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2633 Processing in Technology Center [Added R-2] - 2600 Optional Inter Partes Reexamination
2633 Processing in Technology Center [Added R-2]
The processing and handling of an inter partes reexamination in the Technology Center (TC) will include:
(A) Initial Supervisory Patent Examiner (SPE) assignment of the case to a primary examiner;
(B) Examination of the case by the patent examiner;
(C) Clerical activity needed to support that examination;
(D) The inter partes reexamination functions of the Special Program Examiners (SPREs) who are supported in these functions by the Paralegal Specialists;
(E) The administrative functions of reexamination performed by the TC Directors and SPEs; and
(F) Other instances that the Central Reexamination Unit (CRU) Reexamination Legal Advisor (RLA) deems it appropriate for the TC to have possession of the case.
The working groups in the TCs have designated the legal instrument examiners (LIEs) to act as reexamination clerks, as part of their assigned duties, and thus to perform those clerical duties and responsibilities in the TCs which are unique to reexamination.
Inter Partes reexamination PALM processing in the TC will be limited to charging the case to the examiner, PALM transactions to indicate receipt of the case in the TC, case flagging as needed by the SPREs, and return of the case to the CRU.
I. CRU INTERFACE WITH TECHNOLOGY CENTER OPERATION
The CRU will administer, oversee, and monitor inter partes reexamination. Additionally, in conjunction with and in support of TC handling of inter partes reexaminations, the CRU will perform, in inter partes reexamination proceedings, (A) all processing of papers filed by parties and entry of amendments, (B) all mailing of Office actions and other correspondence, and (C) all processing of fees. CRU personnel will be available to respond to inquiries by TC personnel as to TC handling of inter partes reexaminations. Such inquiries to the CRU should be forwarded via the TC SPREs, so that they will be aware of all reexamination practice in the TC and thus serve as a focal point for the TC in reexamination.
II. TECHNOLOGY CENTER HANDLING OF INTER PARTES REEXAMINATION
After the case file has been reviewed in the CRU to ensure it is ready for examination, the CRU will forward the case to the TC for docketing of the case to the examiner assigned to the reexamination proceeding.
In the event the SPE believes that another Art Unit should examine the case, see MPEP § 2637 for procedures for transferring the case.
After the examiner receives the new inter partes reexamination case file from his/her SPE, the examiner will, no later than one week after receipt of the inter partes reexamination file, prepare for an initial consultation conference with the RLA and notify the SPRE that he/she is ready for the conference and specify the days and times that he/she is available. The SPRE will schedule the consultation conference. At the scheduled conference, the consultation will be conducted with the examiner, a TC SPRE, and the RLA being present. The SPE may also attend the conference but the SPEs attendance is not mandatory. At the consultation conference, the RLA will provide instructions as to preparation of the decision on the request for inter partes reexamination and (where reexamination is granted) a first action which would accompany an order granting reexamination. In the rare circumstances where a first action is not to be provided with the grant of reexamination (see MPEP § 2660), the RLA will so instruct the examiner. The consultation conference should be completed within two weeks of when the case was initially forwarded to the TC SPRE by the CRU.
After the consultation conference, the examiner will prepare a decision on the request for reexamination, and, where reexamination is granted, a first Office action to accompany the decision no later than two weeks from the date of the consultation conference. The decision and the Office action are typed in the TC on a "special" basis and the typed decision and Office action are forwarded to a primary examiner for signature. Although a non-primary examiner may be assigned a reexamination to examine (where that examiner is the only examiner who did not examine the application for the patent being reexamined and yet is familiar with the art), a primary examiner must review and sign every action in the reexamination proceeding. After the primary examiner signs the decision and/or action, the appropriate materials will be compiled and any needed copying will be performed by the TC support staff. Thereafter, the case file will be forwarded to the TC SPRE for review. The TC SPRE will then arrange for the file to be PALMed out and hand-carried directly to the CRU.
The SPRE will have one (1) week from the SPRE's receipt of the case from the examiner to perform the review, to obtain needed corrections, and to forward the case to the CRU. At the very latest, the decision and action prepared by the examiner must be forwarded to the CRU within nine (9) weeks of the filing date of the request. After the SPRE approves the Office action, the file (containing the examiner's decision and action) is hand-carried directly to the CRU for a final review and mailing. In the CRU, the RLA performs a general review of the decision and action, and then the decision and action are mailed from the CRU. In conjunction with the mailing, any appropriate processing (e.g., PALM work, update scanning) is carried out by the staff of the CRU.
After the mailing of the decision and the first action, the file will be stored in the central storage area of the CRU. Upon receipt of a patent owner response to the action (and third party requester comments where permitted) by the CRU, or upon the expiration of the time to submit same, the SPE and the examiner will be notified and the case file is forwarded to the TC. The examiner will review the response and comments, decide on a proposed course of action, consult with the RLA (with the SPRE being present) and then prepare the appropriate action for the case. The action will be reviewed and mailed as discussed above. Further prosecution and examination will follow in a similar manner. See MPEP § 2671.03 for handling of patentability review conferences prior to Action Closing Prosecution (ACP) and prior to Right of Appeal Notice (RAN). See MPEP § 2676 for appeal conferences and MPEP § 2677 Examiner's Answers. Appeal conferences and patentability review conferences will be conducted in the presence of the SPRE and RLA, and will serve as the pre-action consultation prior to an the action to be issued by the examiner.
Ordinarily, there is no counting of actions in a reexamination proceeding; all time spent on reexamination is reported as set forth in MPEP § 2638. Where the reexamination has been merged with a reissue (see MPEP § 2686.03), the reissue counting will be done by the TC.
III. TECHNOLOGY CENTER PREPARATION OF THE ACTION FOR MAILING PRIOR TO FORWARDING TO THE CRU
After an action by the examiner is completed, the TC clerical staff will make copies of references cited and a copy of the Office action for the patent owner and the third party requester. Copying of the Office action and any references will be performed in the TC to ensure that copies are provided for the file and for all parties entitled to receive copies.
A transmittal form PTOL-501 with the third party requester's address will be completed, if a copy for mailing is not already in the case file. The transmittal form PTOL-501 is used to forward copies of Office actions (and any references cited in the actions) to the third party 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 third party requester's address each time a mailing is required.
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