2285 Copending Ex Parte Reexamination and Reissue Proceedings
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(d) If a reissue application and an ex parte reexamination proceeding on which an order pursuant to § 1.525 has been mailed are pending concurrently on a patent, a decision will usually be made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an ex parte reexamination proceeding is ordered, the merged examination will be conducted in accordance with §§ 1.171 through 1.179, and the patent owner will be required to place and maintain the same claims in the reissue application and the ex parte reexamination proceeding during the pendency of the merged proceeding. The examiner’s actions and responses by the patent owner in a merged proceeding will apply to both the reissue application and the ex parte reexamination proceeding and will be physically entered into both files. Any ex parte reexamination proceeding merged with a reissue application shall be concluded by the grant of the reissued patent. For merger of a reissue application and an inter partes reexamination, see § 1.991.
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I. TIME FOR MAKING DECISION ON MERGING OR STAYING THE PROCEEDINGS
A decision whether or not to merge the reissue application examination and the ex parte reexamination proceeding, or to stay one of the two proceedings, will not be made prior to the mailing of an order to reexamine the patent and the expiration of the statement-reply period following the order to reexamine.
- Until such time, the examination of the reissue application will proceed.
The decision on whether or not the proceedings are to be merged, or which proceeding (if any) is to be stayed, will generally be made as promptly as possible after receipt of the notification to OPLA and delivery of all the paper files to the OPLA.
The Office may in certain situations issue a certificate at the termination of a reexamination prosecution, even if a copending reissue application or another reexamination request has already been filed.
II. CONSIDERATIONS IN DECIDING WHETHER TO MERGE THE PROCEEDINGS OR WHETHER TO STAY A PROCEEDING
The decision on whether to merge the proceedings or stay a proceeding will be made on a case-by-case basis based upon the status of the various proceedings.
- The decision to merge, or not to merge, is within the sole discretion of the Office to facilitate/carry out the orderly operation of the Office in addressing the proceedings.
The status of the reissue application and the reexamination proceeding will be taken into account in the decision as to whether merger will be ordered, or one of the two proceedings stayed.
A. Reissue About To Issue, Reexamination Requested.
If the reissue patent will issue before the determination on the reexamination request must be made (e.g., within three months from the request’s filing date), the determination on the request should normally be delayed until 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 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.
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 as to whether the reissue application and the reexamination proceeding are to be merged, or which of the two (if any) is to be stayed, after an order to reexamine has been issued.
The general policy of the Office is to merge the more narrow reexamination proceeding with the broader reissue application examination whenever it is desirable to do so in the interests of expediting the conduct of both proceedings
If such a merger of the reissue application 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 merged proceedings.
- An amendment may be required to be filed to do this within a specified time set in the order merging the proceedings.
If the reissue application examination has progressed to a point where a merger of the two proceedings 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 and the proceedings will be merged if the reissue application is pending, or the reexamination proceeding will be conducted separately if the reissue application has become abandoned.
C. Reexamination Proceedings Underway, Reissue Application Filed.
When a reissue application is filed after an ex parte reexamination request has been filed, the OPLA should be notified as promptly as possible after the reissue application reaches the TC.
IV. CONDUCT OF MERGED REISSUE APPLICATION AND REEXAMINATION PROCEEDING
Where merger is ordered, the patent owner is required to maintain identical amendments in the reissue application and the reexamination file for purposes of the merged proceeding.
- The maintenance of identical amendments in both files is required as long as the reissue and reexamination proceedings remain merged.
- Where the merger decision indicates that an Office action will follow, the merged proceeding is returned to the examiner immediately after the decision to issue an Office action.
In the event that a “housekeeping” amendment to make the claims the same in each file is required by the merger decision (identical amendments to be placed in all files) but is not timely submitted, any claim that does not contain identical text in all of the merged proceedings should be rejected under 35 U.S.C. 112, second paragraph, as being indefinite as to the content of the claim, and thus failing to particularly point out the invention.
If a reissue application examination and a reexamination proceeding are merged, the merged examination will be conducted on the basis of the rules relating to the broader reissue application examination..
If the applicant/patent owner in such a merged proceeding fails to file a timely and appropriate response to any Office action, then the merger will be automatically dissolved (severed).
- The reissue application will be held abandoned.
- A NIRC will be issued and the Director will proceed to issue a reexamination certificate in accordance with the last action of the Office, unless further action is clearly needed in view of the difference in rules relating to reexamination and reissue proceedings.
If the applicant/patent owner in a merged proceeding files an express abandonment of the reissue application, the next Office action of the examiner will accept the express abandonment, dissolve the merged proceeding, and continue the reexamination proceeding.
V. PETITION TO MERGE REISSUE APPLICATION AND REEXAMINATION PROCEEDING OR TO STAY EITHER OF THE TWO BECAUSE OF THE EXISTENCE OF THE OTHER
No petition to merge the reissue application and the reexamination proceeding, or stay one of them, should be filed before an order granting reexamination is issued because the Office will generally, sua sponte, make a decision to merge the reissue application and the reexamination proceeding or stay one of them.
The patent owner may file a petition to merge the reissue application and the reexamination proceeding, or stay one of them because of the other, at the time the patent owner’s statement is filed or subsequent thereto in the event the Office has not acted prior to that date to merge or stay.
VI. FEES IN MERGED PROCEEDINGS
Where the proceedings have been merged and a paper is filed which requires payment of a fee (e.g., excess claim fee, extension of time fee, petition fee, appeal fee, brief fee, oral hearing fee), only a single fee need be paid.
