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2640 Decision on Request [Added R-2] - 2600 Optional Inter Partes Reexamination
2640 Decision on Request [Added R-2]
35 U.S.C. 312 Determination of issue by Director
(a) REEXAMINATION.- Not later than 3 months after the filing of a request for inter partes reexamination under section 311, the Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.
(b) RECORD.- A record of the Director's determination under subsection (a) shall be placed in the official file of the patent, and a copy shall be promptly given or mailed to the owner of record of the patent and to the third-party requester.
(c) FINAL DECISION.- A determination by the Director under subsection (a) shall be final and non-appealable. Upon a determination that no substantial new question of patentability has been raised, the Director may refund a portion of the inter partes reexamination fee required under section 311.
37 CFR 1.923 Examiner's determination on the request for inter partes reexamination.
Within three months following the filing date of a request for inter partes reexamination under § 1.919, the examiner will consider the request and determine whether or not a substantial new question of patentability affecting any claim of the patent is raised by the request and the prior art citation. The examiner's determination will be based on the claims in effect at the time of the determination, will become a part of the official file of the patent, and will be mailed to the patent owner at the address as provided for in § 1.33(c) and to the third party requester. If the examiner determines that no substantial new question of patentability is present, the examiner shall refuse the request and shall not order inter partes reexamination.
37 CFR 1.925 Partial refund if request for inter partes reexamination is not ordered.
Where inter partes reexamination is not ordered, a refund of a portion of the fee for requesting inter partes reexamination will be made to the requester in accordance with § 1.26(c).
37 CFR 1.927 Petition to review refusal to order inter partes reexamination
The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner's determination refusing to order inter partes reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.
Prior to making a determination on the request for reexamination, the examiner must request a litigation computer search by the Scientific and Technical Information Center (STIC) to check if the patent has been, or is, involved in litigation. The "Litigation Review" box on the reexamination file wrapper should be completed to indicate that the review was conducted and the results thereof. A copy of the STIC search should be hole-punched and placed in the reexamination file. In the rare instance where the record of the reexamination proceeding or the STIC search indicates that additional information is desirable, guidance as to making an additional litigation search may be obtained from the library of the Office of the Solicitor. If the patent is or was involved in litigation, and a paper referring to the Court proceeding has been filed, reference to the paper by number should be made in the "Litigation Review" box as, for example, "litigation; see paper #1C." If a litigation records search is already noted on the file, the examiner need not repeat or update it.
If litigation has concluded or is taking place in the patent on which a request for reexamination has been filed, the request must be promptly brought to the attention of the Reexamination Legal Advisor assigned to the case who should review the decision on the request and any examiner's action to ensure conformance to the current Office litigation policy and guidelines. See MPEP § 2686.04.
35 U.S.C. 312 requires that the Director of the Office determine whether or not a "substantial new question of patentability" affecting any claim of the patent of which reexamination is desired, is raised in the request not later than 3 months after the filing date of a request. See also MPEP § 2641. Such a determination may be made with or without consideration of other patents or printed publications in addition to those cited in the request. No input from the patent owner is considered prior to the determination. See Patlex v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 1985).
The patent claims in effect at the time of the determination will be the basis for deciding whether a substantial new question of patentability has been raised (37 CFR 1.923). See MPEP § 2643. Amendments which (A) have been filed in a copending reexamination proceeding in which the reexamination certificate has not been issued, or (B) have been submitted in a reissue application on which no reissue patent has been issued, will not be considered or commented upon when deciding a request for reexamination.
The decision on the request for reexamination has as its main object either the granting or denial of the request for reexamination. This decision is based on whether or not "a substantial new question of patentability" is found. A final finding as to unpatentability of the claims is not made in the decision; rather, it is made later, during the examination stage of the reexamination proceeding. Accordingly, no prima facie case of unpatentability need be found to grant an order for reexamination. It should be noted that a decision to deny the request for reexamination is equivalent to a final holding (subject to a petition pursuant to 37 CFR 1.927 for review of the denial), that the patent claims are patentable over the cited art (patents and printed publications).
Where there have been prior decisions relating to the patent, see MPEP § 2642.
It is only necessary to establish that a substantial new question of patentability exists as to one of the patent claims in order to order reexamination. In the examination stage of the reexamination, usually all patent claims will be examined, even though the order found a substantial new question of patentability only as to (for example) one of the patent claims. Where, however, there has been a prior Federal Court decision as to some claims, see MPEP § 2642 as to whether those claims are examined.
