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...