamination Guidelines Related to Previously Cited/Considered Prior Art
June 3, 2003 – A USPTO memorandum to the Patent Examining Corps regarding revised guidelines on usage of previously cited and or considered prior art as references in reexamination following the federal circuit’s decision in In re Portola Packaging, Inc.
Rules to Implement Optional Inter Partes Reexamination Proceedings
November 21, 2000 – The American Inventors Protection Act of 1999 includes an amendment to the Patent Act authorizing the extension of reexamination proceedings via an optional inter partes (multiparty) reexamination procedure as a means for improving the quality of United States patents.
Establishment of Patentability Review Conferences in Ex Parte Reexamination Proceedings
August 4, 2000 – Announcement that a “patentability review conference” will be convened in each ex parte reexamination proceeding (1) just prior to issuing a final rejection, and (2) just prior to issuing a Notice of Intent to Issue Reexamination Certificate (NIRC).
Guidelines for Reexamination of Cases in View of In re Portola Packaging, Inc.
March 31, 1999 – The USPTO publishes final version of guidelines to be used by Office personnel in their review of requests for reexaminations and reexaminations for compliance with the decision in In re Portola Packaging, Inc.
Proposed Guidelines for Reexamination of Cases in View of In re Portola Packaging, Inc.
June 9, 1998 – The USPTO requests comments from the public on interim guidelines that will be used by Office personnel in their review of requests for reexaminations and ongoing reexaminations for compliance with the decision inIn re Portola Packaging, Inc.