37 CFR 1.913 — Persons eligible to file, and time for filing, a request for inter partes reexamination
Ninth Edition, Revision 01.2024
- (a) Except as provided for in § 1.907 and in paragraph (b) of this section, any person other than the patent owner or its privies may, at any time during the period of enforceability of a patent which issued from an original application filed in the United States on or after November 29, 1999, file a request for inter partes reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501 .
- (b) Any request for an inter partes reexamination submitted on or after September 16, 2012, will not be accorded a filing date, and any such request will not be granted.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; revised, 76 FR 59055, Sept. 23, 2011, effective Sept. 23, 2011]
Cited authority
Cited by
- 2202 Citation of Prior Art and Written Statements
- 2239 Reexamination Ordered at the Director’s Initiative
- 2268 Petition for Entry of Late Papers for Revival of Reexamination Proceeding
- 2601 Introduction
- 2601.01 Flowcharts
- 2602 Citation of Prior Art
- 2609 Inter Partes Reexamination
- 2610 Request for Inter Partes Reexamination
- 2611 Time for Requesting Inter Partes Reexamination
- 2612 Persons Who May File a Request
- 2613 Representative of Requester
- 2614 Content of Request for Inter Partes Reexamination
- 2615 Fee for Requesting Inter Partes Reexamination
- 2616 Substantial New Question of Patentability/Reasonable Likelihood That Requester Will Prevail
- 2617 Statement in the Request Applying Prior Art
- 2618 Copies of Prior Art (Patents and Printed Publications)
- 2619 Copy of Printed Patent
- 2620 Certificate of Service
- 2622 Address of Patent Owner
- 2623 Withdrawal of Attorney or Agent
- 2624 Correspondence
- 2625 Untimely Paper Filed Prior to First Office Action
- 2626 Initial Processing of Request for Inter Partes Reexamination
- 2627 Incomplete Request for Inter Partes Reexamination
- 2629 Notice of Request for Inter Partes Reexamination in Official Gazette
- 2630 Constructive Notice to Patent Owner
- 2631 Processing of Request Corrections
- 2632 Public Access
- 2632.01 Determining If a Reexamination Request Was Filed for a Patent
- 2634 Fee Processing and Procedure
- 2635 Record Systems
- 2636 Assignment of Reexamination
- 2638 Time Reporting
- 2640 Decision on Request
- 2641 Time for Deciding Request
- 2642 Criteria for Deciding Request
- 2643 Claims Considered in Deciding Request
- 2644 Prior Art on Which the Determination Is Based
- 2646 Decision Ordering Reexamination
- 2647 Decision Denying Reexamination
- 2647.01 Examples of Decisions on Requests
- 2647.02 Processing of Decision
- 2648 Petition From Denial of Request
- 2654 Conduct of Inter Partes Reexamination Proceedings
- 2655 Who Reexamines
- 2656 Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination
- 2657 Listing of Prior Art
- 2658 Scope of Inter Partes Reexamination
- 2659 Res Judicata and Collateral Estoppel in Reexamination Proceedings
- 2660 First Office Action
- 2660.02 The Title
- 2660.03 Dependent Claims
- 2661 Special Status for Action
- 2662 Time for Response and Comments
- 2664 Mailing of Office Action
- 2665 Extension of Time for Patent Owner Response
- 2666 Patent Owner Response to Office Action
- 2666.01 Amendment by Patent Owner
- 2666.02 Correction of Patent Drawings
- 2666.03 Correction of Inventorship
- 2666.04 Fees for Adding Claims
- 2666.05 Third Party Comments After Patent Owner Response
- 2666.06 Service of Papers
- 2666.10 Patent Owner Does Not Respond to Office Action
- 2666.20 Third Party Does Not Comment After Patent Owner Response
- 2666.30 Submission Not Fully Responsive to Non-final Office Action
- 2666.40 Patent Owner Completion of Response and Third Party Comments Thereon
- 2666.50 Examiner Issues Notice of Defective Paper in Inter Partes Reexamination
- 2666.60 Response by Patent Owner/Third Party to Notice of Defective Paper
- 2667 Handling of Inappropriate or Untimely Filed Papers
- 2668 Petition for Entry of Late Papers for Revival of Reexamination Proceeding
- 2670 Clerical Handling
- 2671 Examiner Action Following Response/Comments or Expiration of Time for Same
- 2671.01 Examiner Issues Action on Merits That Does Not Close Prosecution
- 2671.02 Examiner Issues Action Closing Prosecution (ACP)
- 2671.03 Panel Review
- 2672 Patent Owner Comments/Amendment After ACP and Third Party Requester Responsive Comments
- 2673 Examiner Consideration of Submissions After ACP and Further Action
- 2673.01 Reopening Prosecution After ACP
- 2673.02 Examiner Issues Right of Appeal Notice (RAN)
- 2674 Appeal in Inter Partes Reexamination
- 2674.01 Cross Appeal After Original Appeal
- 2675 Appellant Brief
- 2675.01 Respondent Brief
- 2675.02 Informalities in One or More of the Briefs
- 2676 Appeal Conference
- 2677 Examiner’s Answer
- 2678 Rebuttal Briefs
- 2679 Office Treatment of Rebuttal Brief
- 2680 Oral Hearing
- 2681 Board Decision
- 2682 Action Following Decision
- 2683 Appeal to Courts
- 2684 Information Material to Patentability in Reexamination Proceeding
- 2685 No Interviews on Merits in Inter Partes Reexamination Proceedings
- 2686 Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon
- 2686.01 Multiple Copending Reexamination Proceedings
- 2686.02 Copending Reexamination and Interference Proceedings
- 2686.03 Copending Reexamination and Reissue Proceedings
- 2686.04 Reexamination and Litigation Proceedings
- 2686.05 Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review
- 2687 Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) and Conclusion of Reexamination Proceeding
- 2687.01 Examiner Consideration of Submissions After NIRC
- 2688 Issuance of Inter Partes Reexamination Certificate
- 2689 Reexamination Review
- 2690 Format of Inter Partes Reexamination Certificate
- 2691 Notice of Inter Partes Reexamination Certificate Issuance in Official Gazette
- 2692 Distribution of Certificate
- 2693 Intervening Rights
- 2694 Concluded Reexamination Proceedings
- 2695 Reexamination of a Reexamination
- 2696 USPTO Forms To Be Used in Inter Partes Reexamination
- 502 Depositing Correspondence
- 502.01 Correspondence Transmitted by Facsimile
- 509.01 Deposit Accounts
- 706.07 Final Rejection
- 711.03(c) Petitions Relating to Abandonment
- 714.12 Amendments and Other Replies After Final Rejection or Action
- 37 CFR 1.6 Receipt of correspondence
- 37 CFR 1.25 Deposit accounts
- 37 CFR 1.113 Final rejection or action
- 37 CFR 1.116 Amendments and affidavits or other evidence after final action and prior to appeal
- 37 CFR 1.137 Revival of abandoned application, or terminated or limited reexamination prosecution
- 37 CFR 1.502 Processing of prior art citations during an ex parte reexamination proceeding
- 37 CFR 1.520 Ex parte reexamination at the initiative of the Director
- 37 CFR 1.902 Processing of prior art citations during an inter partes reexamination proceeding
- 37 CFR 1.989 Merger of concurrent reexamination proceedings