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2233 Processing in Technology Center [R-2] - 2200 Citation of Prior Art and Ex Parte Reexamination of Patents
2233 Processing in Technology Center [R-2]
The working groups in the Technology Centers (TCs) have designated the legal instrument examiners to act as reexamination clerks, as part of their assigned duties, and thus to perform those clerical duties and responsibilities in the groups which are unique to reexamination. The TC Special Program Examiners (SPREs) and Paralegal Specialists have the responsibility to oversee clerical processing and serve as a resource for questions.
> I. < FEES
Under reexamination, there are generally no fees due other than for the request and any appeal, brief, and oral hearing fees under 37 CFR 1.191 , 1.192, and 1.194(b). No fees are required for additional claims added, for an extension of time under 37 CFR 1.550(c) ( 37 CFR 1.136 is not available in reexamination), or for issue of the certificate.
Any petitions filed under **>37 CFR 1.137< or 37 CFR 1.182 or 1.183 relating to a reexamination proceeding require fees ( 37 CFR 1.17(h) *>, (l) and (m)<).
Small entity reductions are available to the patent owner for the **>37 CFR 1.137< petition fee, appeal, brief, and oral hearing fees. Small entity reductions in fees are not available for the reexamination filing fee nor for petition fees for petitions filed under 37 CFR 1.182 and 1.183.
When a fee is required in a merged proceeding (see MPEP § 2283 and § 2285), only a single fee is needed even though multiple copies of the submissions (one for each file) are required.
> II. < MAILING
A transmittal form with the requester's address will be used to forward copies of Office actions >(and any references cited in the Office actions)< to the requester. Whenever an Office action is issued, a copy of this form will be made and attached to a copy of the Office action. The use of this form removes the need to retype the requester's address each time a mailing is required. When the patent owner is the requester, no such form is needed.
The following steps should be taken when processing reexamination requests in the TCs.
(A) Report receipt of the reexamination file in the TC on the PALM terminal and forward the file to the TC reexamination clerk.
(B) Date stamp the date of receipt in the TC on the reexamination file.
(C) Charge file on the PALM terminal to the supervisory patent examiner (SPE) of the TC art unit indicated on the reexamination file and forward the file to the supervisory patent examiner.
(D) The SPE promptly reviews the subject matter of the patent in which reexamination was requested and either transfers the request file (which should rarely occur) or assigns it to a patent examiner other than the examiner who was involved in the examination of the patent application (see MPEP § 2236). The patent examiner is informed and the request file is returned to the TC reexamination clerk for entry of the examiner's name into PALM.
(E) At about 6 weeks after the filing of the request, the request file should be given to the examiner and charged to him or her on PALM.
(F) The examiner then drafts a decision on the request and returns it to be typed on a "special" basis, normally within 8 weeks after the filing date of the request.
(G) The typed decision is forwarded to the examiner for review. The examiner will sign the action (if the examiner is a primary examiner) or forward the action to the SPE for signature (if examiner is not a primary examiner). After signing, the file is returned to the TC technical support staff for mailing and PALM update, normally within 10 weeks after the filing date of the request.
The initial reexamination *>file wrappers< were patent application *>file wrappers< which had orange tape applied to the face. The current reexamination file wrappers are orange in color for easy identification.
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