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Reexamination and USPTO Best Practices

By: Jared T. Olson

Earlier today, USPTO Director David Kappos posted a blog entry on improving the reexamination process. The post briefly discussed the importance of reexamination and focused mainly on avoiding unnecessary delays resulting from reexamination requests that only assert general allegations instead of clearly identifying specific issues to be considered. The post highlighted the USPTO’s best practices document that is intended to help minimize defective requests and facilitate the initial processing of reexamination requests.

For instance, the best practices document states that while it is acceptable for requests to group together proposed rejections for multiple claims based on the same grounds, they should not lump together multiple proposed rejections based on different grounds. For instance, it would be acceptable to assert that claims 1-4, 6, 8, and 12 should be rejected under 35 U.S.C. 102(b) as anticipated by Smith. However, it would not be acceptable to propose a 102 rejection and 103 rejection, or multiple 103 rejections, in a single assertion. The document also states that requests should not suggest other proposed rejections or include disclaimer-type language in reexamination requests.

The best practices document also states that requests should provide a detailed explanation for each proposed rejection or application of art. This includes a clear statement of how the asserted references apply, or fail to apply, to every claim limitation for each claim. For obviousness rejections, the statement should include what claim limitations the primary or base reference teaches and what limitations it fails to teach, how the prior art teaches the limitations not taught by the primary reference, and why it would be obvious to modify the primary reference or otherwise combine the primary reference with the prior art to arrive at the claimed invention.

These and other tips in the USPTO’s best practices document provide specific insight on how to avoid unnecessary delays in the reexamination process by ensuring that reexamination requests are sufficiently clear. The concise, outline-like nature of the document makes it a fantastic reference for practitioners of any level of experience. You can find the latest version of the USPTO’s best practices document on the USPTO website or by clicking Here.