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2686.03 Copending Reexamination and Reissue Proceedings [Added R-2] - 2600 Optional Inter Partes Reexamination
2686.03 Copending Reexamination and Reissue Proceedings [Added R-2]
37 CFR 1.991 Merger of concurrent reissue application and inter partes reexamination proceeding.
When a third party requester is involved in one or more proceedings, including an inter partes reexamination proceeding, the merger of such proceedings will be accomplished so as to preserve the third party requester's right to participate to the extent specifically provided for in these regulations. In merged proceedings involving different requesters, any paper filed by one party in the merged proceeding shall be served on all other parties of the merged proceeding.
37 CFR 1.937 Conduct of inter partes reexamination.
(a) All inter partes reexamination proceedings, including any appeals to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office, unless the Director makes a determination that there is good cause for suspending the reexamination proceeding.
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37 CFR 1.995 Third party requester's participation rights preserved in merged proceeding.
When a third party requester is involved in one or more proceedings, including an inter partes reexamination proceeding, the merger of such proceedings will be accomplished so as to preserve the third party requester's right to participate to the extent specifically provided for in these regulations. In merged proceedings involving different requesters, any paper filed by one party in the merged proceeding shall be served on all other parties of the merged proceeding.
37 CFR 1.997 Issuance of inter partes reexamination certificate.
(a) Upon the conclusion of an inter partes reexamination proceeding, the Director will issue a certificate in accordance with 35 U.S.C. 316 setting forth the results of the inter partes reexamination proceeding and the content of the patent following the inter partes reexamination proceeding.
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(d) If a certificate has been issued which cancels all of the claims of the patent, no further Office proceedings will be conducted with that patent or any reissue applications or any reexamination requests relating thereto.
(e) If the inter partes reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.991, the reissued patent will constitute the reexamination certificate required by this section and 35 U.S.C. 316.
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37 CFR 1.176 Examination of reissue.
(a) A reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications. Applications for reissue will be acted on by the examiner in advance of other applications.
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The general policy of the Office is that the examination of a reissue application and an inter partes reexamination proceeding will not be conducted separately at the same time as to a particular patent. The reason for this policy is to permit timely resolution of both the reissue and the reexamination to the extent possible and to prevent inconsistent, and possibly conflicting, amendments from being introduced into the two files on behalf of the patent owner. Accordingly, if both a reissue application and a reexamination proceeding are pending concurrently on a patent, a decision will normally be made to merge the reissue application examination and the reexamination or to stay one of the two. See In re Onda, 229 USPQ 235 (Comm'r Pat. 1985). The decision as to whether the reissue application examination and the reexamination proceeding are to be merged, or which of the two (if any) is to be stayed, is made in the Office of Patent Legal Administration (OPLA).
Where a reissue application and a reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of such. 37 CFR 1.178(b), 1.565(a), and 1.985. The patent owner should file in the reissue application, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.178(b) in order to notify the Office in the reissue application of the existence of the reexamination proceeding on the same patent. See MPEP § 1418. In addition, the patent owner should file in the reexamination proceeding, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.565(a) or 1.985 (depending on whether the reexamination proceeding is an ex parte reexamination proceeding or an inter partes reexamination proceeding) to notify the Office in the reexamination proceeding of the existence of the two concurrent proceedings.
I. TIME FOR MAKING DECISION ON MERGING OR STAYING THE PROCEEDINGS
A decision whether or not to merge the examination of a reissue application and an inter partes reexamination proceeding, or to stay one of the two, will not be made prior to the mailing of the order to reexamine the patent pursuant to 37 CFR 1.931. Until such time as the reexamination is ordered, the examination of the reissue application will proceed. A determination on the request for reexamination should not be delayed despite the existence of a copending reissue application, since 35 U.S.C. 312(a) requires a determination within 3 months following the filing date of the request. See MPEP § 2641. If the decision on the request denies reexamination (MPEP § 2647), the examination of the reissue application should be continued. If reexamination is to be ordered (MPEP § 2646), the reexamination, reissue, and patent files should be delivered promptly to the Central Reexamination Unit (CRU) for mailing of the decision ordering the reexamination, and the files then forwarded to the OPLA. The delivery of the files to the OPLA should not be delayed; accordingly, no first Office action will accompany the decision ordering reexamination.
If a reissue application is filed during the pendency of a reexamination proceeding in which reexamination has already been ordered, the reexamination file, reissue application, and patent file should be delivered to the OPLA as promptly as possible after the reissue application reaches the Technology Center (TC).