Where there have been prior decisions relating to the patent, see MPEP § 2642.
It is only necessary to establish that a substantial new question of patentability exists as to one of the patent claims in order to order reexamination. In the examination stage of the reexamination, usually all patent claims will be examined, even though the order found a substantial new question of patentability only as to (for example) one of the patent claims. Where, however, there has been a prior Federal Court decision as to some claims, see MPEP § 2642 as to whether those claims are examined.
The decision on the request for reexamination should discuss all the patent claims. The examiner should limit the discussion of the claims to whether or not a substantial new question of patentability has been raised; the examiner SHOULD NOT reject claims in the order for reexamination. Rather, any rejection of the claims will be made in the first Office action that normally will accompany the order for reexamination. See MPEP § 2660.
The Director of the Office has the authority to order reexamination only in those cases which raise a substantial new question of patentability. The substantial new question of patentability requirement protects patentees from having to respond to, or participate in, unjustified reexaminations. See Patlex v. Mossinghoff, 771 F.2d 480, 226 USPQ 985, 989 (Fed. Cir. 1985).
I. REQUEST FOR REEXAMINATION OF THE PATENT AFTER REISSUE OF THE PATENT
Where a request for reexamination is filed on a patent after a reissue patent for that patent has already issued, reexamination will be denied, because the patent on which the request for reexamination is based has been surrendered. Should reexamination of the reissued patent be desired, a new request for reexamination, including and based on the specification and claims of the reissue patent, must be filed. Where the reissue patent issues after the filing of a request for reexamination, see MPEP § 2686.03.
II. SECOND OR SUBSEQUENT REQUEST FILED DURING REEXAMINATION
See MPEP § 2686.01 for a comprehensive discussion of the situation where a first reexamination is pending at the time a second or subsequent request for reexamination is to be decided, and one of the two is an inter partes reexamination. The present subsection merely provides guidance on the standard for the substantial new question of patentability to be applied in the decision on the second or subsequent request.
If a second or subsequent request for reexamination is filed (by any party permitted to do so) while a first reexamination is pending, the presence of a substantial new question of patentability depends on the art (patents and printed publications) cited by the second or subsequent request. The cited art will be reviewed for a substantial new question of patentability based on the following guidelines:
A. If one of the two reexaminations is an inter partes reexamination, the following possibilities exist:
(1) An ordered inter partes reexamination is pending, and an ex parte reexamination request is subsequently filed.
(2) An ordered inter partes reexamination is pending, and an inter partes reexamination request is subsequently filed.
(3) An ordered ex parte reexamination is pending, and an inter partes reexamination request is subsequently filed.
In all three instances, if the subsequent request includes the art which raised a substantial new question in the earlier pending reexamination, then reexamination should be ordered only if the art cited raises a substantial new question of patentability which is different than that raised in the earlier pending reexamination. If the art cited in the subsequent request raises the same substantial new question of patentability as that raised in the earlier pending reexamination, the subsequent request should be denied. If the subsequent request does not include the art which raised the substantial new question of patentability in the earlier pending reexamination, reexamination may or may not be ordered, depending on whether the different art cited raises a substantial new question of patentability.
In an aggravated situation, where reexamination is granted on a second or subsequent request, but the patent owner can clearly show that the second or subsequent request was filed for purposes of harassment, the patent owner can petition under 37 CFR 1.182 that the second or subsequent request should be suspended. If such a petition is granted, prosecution on the second or subsequent reexamination would be suspended until termination of proceedings in the first reexamination. In such an instance, merger of the second (or subsequent) reexamination with the first would unduly prolong the conclusion of the pending reexamination and be inconsistent with the requirement that the reexamination proceeding be conducted with special dispatch.
Where an ordered inter partes reexamination is pending, and an inter partes reexamination request is subsequently filed, the prohibition provision of 37 CFR 1.907(a) must be borne in mind. Once an order for inter partes reexamination has been issued, neither the third party requester of the inter partes reexamination, nor its privies, may file a subsequent request for inter partes reexamination of the patent until an inter partes reexamination certificate has been issued, unless expressly authorized by the Director of the Office. Note that 37 CFR 1.907(a) tracks the statutory provision of 35 U.S.C. 317(a).
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