2646 Decision Ordering Reexamination
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[Editor Note: As in effect prior to September 16, 2011.]
If, in a determination made under section 312(a), the Director finds that a substantial new question of patentability affecting a claim of a patent is raised, the determination shall include an order for inter partes reexamination of the patent for resolution of the question. The order may be accompanied by the initial action of the Patent and Trademark Office on the merits of the inter partes reexamination conducted in accordance with section 314.
[Editor Note: As in effect beginning September 16, 2011 and ending September 15, 2012.]
If, in a determination made under section 312(a), the Director finds that it has been shown that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request, the determination shall include an order for inter partes reexamination of the patent for resolution of the question. The order may be accompanied by the initial action of the Patent and Trademark Office on the merits of the inter partes reexamination conducted in accordance with section 314.
[Editor Note: As in effect for a request filed prior to September 16, 2011.]
(a) If a substantial new question of patentability is found, the determination will include an order for inter partes reexamination of the patent for resolution of the question.
(b) If the order for inter partes reexamination resulted from a petition pursuant to § 1.927, the inter partes reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.923.
[Editor Note: As in effect for a request filed beginning September 16, 2011 and ending September 15, 2012.]
(a) If it is found that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request, the determination will include an order for inter partes reexamination of the patent for resolution of the question of whether the requester will prevail.
(b) If the order for inter partes reexamination resulted from a petition pursuant to § 1.927, the inter partes reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.923.
If a request for reexamination is granted, the examiner’s decision granting the request will conclude by stating:
- For a request filed prior to September 16, 2011 - that a substantial new question of patentability (SNQ) has been raised affecting a claim of a patent.
- For a request filed beginning September 16, 2011 and ending September 15, 2012 - that there is a reasonable likelihood that the requester will prevail (RLP) with respect to at least one of the claims challenged in the request.
In the examiner’s decision, the examiner must identify at least one SNQ/RLP and explain how the prior art patents and/or printed publications establish that SNQ/RLP.
- In a simple case, this may entail adoption of the reasons provided by the third party requester.
II. PETITION TO VACATE THE ORDER GRANTING REEXAMINATION
A substantive determination by the Director of the Office to institute reexamination pursuant to a finding that the prior art patents or printed publications raise a substantial new question of patentability is not subject to review by petition or otherwise.
There is no right to petition, as an “ultra vires” action by the Office, if the finding of a SNQ/RLP is based on reasons other than those urged by the third party requester (or based on less than all the grounds urged by the third party requester).
"Appropriate circumstances" exist to vacate the order granting reexamination where, for example:
- (A) the reexamination order is facially not based on prior art patents or printed publications;
- (B) reexamination is prohibited under 37 CFR 1.907;
- (C) all claims of the patent were held to be invalid by a final decision of a federal court after all appeals;
- (D) reexamination was ordered for the wrong patent; or
- (E) reexamination was ordered based on a duplicate copy of the request.
While a patent owner may file a petition under 37 CFR 1.181(a)(3) to vacate a reexamination order as "ultra vires," such a petition should be rare, and will be granted only in a situation where the Office acted in "brazen defiance" of its statutory authority in granting the reexamination order.
