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2686.02 Copending Reexamination and Interference Proceedings [Added R-2] - 2600 Optional Inter Partes Reexamination
2686.02 Copending Reexamination and Interference Proceedings [Added R-2]
37 CFR 1.993 Suspension of concurrent interference and inter partes reexamination proceeding.
If a patent in the process of inter partes reexamination is or becomes involved in an interference, the Director may suspend the inter partes reexamination or the interference. The Director will not consider a request to suspend an interference unless a motion under § 1.635 to suspend the interference has been presented to, and denied by, an administrative patent judge and the request is filed within ten (10) days of a decision by an administrative patent judge denying the motion for suspension or such other time as the administrative patent judge may set.
37 CFR 1.660 Notice of reexamination, reissue, protest, or litigation.
(a) When a request for reexamination of a patent involved in an interference is filed, the patent owner shall notify the Board within 10 days of receiving notice that the request was filed.
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A patent being reexamined in an inter partes reexamination proceeding may be involved in an interference proceeding with at least one application, where the patent and the application are claiming the same patentable invention, and at least one of the application's claims to that invention are patentable to the applicant. See MPEP § 2306.
The general policy of the Office is that a reexamination proceeding will not be delayed, or stayed, because of an interference or the possibility of an interference. The reasons for this policy are (A) the relatively long period of time usually required for interferences, and (B) the requirement of 35 U.S.C. 314(c) that all reexamination proceedings be conducted with "special dispatch" within the Office. The decision of Shaked v. Taniguchi, 21 USPQ2d 1289 (Bd. Pat. App. & Int. 1991) should be noted, where it was pointed out that neither the reexamination nor the interference will ordinarily be stayed where both proceedings are before the Office.
In general, the Office will follow the practice of making the required and necessary decisions in the inter partes reexamination proceeding and, at the same time, going forward with the interference to the extent desirable. Decisions in the interference will take into consideration the status of the reexamination proceeding and what is occurring therein. The decision as to what actions are taken in the interference will, in general, be taken in accordance with normal interference practice.
It must be noted that although a patent being reexamined via a reexamination proceeding may become involved in an interference proceeding, the reexamination proceeding itself can never be involved in an interference proceeding. See 35 U.S.C. 135(a) which states that "[w]henever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared" (emphasis added). The reexamination proceeding is neither an application nor a patent.
I. ATTEMPTING TO PROVOKE AN INTERFERENCE WITH A PATENT INVOLVED IN A REEXAMINATION PROCEEDING
See MPEP § 2284 for a discussion of the situation where an amendment seeking to provoke an interference with a patent involved in a reexamination proceeding is filed in a pending application. The practice and procedure in this area as to inter partes reexamination proceedings parallels that of ex parte reexamination proceedings.
II. MOTION TO SUSPEND INTERFERENCE UNDER 37 CFR 1.635 PENDING THE OUTCOME OF A REEXAMINATION PROCEEDING
A motion under 37 CFR 1.635 to suspend an interference pending the outcome of a reexamination proceeding may be made at any time during the interference by any party thereto. The motion must be presented to the Administrative Patent Judge (APJ) who will decide the motion based on the particular fact situation. However, no consideration will be given such a motion unless and until a reexamination order is issued, nor will suspension of the interference normally be permitted until after any motions have been disposed of. If the motion under 37 CFR 1.635 is denied by the APJ, a request to stay the interference may be made to the Director of the USPTO under 37 CFR 1.993.
It is noted that the 37 CFR 1.644(a)(2) petition might appear to overlap the 37 CFR 1.993 request to stay an interference; however, 37 CFR 1.644(b) states that "[a] petition under paragraph (a)(2) of this section shall not be filed prior to the party's brief for final hearing (see § 1.656)." The request to stay an interference under 37 CFR 1.993 is thus not covered by 37 CFR 1.644(a)(1)-(3); and 37 CFR 1.993 provides an additional aspect of relief to the public.
Just as petitions under 37 CFR 1.644 are decided by the Chief Administrative Patent Judge of the Board of Patent Appeals and Interferences (Board), a request to stay an interference under 37 CFR 1.993 will likewise be decided by the Chief Administrative Patent Judge of the Board.
III. REQUEST BY THE EXAMINER FOR ACTION PURSUANT TO 37 CFR 1.641
Normally, examiners should not have to alert the APJ for action under 37 CFR 1.641 while the reexamination proceeding is pending. Rather, examiners should rely on the parties of the interference to file a notice under 37 CFR 1.660. See also the discussion in the next paragraph.
IV. REQUEST FOR REEXAMINATION FILED DURING INTERFERENCE
In view of the provisions of 37 CFR 1.913, "[a]ny person may, at any time during the period of enforceability of a patent" file a request for inter partes reexamination. Under 37 CFR 1.660, the patent owner must notify the Board that a request for reexamination was filed within ten days of receiving notice of the request having been filed. Such requests for reexamination will be processed in the normal manner. No delay, or stay, of the reexamination will occur where the third party requester is not a party to the interference, or where the requester is a party to the interference but does not timely petition for a stay or delay. If the examiner orders reexamination pursuant to 37 CFR 1.931 and subsequently, in the reexamination proceeding, rejects a patent claim corresponding to a count in the interference, the attention of the APJ shall be called to the rejection and appropriate action may be taken under 37 CFR 1.641.
V. PETITION TO STAY REEXAMINATION PROCEEDING BECAUSE OF INTERFERENCE
Any petition to stay an inter partes reexamination proceeding, because of an interference, which is filed prior to the first Office action in the reexamination proceeding will not be considered, but will be returned to the party submitting the petition. See 37 CFR 1.939 and MPEP § 2625. The decision returning such a premature petition will be made of record in the reexamination file, but no copy of the petition will be retained by the Office. A petition to stay the reexamination proceeding because of the interference may be filed by the patent owner after the first Office action in the reexamination proceeding. If a party to the interference, other than the patent owner, is also a requester of the reexamination, that party may also petition to stay the reexamination proceeding after the first Office action. If the party to the interference other than patent owner is not the reexamination requester, any petition by that party is improper under 37 CFR 1.905 and will not be considered. Any such improper petitions will be returned to the party submitting the same. Premature petitions to stay the reexamination proceedings, i.e., those filed prior to the first Office action in the reexamination proceeding, will be returned by a Legal Advisor of the Office of Patent Legal Administration (OPLA) as premature. Petitions to stay filed subsequent to the date of the first Office action in the reexamination proceeding will be referred to the OPLA for decision by a Senior Legal Advisor of that Office. All decisions on the merits of petitions to stay a reexamination proceeding because of an interference will be made in the OPLA.
VI. ACTION IN INTERFERENCE FOLLOWING REEXAMINATION
If one or more claims of a patent which is involved in an interference are canceled or amended by the issuance of a reexamination certificate, appropriate action will be taken by the APJ under 37 CFR 1.641.
Upon issuance of the reexamination certificate, the patent owner must notify the APJ of such issuance.
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