The decision on whether or not to merge the reissue application examination and the reexamination proceeding or which (if any) is to be stayed (suspended), will generally be made as promptly as possible after receipt of all of the files by the OPLA.
Until a decision is mailed merging the reissue application examination and the reexamination proceeding, or staying one of them, prosecution in the reissue application and the reexamination proceeding will continue and be conducted simultaneously, but separately.
The Office may in certain situations issue a certificate at the termination of a reexamination proceeding, even if a copending reissue application or another reexamination request has already been filed.
II. CONSIDERATIONS IN DECIDING WHETHER TO MERGE THE REISSUE AND REEXAMINATION OR WHETHER TO STAY ONE OF THEM
The decision on whether to merge the reissue application examination and reexamination proceeding, or stay one of them, will be made on a case-by-case basis. Where issues are raised in the reissue application that would not be proper for consideration in reexamination and/or not be proper for comment by the reexamination third party requester, merger would ordinarily not be ordered, and one of the two proceedings stayed. A decision to stay the reexamination proceeding will only be issued in exceptional instances because of the statutory requirements that examination proceed with "special dispatch." Where there is "good cause" to stay the reexamination proceeding, the Director may do so pursuant to 35 U.S.C. 314(c). The status of the reissue application and the reexamination proceeding will also be taken into account in the decision as to whether merger will be ordered.
A. Reissue About To Issue, Reexamination Requested
If the reissue patent will issue before the determination on the reexamination request must be made, the determination on the request should normally be made after the granting of the reissue patent; and then the determination should be made on the basis of the claims in the reissue patent. The reexamination, if ordered, would then be based on the reissue patent claims rather than the original patent claims. Since the reissue application would no longer be pending, the reexamination would be processed in a normal manner.
Where a reissue patent has been issued, the determination on the request for reexamination should specifically point out that the determination has been made on the claims of the reissue patent and not on the claims of the original patent. Any amendment made in the reexamination proceeding should treat the changes made by the reissue as the text of the patent, and all bracketing and underlining made with respect to the patent as changed by the reissue. Note that the reissue claims used as the starting point in the reexamination proceeding must be presented in the reexamination proceeding as a "clean copy." Thus, words bracketed in the reissue patent claim(s) would not appear at all in the reexamination clean copy of the claim(s). Also, words that were added via the reissue patent will appear in italics in the reissue patent, but must appear in plain format in the reexamination clean copy of the claim(s).
If a reissue patent issues on the patent under reexamination after reexamination is ordered, the next action from the examiner in the reexamination should point out that further proceedings in the reexamination will be based on the claims of the reissue patent and not on the patent surrendered. Form paragraph 22.05 may be used in the Office action.
¶ 22.05 Reexamination (Ex Parte or Inter Partes) Based on Reissue Claims
In view of the surrender of original Patent No. [1] and the granting of Reissue Patent No. [2] which issued on [3], all subsequent proceedings in this reexamination will be based on the reissue patent claims.
Where the reissue patent has issued prior to the filing of a request for reexamination of the original patent, see MPEP § 2640.
B. Reissue Pending, Reexamination Request Filed
Where a reissue patent will not be granted prior to the expiration of the 3-month period for making the determination on the reexamination request, a decision will be made after an order to reexamine is issued as to whether the reissue application examination and the reexamination proceeding are to be merged, or which of the two (if any) is to be stayed. In this situation, no first Office action will have accompanied the order for reexamination.
In making a decision on whether or not to merge the reissue application examination and the reexamination proceeding, consideration will be given as to whether issues are raised in the reissue application that would not be proper for consideration in reexamination and/or not be proper for comment by the reexamination third party requester. If such issues are raised, merger would ordinarily not be ordered, and one of the two proceedings stayed. Consideration will also be given to the status of the reissue application examination at the time the order to reexamine the patent pursuant to 37 CFR 1.931 is mailed. For example, if the reissue application is on appeal to the Board of Patent Appeals and Interferences (Board) or to the courts, that fact would be considered in making a decision whether to merge the reissue application examination and the reexamination proceeding or stay one of them. See In re Scragg, 215 USPQ 715 (Comm'r Pat. 1982), In re Stoddard, 213 USPQ 386 (Comm'r Pat. 1982).
If merger of the reissue application examination and the reexamination proceeding is ordered, the order merging them will also require that the patent owner place the same claims in the reissue application and in the reexamination proceeding for purposes of the merger. The decision to merge may require an amendment to be filed by the patent owner to provide identical sets of claims, within a specified time set in the decision to merge.
