2215    Fee for Requesting Ex Parte Reexamination [R-11.2013]

37 C.F.R. 1.510   Request for ex parte reexamination.

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  • (c) If the request does not include the fee for requesting ex parte reexamination required by paragraph (a) of this section and meet all the requirements by paragraph (b) of this section, then the person identified as requesting reexamination will be so notified and will generally be given an opportunity to complete the request within a specified time. Failure to comply with the notice will result in the ex parte reexamination request not being granted a filing date, and will result in placement of the request in the patent file as a citation if it complies with the requirements of § 1.501.
  • (d) The filing date of the request for ex parte reexamination is the date on which the request satisfies all the requirements of this section.

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In order for a request to be accepted, be given a filing date, and be published in the Official Gazette, the request papers must satisfy all the requirements of 37 CFR 1.510(a)  and (b). The entire fee required under 37 CFR 1.20(c)(1)  for filing a request for reexamination must be paid. If the request was filed by the patent owner and includes a proposed amendment in accordance with 37 CFR 1.530, excess claims fees under 37 CFR 1.20(c)(3)  and (c)(4)  may also apply; see MPEP § 2250.03.

Pursuant to 37 CFR 1.20(c)(1), there are different ex parte reexamination filing fees for a large entity, a small entity and a micro entity. In order for a requester to pay small entity or micro entity fees, requester must affirmatively state that it is eligible for small entity or micro entity status (respectively). For example, requester can affirmatively assert small entity status by checking the appropriate box in line 3 on the transmittal form (PTO/SB/57). With respect to a micro entity status, it is to be noted that a third party requester cannot establish micro entity status, since a third party requester is not provided for in 37 CFR 1.29. Only a patent owner requester can establish micro entity status. See 37 CFR 1.27  and MPEP §§ 509.02 and 509.03 for more information about establishing small entity status. See 37 CFR 1.29  and MPEP § 509.04 et seq. for more information about establishing micro entity status.

If the request for ex parte reexamination is subsequently denied (see MPEP § 2247 and § 2248), or vacated (see MPEP § 2227 and § 2246, subsection I), a refund in accordance with 37 CFR 1.26(c)  will be made to the identified requester. If the request for ex parte reexamination is found to be incomplete and the defect is not cured (see MPEP § 2227), a refund in accordance with 37 CFR 1.26(a)  will be made to the identified requester.

If the entire fee for ex parte reexamination is not paid or all the requirements of 37 CFR 1.510(a)  and (b)  are not satisfied, the request will be considered to be incomplete. See 37 CFR 1.510(c)  and (d)  and MPEP § 2227.

Where the entire filing fee is not paid after the requester has been given an opportunity to do so, no determination on the request will be made. The request papers will ordinarily be placed in the patent file as a prior art citation, if they comply with the requirements for a citation of prior art under 37 CFR 1.501. See MPEP § 2206 for handling of prior art citations.