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2671.03 Patentability Review Conferences [Added R-2] - 2600 Optional Inter Partes Reexamination
2671.03 Patentability Review Conferences [Added R-2]
A "patentability review conference" will be convened at two stages of the examination in an inter partes reexamination proceeding:
(A) A patentability review conference must be convened just prior to issuing an action closing prosecution (ACP); and
(B) A patentability review conference must be convened just prior to issuing a right of appeal notice which includes a final rejection (RAN).
In the patentability review conference, the examiner's preliminary decision to reject and/or allow the claims in the reexamination proceeding will be reviewed, prior to the issuance of the Office action (ACP or RAN).
I. MAKE-UP OF THE PATENTABILITY REVIEW CONFERENCE
The patentability review conference will consist of three members, one of whom may be the Supervisory Patent Examiner (SPE). The first member will be the examiner in charge of the proceeding. The SPE will select the other two members, who will be examiner-conferees. The examiner-conferees will be primary examiners, or examiners who are knowledgeable in the technology of the invention claimed in the patent being reexamined, and/or who are experienced in reexamination practice. The majority of those present at the conference will be examiners who were not involved in the examination or issuance of the patent. An "original" examiner (see MPEP § 2636) should be chosen as a conferee only if that examiner is the most knowledgeable in the art, or there is some other specific and justifiable reason to choose an original examiner as a participant in the conference.
The patentability review conference will be similar to the appeal conference carried out prior to the issuance of an examiner's answer following the filing of a Notice of Appeal and Brief. See MPEP § 1208. A patentability review conference must be held in each instance where an ACP is about to be issued in an inter partes reexamination proceeding, and in each instance where a RAN is about to be issued in the proceeding. When the patentability review conference results in the issuance of the ACP or the RAN, the two conferees will place their initials, followed by the word "conferee," below the signature of the examiner. The signature of the examiner and initials of the conferees on the resulting Office action will reflect that the patentability review conference has been conducted.
II. PATENTABILITY REVIEW CONFERENCE PROCESS
The examiner must inform his/her SPE of his/her intent to issue an ACP, or RAN. The SPE will then convene a patentability review conference and the conference members will review the patentability of the claim(s). If the conference confirms the examiner's preliminary decision to reject and/or allow the claims, the Office action (ACP or RAN) shall be issued and signed by the examiner, with the two other conferees initialing the action (as "conferee") to indicate their presence in the conference. Both conferees will initial, even though one of them may have dissented from the 3-party conference decision as to the patentability of claims. If the conference does not confirm the examiner's preliminary decision, the proposed ACP or RAN will not be issued by the examiner; but rather, the examiner will issue the appropriate Office action reflecting the decision of the conference.
Where the examiner in charge of the proceeding is not in agreement with the conference decision, the SPE will generally assign the proceeding to another examiner, which would preferably be one of the other two conference members.
Patentability review conferees in inter partes reexamination proceedings will use 1121-08 to report time spent with respect to the conference. The examiner in charge of the case will use the standard 1121-02 activity code to report time. A SPE attending the conference should use 1121-03. See MPEP § 2638.
III. WHAT THE CONFERENCES SHOULD ACCOMPLISH
Each conference will provide a forum to consider all issues of patentability as well as procedural issues having an impact on patentability. Review of the patentability of the claims by more than one primary examiner should diminish any perception that the patent owner can disproportionately influence the examiner in charge of the proceeding. The conferences will also provide greater assurance that all matters will be addressed appropriately. All issues in the proceeding will be viewed from the perspectives of three examiners. What the examiner in charge of the proceeding might have missed, one of the other two conference members would likely detect. The conference will provide for a comprehensive discussion of, and finding for, each issue.
IV. CONSEQUENCES OF FAILURE TO HOLD CONFERENCE
Should the examiner issue an ACP or RAN without holding a patentability review conference, the patent owner or the third party requester who wishes to object must promptly file a paper alerting the Office of this fact. (The failure to hold a patentability review conference would be noted by the parties where there are no conferees' initials at the end of the ACP or RAN Office action.) Any challenge of the failure to hold a patentability review conference must be made within two months of the Office action issued, or the challenge will not be considered. In such cases, convening a patentability review conference to reconsider the examiner's decision will be addressed on a case-by-case basis. In no event will the failure to hold a patentability review conference, by itself, be grounds for vacating any Office decision(s) or action(s) and "restarting" the reexamination proceeding.
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