If merger would be appropriate, but the examination of the reissue application has progressed to a point where a merger is not desirable at that time, then the reexamination proceeding will generally be stayed until the reissue application examination is complete on the issues then pending. After completion of the examination on the issues then pending in the reissue application examination, the stay of the reexamination proceeding will be removed. The proceedings would be merged if the reissue application is pending, or the reexamination proceeding will be conducted separately if the reissue application has become abandoned. The reissue application examination would be reopened, if necessary, for merger of the reexamination proceeding therewith. If a stay of a reexamination proceeding has been removed following a reissue application examination, the first Office action will set a shortened statutory period for response of one month or thirty days (whichever is longer) unless a longer period for response clearly is warranted by the nature of the examiner's action. The second Office action will normally be final and will also set a one month or thirty days period for response. These shortened periods are considered necessary to prevent undue delay in terminating the proceedings and also to proceed with "special dispatch" in view of the earlier stay.
If the reissue application examination and reexamination proceedings are merged, the issuance of the reissue patent will also serve as the inter partes reexamination certificate under 37 CFR 1.997, and the reissue patent will so indicate.
C. Reexamination Proceedings Underway, Reissue Application Filed
When a reissue application is filed after an inter partes reexamination request has been filed, a determination will be made as to whether reexamination should be ordered. If reexamination is ordered, the reexamination, reissue, and patent files should be delivered promptly to the CRU for mailing of the decision ordering the reexamination, and the files then forwarded to the OPLA for consideration as to whether or not to merge the proceedings or stay one proceeding. The delivery of the files to the OPLA should not be delayed; accordingly, no first Office action will accompany the decision ordering reexamination.
Where reexamination has already been ordered prior to the filing of a reissue application, the reexamination, reissue, and patent files should be delivered promptly to the OPLA for consideration of the merger issue.
In making a decision on whether or not to merge the reissue application examination and the reexamination proceeding, consideration will be given as to whether issues are raised in the reissue application that would not be proper for consideration in reexamination and/or not be proper for comment by the reexamination third party requester. If such issues are raised, merger would ordinarily not be ordered, and one of the two proceedings stayed. In addition, consideration will also be given to the status of the reexamination proceeding. For example, if the reexamination proceeding is on appeal to the Board or to the Court of Appeals for the Federal Circuit, that fact would be considered in making a decision whether to merge the reissue application examination and the reexamination proceeding or stay one of them.
D. Examiner Assignment
With respect to the appropriate examiner assignment of the merged reexamination proceeding and the reissue application examination, see MPEP § 2636.
III. CONDUCT OF MERGED REISSUE AND REEXAMINATION PROCEEDING
The decision ordering merger will set forth the practice and procedure to be followed in the examination and prosecution of the merged reissue and inter partes reexamination proceeding. Any questions as to the practice and procedure set forth should be referred to the OPLA Reexamination Legal Advisor (RLA) assigned to the inter partes reexamination proceeding that is merged with the reissue application. In addition, the examiner will consult with the RLA assigned to the inter partes reexamination prior to issuing any Office action in the merged proceeding, in the same manner as he or she would consult with the RLA in an inter partes reexamination proceeding that has not been merged.
IV. INTER PARTES REEXAMINATION, EX PARTE REEXAMINATION, AND REISSUE APPLICATION FOR THE SAME PATENT
It will sometimes happen that an inter partes reexamination, an ex parte reexamination and a reissue application will all be copending. In these situations, the three files are forwarded (together with the patent file) to the OPLA where a decision is made whether to merge the newest proceeding with the two earlier proceedings. The three most common examples of this are as follows:
(A) A reissue application was previously merged with an ex parte reexamination, and then an inter partes reexamination is filed. After an order to reexamine has been issued, the files should be promptly forwarded to the OPLA for consideration as to whether or not to merge the proceedings.
(B) A reissue application was previously merged with an inter partes reexamination, and then a request for ex parte reexamination is filed. After an order to reexamine has been issued, the files should be held in storage until the patent owner's statement and any reply by the ex parte third party requester have been received for the ex parte reexamination request, or until the time for filing the same expires. The files should then be forwarded to the OPLA for consideration as to whether or not to merge the proceedings.
(C) An inter partes reexamination was merged with an ex parte reexamination, and then a reissue application is filed. Once the reissue application is received, the files should be promptly forwarded to the OPLA for consideration as to whether or not to merge the proceedings.
The decision to merge the three proceedings by the OPLA will provide the guidance for conducting the merged proceeding. It is to be noted that the merger will not be carried out pursuant to MPEP Chapter 2200. Prosecution prior to the point of merger will remain as-is, in the files.
