2686 Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon
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(a) In any inter partes reexamination proceeding, the patent owner shall call the attention of the Office to any prior or concurrent proceedings in which the patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings.
(b) Notwithstanding any provision of the rules, any person at any time may file a paper in an inter partes reexamination proceeding notifying the Office of a prior or concurrent proceeding in which the same patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings. Such paper must be limited to merely providing notice of the other proceeding without discussion of issues of the current inter partes reexamination proceeding.
It is important for the Office to be aware of any prior or concurrent proceedings in which a patent undergoing inter partes reexamination is or was involved, and any results of such proceedings.
- The patent owner is required to provide the Office with information regarding the existence of any such proceedings, and the results thereof, if known.
- This requirement includes supplemental examination proceedings and reviews before the Patent Trial and Appeal Board.
Ordinarily, while an inter partes reexamination proceeding is pending, third party submissions filed after the date of the order are not entered into the reexamination file or the patent file, unless the third party is a third party reexamination requester.
However, in order to ensure a complete file, with updated status information regarding prior or concurrent proceedings regarding the patent under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file, copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in the court from litigations or other proceedings involving the patent.
2686.01 Multiple Copending Reexamination Proceedings
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(a) If any reexamination is ordered while a prior inter partes reexamination proceeding is pending for the same patent and prosecution in the prior inter partes reexamination proceeding has not been terminated, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger is ordered, the merged examination will normally result in the issuance and publication of a single reexamination certificate under § 1.997.
(b) An inter partes reexamination proceeding filed under § 1.913 which is merged with an ex parte reexamination proceeding filed under § 1.510 will result in the merged proceeding being governed by §§ 1.902 through 1.997, except that the rights of any third party requester of the ex parte reexamination shall be governed by §§ 1.510 through 1.560.
I. WHEN PROCEEDINGS ARE MERGED
Where a second request for reexamination is filed and reexamination is ordered, and a first reexamination proceeding is pending, the proceedings will be merged where the Office (in its discretion) deems it appropriate to do so, to facilitate the orderly handling of the proceedings.
If the proceedings are merged, the prosecution will be conducted at the most advanced point possible for the first proceeding.
- Thus, if a final rejection (a Right of Appeal Notice) has been issued in the first proceeding, prosecution will ordinarily be reopened to consider the question of patentability presented in the second request unless the examiner concludes that no new rejection or change of position is warranted.
The patent owner will be provided with an opportunity to respond to any new rejection in a merged reexamination proceeding prior to an Action Closing Prosecution (ACP) being issued.
- Where the reexamination proceedings are merged, a single certificate will be issued and published based upon the merged proceedings.
II. WHEN PROCEEDING IS SUSPENDED
It may also be desirable in certain situations to suspend one of the proceedings for a specified period of time.
For example, a suspension of a first reexamination proceeding may be issued to allow time for the decision on the second request.
A suspension will only be granted in exceptional (extraordinary) instances because of the statutory requirements that examination proceed with “special dispatch”, and the express written approval by OPLA must be obtained.
- Suspension will not be granted when there is an outstanding Office action.
III. MERGER OF REEXAMINATIONS
A decision to merge the reexamination proceedings will require that responses/comments by the patent owner and the third party requester(s) must consist of a single response/comment paper, addressed to both files, filed in duplicate each bearing a signature, for entry in both files.
- The same applies to any other paper filed in the merged proceeding. The merger decision also will point out that both files will be maintained as separate complete files.
The merger decision should include a requirement that the patent owner maintain identical claims in both files.
- If the claims are not the same in both files at the time the merger decision is drafted, an Office action will be issued concurrently with the merger decision; the Office action will contain a rejection of the claims as being indefinite as to the content of the claims, and thus failing to particularly point out the invention, and the Office action will require a patent owner amendment placing the claims in identical form.
Patent owner’s response to the Office action to be considered to be a complete response, patent owner must include (in the proceeding(s) for which any new or amended claims are being added) the remarks that set forth the basis for having presented any new or amended claims in the proceedings.
The third party requester (in the proceedings in which the amendment is made) will then have an opportunity to comment on patent owner’s response with respect to the amendments made in the proceeding(s).
- Where the claims are already the same in both reexamination files, the decision on merger will indicate at its conclusion that an Office action will be mailed in due course, and that the patent owner need not take any action at present.
