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2284    Copending Ex Parte Reexamination and Interference Proceedings

MPEP SECTION SUMMARY

A patent being reexamined in an ex parte reexamination proceeding may be involved in an interference proceeding with at least one application, where the patent and the application are claiming the same patentable invention, and at least one of the application’s claims to that invention are patentable to the applicant. The general policy of the Office is that a reexamination proceeding will not be delayed, or stayed, because of an interference or the possibility of an interference.

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. This section covers further details on copending ex parte reexamination and interference proceedings.


37 C.F.R. 1.565 Concurrent office proceedings which include an ex parte reexamination proceeding.

(a) In an ex parte reexamination proceeding before the Office, the patent owner must inform the Office of any prior or concurrent proceedings in which the patent is or was involved such as interferences, reissues, ex parte reexaminations, inter partes reexaminations, or litigation and the results of such proceedings. See § 1.985 for notification of prior or concurrent proceedings in an inter partes reexamination proceeding.

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(e) If a patent in the process of ex parte reexamination is or becomes involved in an interference, the Director may suspend the reexamination or the interference. The Director will not consider a request to suspend an interference unless a motion (§ 41.121(a)(3) of this title) to suspend the interference 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. For concurrent inter partes reexamination and interference of a patent, see § 1.993.


I.   ATTEMPTING TO PROVOKE AN INTERFERENCE WITH A PATENT INVOLVED IN A REEXAMINATION PROCEEDING

When an amendment is filed in a pending application seeking to provoke an interference with a patent involved in a reexamination proceeding, the applicant must comply with 37 CFR 41.202(a), including identifying the patent under reexamination with which interference is sought.

  • The corresponding application claims may be rejected on any applicable ground including, if appropriate, the prior art cited in the reexamination proceeding

If the interference is not authorized (e.g., resolution of an issue in the reexamination proceeding is necessary to the interference), further action on the application should be suspended until the certificate on the reexamination proceeding has been issued and published.

Once the reexamination certificate has issued and published, the examiner should review the certificate to see if it makes any changes in the patent claims and then evaluate whether the patent still contains claims which interfere with claims of the application.

  • If the claims do interfere, then the examiner should propose an interference.


II.   MOTION/REQUEST TO SUSPEND INTERFERENCE 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.

  • The motion must be presented to the administrative patent judge who will decide the motion based on the particular fact situation.
  • A request to stay an interference under 37 CFR 1.565(e) will be decided by the Chief Administrative Patent Judge of the Board.


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 reexamination.

  • The patent owner must notify the Board that a request for reexamination was filed, within 20 days of receiving notice of the request having been filed.


IV.   INTERFERENCE DECLARED WHILE REEXAMINATION PROCEEDING IS ONGOING

The patent owner in a reexamination proceeding before the Office is required to notify the Office when the patent being reexamined becomes involved in an interference.

  • To do so, the patent owner must file in the reexamination proceeding a paper giving notice of the interference proceeding.


V.   PETITION TO STAY REEXAMINATION PROCEEDING BECAUSE OF INTERFERENCE

Any petition to stay a reexamination proceeding, because of an interference, which is filed prior to the determination and order to reexamine will not be considered, but will be returned to the party submitting the same.

  • The decision returning such a premature petition will be made of record in the reexamination file, but no copy of the petition will be retained by the Office.
  • A petition to stay the reexamination proceeding because of the interference may be filed by the patent owner as a part of the patent owner’s statement under 37 CFR 1.530 or subsequent thereto.


VI.   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 administrative patent judge thereof.

 

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