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2271.01 Patentability Review Conferences [R-2] - 2200 Citation of Prior Art and Ex Parte Reexamination of Patents
2271.01 Patentability Review Conferences [R-2]
A "patentability review conference" will be convened at two stages of the examination in an ex parte reexamination proceeding:
(A) A patentability review conference must be convened just prior to issuing a final rejection; and
(B) A patentability review conference must be convened just prior to issuing a Notice of Intent to Issue *>Ex Parte< Reexamination Certificate (NIRC), other than in the exceptions set forth in this section.
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 (NIRC or final rejection).
>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 § 2236) 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 the appeal brief. See MPEP § 1208. A patentability review conference must be held in each instance where a final rejection is about to be issued in a reexamination proceeding. A patentability review conference must also be held in each instance where a NIRC is about to be issued, unless the NIRC is being issued: (A) following and consistent with a decision by the Board of Patent Appeals and Interferences (or court) on the merits of the proceeding; or (B) as a consequence of the patent owner's failure to respond or take other action where such a response or action is necessary to maintain pendency of the proceeding and, as a result of which failure to respond, all of the claims will be canceled. When the patentability review conference results in the issuance of a final rejection or a NIRC, 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 a final rejection or NIRC. 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 (NIRC or final rejection) shall be issued and signed by the examiner, with the two other conferees initialing the action (as "conferee") to indicate their participation in the conference. Both conferees will initial, even though one of them may have dissented from the 3-party conference decision as to the patentabiliy of claims. If the conference does not confirm the examiner's preliminary decision, the proposed NIRC or final rejection will not be issued by the examiner; rather, the examiner will issue an 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, preferably to one of the other two conference members.
>III. < WHAT THE CONFERENCE IS TO 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 the 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, 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 a final rejection or NIRC 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 final rejection or NIRC 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, whether to convene 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 review conference, by itself, be grounds for vacating any Office decision(s) or action(s) and "restarting" the reexamination proceeding.
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