A. The Prosecution Stage, After Merger
Where merger is ordered, the patent owner is required to maintain identical amendments in the merged reexamination files for purposes of the merged proceeding.
When a “Notice of Intent To Issue Inter Partes Reexamination Certificate” (NIRC) is appropriate, a notice will be printed for the merged proceeding and scanned into the files of the merged proceeding.
IV. PROCEEDINGS NOT MERGED
“[u]nless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section…shall be conducted with special dispatch within the Office.”
- This statutory provision is grounded on the need for certainty and finality as to the question of patentability raised by the request for reexamination.
- Thus, if a second request for reexamination will unduly delay the first reexamination proceeding, the two proceedings generally will not be merged.
The instances where the Office may, or may not, merge an ongoing reexamination proceeding with a subsequent reexamination proceeding, are addressed on a case-by-case basis.
V. FEES IN MERGED PROCEEDINGS
Where the proceedings have been merged and a paper is filed which requires payment of a fee (e.g., excess claims fee, extension of time fee, petition fee, appeal fee, brief fee, oral hearing fee), only a single fee need be paid. For example, only one fee need be paid for the patent owner’s appellant brief (or that of the third party requester), even though the brief relates to merged multiple proceedings and copies must be filed for each file in the merged proceeding.
VI. PETITION TO MERGE MULTIPLE COPENDING REEXAMINATION PROCEEDINGS
No petition to merge multiple reexamination proceedings is necessary since the Office will generally, sua sponte, make a decision as to whether or not it is appropriate to merge the multiple reexamination proceedings.
- If any petition to merge the proceedings is filed prior to the order to reexamine the second request, it will not be considered but will be returned to the party submitting the same by the OPLA.
- The decision returning such a premature petition will be made of record in both reexamination files, but no copy of the petition will be retained by the Office.
The patent owner can file a petition to merge the proceedings at any time after the order to reexamine the second request.
2686.02 Copending Reexamination and Interference Proceedings
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If a patent in the process of inter partes reexamination is or becomes involved in an interference or trial before the Patent Trial and Appeal Board, the Director may suspend the inter partes reexamination, interference, or trial. The Director will not consider a request to suspend an interference or trial unless a motion under § 41.121(a)(3) of this title to suspend the interference or trial has been presented to, and denied by, an administrative patent judge and the request is filed within ten (10) days of a decision by an administrative patent judge denying the motion for suspension or such other time as the administrative patent judge may set.
The Board acquires jurisdiction over any involved file when the Board initiates a contested case. Other proceedings for the involved file within the Office are suspended except as the Board may order.
Although a patent being reexamined via a reexamination proceeding may become involved in an interference proceeding, the reexamination proceeding itself can never be involved in an interference proceeding.
MOTION TO SUSPEND INTERFERENCE UNDER 37 CFR 41.121(a)(3) PENDING THE OUTCOME OF A REEXAMINATION PROCEEDING
A miscellaneous motion to suspend an interference pending the outcome of a reexamination proceeding may be made at any time during the interference by any party thereto.
III. REQUEST FOR REEXAMINATION FILED DURING INTERFERENCE
“Any person may, at any time during the period of enforceability of a patent” file a request for inter partes reexamination.
IV. PETITION TO STAY REEXAMINATION PROCEEDING BECAUSE OF INTERFERENCE
Any petition to stay an inter partes reexamination proceeding, because of an interference, which is filed prior to the first Office action in the reexamination proceeding will not be considered, but will be returned to the party submitting the petition.
V. ACTION IN INTERFERENCE FOLLOWING REEXAMINATION
If one or more claims of a patent which is involved in an interference are canceled or amended by the issuance and publication of a reexamination certificate, the Board must be promptly notified.
- Upon issuance and publication of the reexamination certificate, the patent owner must notify the Board of such issuance.
2686.03 Copending Reexamination and Reissue Proceedings
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If a reissue application and an inter partes reexamination proceeding on which an order pursuant to § 1.931 has been mailed are pending concurrently on a patent, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an inter partes reexamination proceeding is ordered, the merged proceeding 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 inter partes reexamination proceeding during the pendency of the merged proceeding. In a merged proceeding the third party requester may participate to the extent provided under §§ 1.902 through 1.997 and 41.60 through 41.81, except that such participation shall be limited to issues within the scope of inter partes reexamination. The examiner’s actions and any responses by the patent owner or third party requester in a merged proceeding will apply to both the reissue application and the inter partes reexamination proceeding and be physically entered into both files. Any inter partes reexamination proceeding merged with a reissue application shall be concluded by the grant of the reissued patent.
