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Requesting Reexamination: Requirements and Best Practices

By Matthew C. Phillips and Kevin B. Laurence of Stoel Rives LLP

Matt Phillips and Kevin Laurence are partners at Stoel Rives LLP.  They teach the multi-day course “Patent Reexamination and Reissue Practice” for Patent Resources Group.  Matt has degrees in electrical engineering from the University of Utah and a law degree from Georgetown.  Kevin has a chemistry degree and a law degree from Brigham Young University.  They generally get along except  when their respective alma maters compete on the football field.

A request for reexamination is the initial document in any reexamination proceeding. In an ex parte reexamination requested by a third party, the request very likely will be the only document that the third-party requester submits. As such, the request is a critical document for any third-party requester and should be prepared with care. This article discusses the filing requirements for a reexamination request, best practices for preparing a request, and guidance recently published by the PTO regarding filing compliant requests.1


Rule 510(b) sets forth various parts of a reexamination request that a requester must include. If a required part is missing, the request will not be granted a filing date. The required parts of an ex parte request are (1) a copy of the entire patent for which reexamination is requested, as well as any disclaimer, certificate of correction, and prior reexamination certificate; (2) a copy of every printed publication relied upon in the request (except U.S. patents and published U.S. patent applications); (3) an identification of each claim for which reexamination is requested; (4) a statement that clearly points out each substantial new question of patentability (SNQP) in view of the cited prior art printed publications; (5) an explanation of the pertinence and manner of applyi...

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