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2648 Petition From Denial of Request [Added R-2] - 2600 Optional Inter Partes Reexamination
2648 Petition From Denial of Request [Added R-2]
37 CFR 1.927 Petition to review refusal to order inter partes reexamination.
The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner's determination refusing to order inter partes reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.
PROCESSING OF PETITION UNDER 37 CFR 1.927
Once a request for inter partes reexamination has been denied, the reexamination file will be stored in the Central Reexamination Unit (CRU) to await any petition seeking review of the examiner's determination refusing reexamination. If no petition is filed within one (1) month, the CRU will process the reexamination to make a partial refund of the filing fee for requesting reexamination to the third party requester (35 U.S.C. 312(c) and 37 CFR 1.26(c)); the reexamination file is then forwarded to the files repository (Location 9200) for storage with the patent file. If a petition is timely filed, the petition (together with the reexamination file) is forwarded to the office of the Technology Center (TC) Director for decision. The TC Director will then review the examiner's determination that a substantial new question of patentability has not been raised. The TC Director's review will be de novo. Each decision by the TC Director will conclude with the following paragraph:
This decision is final and nonappealable. 37 CFR 1.927. No further communication on this matter will be acknowledged or considered.
If the petition is granted, the decision of the TC Director should include a sentence stating that an Office action will be mailed in due course.
The TC Director will sign the decision granting the petition, and then forward the reexamination file, together with the decision, to the CRU for mailing of the decision, update scanning and PALM processing. The reexamination file will then be returned to the supervisory patent examiner (SPE) of the art unit that will handle the reexamination. The SPE will ordinarily reassign the reexamination to another examiner pursuant to 37 CFR 1.931(b), notify the CRU of the assignment so that the new assignment can be entered in the PALM records, and forward the file to the new examiner to prepare a first Office action.
Reassignment to another examiner will be the general rule. Only in exceptional circumstances where no other examiner is available and capable to give a proper examination, will the case remain with the examiner who denied the request. If the denial of the request was signed by the SPE, the reexamination ordered by the TC Director will be assigned to a primary examiner.
Under normal circumstances, the reexamination proceeding will not be reassigned to a SPE, primary examiner, or assistant examiner who was involved in any part of the examination of the patent for which reexamination is requested, or was so-involved in the examination of the parent of the patent. The TC Director can make an exception to this practice and reassign the reexamination proceeding to an examiner involved with the original examination (of the patent) only where unusual circumstances are found to exist. For example, where there are no examiners other than an original examiner of the patent and the examiner who issued the denial with adequate knowledge of the relevant technology, the TC Director may permit reassignment of the reexamination proceeding to an examiner that originally examined the patent.
It should be noted that the requester may seek review of a denial of a request for reexamination only by petitioning the Director of the Office under 37 CFR 1.927 and 1.181 within one (1) month of the mailing date of the decision denying the request for reexamination. Additionally, any request for an extension of the time period to file such a petition from the denial of a request for reexamination can only be entertained by filing a petition under 37 CFR 1.183 with the appropriate fee to waive the time provisions of 37 CFR 1.927.
After the time for petition has expired without a petition having been filed, or a petition has been filed and the decision thereon affirms the denial of the request, a partial refund of the filing fee for the request for reexamination will be made to the third party requester. 35 U.S.C. 312(c) and 37 CFR 1.26(c). A decision on a petition under 37 CFR 1.927 and 1.181 is final and is not appealable.
Except for the limited ultra vires exception described in MPEP § 2646, no petition may be filed requesting review of a decision granting a request for reexamination even if the decision grants the request for reasons other than those advanced by the third party requester or as to claims other than those for which the third party requester sought reexamination. No right to review exists if reexamination is ordered in such a case, because all claims will be reexamined in view of all prior art during the reexamination under 37 CFR 1.937.
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