When a third party requester is involved in one or more proceedings, including an inter partes reexamination proceeding, the merger of such proceedings will be accomplished so as to preserve the third party requester’s right to participate to the extent specifically provided for in these regulations. In merged proceedings involving different requesters, any paper filed by one party in the merged proceeding shall be served on all other parties of the merged proceeding.
I. TIME FOR MAKING DECISION ON MERGING OR STAYING THE PROCEEDINGS
A decision whether or not to merge the examination of a reissue application and an inter partes reexamination proceeding, or to stay one of the two, will not be made prior to the mailing of the order to reexamine the patent.
Until such time as the reexamination is ordered, the examination of the reissue application will proceed.
- A determination on the request for reexamination should not be delayed despite the existence of a copending reissue application..
II. CONSIDERATIONS IN DECIDING WHETHER TO MERGE THE REISSUE AND REEXAMINATION OR WHETHER TO STAY ONE OF THEM
The decision on whether to merge the reissue application examination and reexamination proceeding, or stay one of them, will be made on a case-by-case basis.
A. Reissue About To Issue, Reexamination Requested
If the reissue patent will issue before the determination on the reexamination request must be made, the determination on the request should normally be made 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 based 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.
Where a reissue patent has been issued, the determination on the request for reexamination should specifically point out that the determination has been made on the claims of the reissue patent and not on the claims of the original patent.
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 after an order to reexamine is issued as to whether the reissue application examination and the reexamination proceeding are to be merged, or which of the two (if any) is to be stayed.
- In this situation, no first Office action will have accompanied the order for reexamination.
C. Reexamination Proceedings Underway, Reissue Application Filed
In making a decision on whether or not to merge the reissue application examination and the reexamination proceeding, consideration will be given as to whether issues are raised in the reissue application that would not be proper for consideration in reexamination and/or not be proper for comment by the reexamination third party requester.
- If such issues are raised, merger would ordinarily not be ordered, and one of the two proceedings stayed.
III. CONDUCT OF MERGED REISSUE 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.
IV. INTER PARTES REEXAMINATION, EX PARTE REEXAMINATION, AND REISSUE APPLICATION FOR THE SAME PATENT
It will sometimes happen that an inter partes reexamination, an ex parte reexamination and a reissue application will all be copending.
- In these situations, the OPLA should be notified by, as promptly as possible after the reissue application reaches the TC, that the proceedings are ready for consideration of merger.
V. PETITION TO MERGE REISSUE APPLICATION AND INTER PARTES REEXAMINATION PROCEEDING OR TO STAY EITHER OF THE TWO BECAUSE OF THE EXISTENCE OF THE OTHER
No petition to merge the reexamination proceeding and the reissue application examination, or stay one of them, is necessary, since the Office will generally, sua sponte, make a decision to merge the reexamination proceeding and the reissue application examination or to stay one of them.
The patent owner may file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, or stay one of them because of the other, after the order to reexamine, in the event the Office has not acted prior to that date to merge or stay.
The third party requester does not have a right to file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, since the reexamination third party requester does not have any standing to request relief with respect to a reissue application, to which requester cannot be a party.
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 claims fee, extension of time fee, petition fees, appeal fees, brief fees, oral hearing fees), only a single fee need be paid.
VII. INTERVIEWS IN MERGED PROCEEDINGS
An interview which discusses the merits of a proceeding is not permitted in an inter partes reexamination proceeding.
VIII. EXAMINER’S AMENDMENT TO PLACE PROCEEDING IN CONDITION FOR ALLOWANCE IN MERGED REISSUE/INTER PARTES REEXAMINATION
As pointed out immediately above, interviews, both personal and telephone are not permitted in a merged reissue/inter partes reexamination proceeding.
- In a merged reissue/inter partes reexamination proceeding (as opposed to an application per se) all such examiner’s amendments must be made by formal examiner’s amendment accompanying the Notice of Allowability, in order to provide notice of the changes made in the patent being reexamined to both the patent owner/reissue applicant and the third party requester.
2686.04 Reexamination and Litigation Proceedings
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[Editor Note: As in effect prior to September 16, 2012]
Once an order for inter partes reexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order, unless the court before which such litigation is pending determines that a stay would not serve the interests of justice.
If a patent in the process of inter partes reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the inter partes reexamination proceeding.
2686.05 Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review
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