In the event the inter partes reexamination is terminated and only the ex parte reexamination and the reissue application remain, the prosecution will no longer be governed by the present section. Any further prosecution will be governed by MPEP Chapter 2200; specifically see MPEP § 2285.
V. PETITION TO MERGE REISSUE APPLICATION AND INTER PARTES REEXAMINATION PROCEEDING OR TO STAY EITHER OF THE TWO BECAUSE OF THE EXISTENCE OF THE OTHER
No petition to merge the reexamination proceeding and the reissue application examination, or stay one of them, is necessary, since the Office will generally, sua sponte, make a decision to merge the reexamination proceeding and the reissue application examination or to stay one of them. If any petition to merge the reexamination proceeding and the reissue application examination, or to stay one of them because of the other, is filed prior to the determination (37 CFR 1.923) and the order to reexamine (37 CFR 1.931), it will not be considered, but will be returned to the party submitting the same by the OPLA, regardless of whether the petition is filed in the reexamination proceeding, the reissue application, or both. This is necessary in order to prevent premature papers relating to the reexamination proceeding from being filed. The decision returning such a premature petition will be made of record in both the reexamination file and the reissue application file, but no copy of the petition will be retained by the Office. See MPEP § 2667.
The patent owner or the third party requester may file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, or stay one of them because of the other, after the order to reexamine (37 CFR 1.931), in the event the Office has not acted prior to that date to merge or stay. Any petition to merge or stay which is filed by a party other than the patent owner or the third party requester of the reexamination will not be considered, but will be returned to that party by the OPLA.
All petitions to merge or stay which are filed by the patent owner or the third party requester subsequent to the date of the order for reexamination will be referred to the OPLA for decision.
VI. FEES IN MERGED PROCEEDINGS
Where the proceedings have been merged and a paper is filed which requires payment of a fee (e.g., petition fees, appeal fees, brief fees, oral hearing fees), only a single fee need be paid. For example, only one fee need be paid for an appellant brief, even though the brief relates to merged multiple examinations and copies of the brief are filed for each file in the merger (as is required).
VII. INTERVIEWS IN MERGED PROCEEDINGS
Pursuant to 37 CFR 1.955, an interview which discusses the merits of a proceeding is not permitted in an inter partes reexamination proceeding. Thus, in a merged proceeding of an inter partes reexamination and a reissue application, there will be no inter partes interview as to the substance of the proceeding. Also, there will be no separate ex parte interview as to the substance of the proceeding with either the patent owner (the reissue applicant) or the third party requester (of the reexamination). Accordingly, where a party requests any information as to the merits of the merged proceeding, the examiner will not conduct a personal or telephone interview with that party to provide the information. Further, an informal amendment by the patent owner (the reissue applicant) will not be accepted, because that would be tantamount to an ex parte interview. All communications between the Office and the patent owner (and the third party requester) which are directed to the merits of the merged proceeding must be in writing and filed with the Office for entry into the record of the proceeding.
VIII. EXAMINER'S AMENDMENT TO PLACE PROCEEDING IN CONDITION FOR ALLOWANCE
As pointed out immediately above, interviews, both personal and telephone are not permitted in a merged reissue/inter partes reexamination proceeding. Thus, the examiner is not permitted to telephone the patent owner/reissue applicant and obtain authorization to make an amendment. Accordingly, the only times that an examiner's amendment can be made in conjunction with a Notice of Allowability are where the patent owner authorization need not be obtained. Such amendments include:
(A) An examiner's amendment to deal with formal matters such as grammar, incorrect spelling, or incorrect number; i.e., matters that do not involve a rejection, do not go to the merits, and do not require the examiner to obtain approval.
(B) An examiner's amendment to change the title.
See also MPEP § 1302.04 et seq. as to examiner's amendments not needing authorization by an applicant or a patent owner. Note, however, that in a merged reissue/inter partes reexamination proceeding (as opposed to an application per se) all such examiner's amendments must be made by formal examiner's amendment accompanying the Notice of Allowability, in order to provide notice of the changes made in the patent being reexamined to both the patent owner/reissue applicant and the third party requester.
Note that any change going to the merits of the case (i.e., more than a formal matter) could not be made by examiner's amendment accompanying the Notice of Allowability. Rather, a change going to the merits would require (A) reopening of prosecution with the approval of the TC Director, (B) an Office action suggesting the change to the patent owner/reissue applicant, (C) a formal amendment submitted by patent owner/reissue applicant, and (D) an opportunity for the third party requester to comment on the patent owner/applicant's submission.
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