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2283    Multiple Copending Ex Parte Reexamination Proceedings

MPEP SECTION SUMMARY In order for a second or subsequent request for ex parte reexamination to be granted, a substantial new question of patentability must be raised by the art (patents and/or printed publications) cited in the second or subsequent request for reexamination. This section covers multiple copending ex parte reexamination proceedings including when proceedings are merged, not merged, suspended, and the prosecution stage after the merger. In addition, fees in merged proceedings are covered as well as how petitions to merge multiple reexamination proceedings are not necessary.

I.   PROCEEDINGS MERGED

Where a second request for reexamination is filed and reexamination is ordered, and a first reexamination proceeding is pending, 37 CFR 1.565(c) provides that the proceedings will usually be merged.

If the proceedings are merged, the prosecution will then continue at the most advanced point possible for the first proceeding.

• It should be noted that if a final rejection has been issued in the first proceeding, prosecution will be ordinarily be reopened where any of the new patents or printed publications presented in the second request are applied to the merged proceeding in a new ground of rejection.

The patent owner will be provided with an opportunity to respond to any new rejection in a merged reexamination proceeding prior to the action being made final.

II.   WHEN PROCEEDING IS SUSPENDED

It may also be desirable in certain situations to suspend a proceeding for a short and specified period of time.

• For example, a suspension of a first reexamination proceeding may be issued to allow time for the patent owner’s statement and the requester’s reply in a second proceeding prior to merging.
• A suspension will only be granted in extraordinary instances, because of the statutory requirements that examination proceed with “special dispatch.”
• Suspension will not be granted when there is an outstanding Office action.

III.   MERGER OF REEXAMINATIONS

The second request (i.e., Request 2) should be processed as quickly as possible and assigned to the same examiner to whom the first request (i.e., Request 1) is assigned.

• If neither request for reexamination has been ordered, the examiner must address each request within three months of its filing date.

IV.   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 Ex Parte Reexamination Certificate” (NIRC) is appropriate, a notice will be printed for the merged proceeding and scanned into the files of the merged proceeding.
• Both reexamination files will then be processed.

V.   PROCEEDINGS NOT MERGED

Pursuant to 35 U.S.C. 305, “[a]ll reexamination proceedings under this section…will 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.

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, fee for request for extension of time, 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 an appeal brief even though the brief relates to merged multiple proceedings and copies must be filed for each file in the merged proceeding.

VII.   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 determination and order to reexamine on the second request, it will not be considered but will be returned to the party submitting the same by the CRU Director.

While the patent owner can file a petition to merge the proceedings at any time after the order to reexamine on the second request, the better practice is to include any such petition with the patent owner’s statement, in the event the CRU Director has not acted prior to that date to merge the multiple reexamination proceedings.

 

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