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[astrojudo]

Can a re-examination requester submit additional references after PO suggest submitting a declaration supporting an argument or wants to amend claims?

From what the rules state, my understanding is that a third party can do so, so can someone else other than the requester, at the request of the requester submit the prior art reference ?? Would this be considered legal ??

see the fact pattern below:

The active participation of the ex parte reexamination requester ends with the reply pursuant to §  1.535, and no further submissions on behalf of the reexamination requester will be acknowledged or considered. Further, no submissions on behalf of any third parties will be acknowledged or considered unless such submissions are:

(1) in accordance with § 1.510 or § 1.535; or

(2) entered in the patent file prior to the date of the order for ex parte reexamination pursuant to §  1.525.

(h) Submissions by third parties, filed after the date of the order for ex parte reexamination pursuant to § 1.525, must meet the requirements of and will be treated in accordance with §  1.501(a).

Further,

§  1.501(a). states

(a) At any time during the period of enforceability of a patent, any person may cite, to the Office in writing, prior art consisting of patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability of any claim of the patent. If the citation is made by the patent owner, the explanation of pertinency and applicability may include an explanation of how the claims differ from the prior art. Such citations shall be entered in the patent file except as set forth in §§ 1.502 and 1.902.

(b) If the person making the citation wishes his or her identity to be excluded from the patent file and kept confidential, the citation papers must be submitted without any identification of the person making the submission.

(c) Citation of patents or printed publications by the public in patent files should either: (1) Reflect that a copy of the same has been mailed to the patent owner at the address as provided for in § 1.33(c); or in the event service is not possible (2) Be filed with the Office in duplicate.


Thanks.

[lazyexaminer]

If I understand you right, the requester wants to send new art in, in response to the PO's amendment or argument or whatever.

Well, it is called ex parte reexam for a reason. It's not going to work.

Like you pointed out, if the requester actually tries to submit something it won't be considered. At best, it will be "treated in accordance with 1.501(a)."

What you didn't focus on in your questions was that 1.501(a) says such citations will be entered in the patent file except as set forth in 1.502.

1.502 says:
Citations by the patent owner under § 1.555 and by an ex parte reexamination requester under either § 1.510 or § 1.535 will be entered in the reexamination file during a reexamination proceeding. The entry in the patent file of citations submitted after the date of an order to reexamine pursuant to § 1.525 by persons other than the patent owner, or an ex parte reexamination requester under either § 1.510 or § 1.535, will be delayed until the reexamination proceeding has been concluded by the issuance and publication of a reexamination certificate. See § 1.902 for processing of prior art citations in patent and reexamination files during an inter partes reexamination proceeding filed under § 1.913.

That means--after reexam is ordered, if it is not a new request (510) or a reply to a patent owner statement (535) it is going to be delayed until the reexam is done. Sorry, you aren't getting this in front of the examiner in this way.