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2286    Ex Parte Reeexamination and Litigation Proceedings  

MPEP SECTION SUMMARY A request for ex parte reexamination can be filed “at any time.” Requests for ex parte reexamination are frequently filed where the patent for which reexamination is requested is involved in concurrent litigation. This section covers further details on ex parte reexamination and litigation proceedings. For instance, when the initial question as to whether the prior art raises a substantial new question of patentability as to a patent claim is under consideration, the existence of a final court decision of claim validity in view of the same or different prior art does not necessarily mean that no new question is present. In addition, the patent owner in an ex parte reexamination proceeding must promptly notify the Office of any Federal court decision involving the patent.

I.   COURT-ORDERED/ SANCTIONED REEXAMINATION PROCEEDING, LITIGATION STAYED FOR REEXAMINATION, OR EXTENDED PENDENCY OF REEXAMINATION PROCEEDING CONCURRENT WITH LITIGATION

Where a request for ex parte reexamination indicates:

• (A) that it is filed as a result of an order by a court or an agreement by parties to litigation which agreement is sanctioned by a court, or
• (B) that litigation is stayed for the filing of a reexamination request, all aspects of the proceeding will be expedited to the extent possible.

If reexamination is ordered, the examination following the statement by the patent owner under 37 CFR 1.530 and the reply by the requester under 37 CFR 1.535 will be expedited to the extent possible.

Office actions in these reexamination proceedings will normally set a 1-month shortened statutory period for response rather than the 2  months usually set in reexamination proceedings.

• Response periods may be extended only upon a strong showing of sufficient cause.

Action on such a proceeding will generally take precedence to any other action taken by the examiner.

II.   FEDERAL COURT DECISION KNOWN TO EXAMINER AT THE TIME THE DETERMINATION ON THE REQUEST FOR REEXAMINATION IS MADE

When the initial question as to whether the prior art raises a substantial new question of patentability as to a patent claim is under consideration, the existence of a final court decision of claim validity in view of the same or different prior art does not necessarily mean that no new question is present.

Thus, while the Office may accord deference to factual findings made by the court, the determination of whether a substantial new question of patentability exists will be made independently of the court’s decision on validity as it is not controlling on the Office.

A non-final holding of claim invalidity or unenforceability will not be controlling on the question of whether a substantial new question of patentability is present.

A final holding of claim invalidity or unenforceability (after all appeals), however, is controlling on the Office.

• In such cases, a substantial new question of patentability would not be present as to the claims held invalid or unenforceable.

III.   REEXAMINATION WITH CONCURRENT LITIGATION BUT ORDERED PRIOR TO FEDERAL COURT DECISION

In view of the statutory mandate to make the determination on the request within 3 months, the determination on the request based on the record before the examiner will be made without awaiting a decision by the Federal Court.

IV.   FEDERAL COURT DECISION ISSUES AFTER EX PARTE REEXAMINATION ORDERED

The patent owner in an ex parte reexamination proceeding must promptly notify the Office of any Federal court decision involving the patent.

• Where the reexamination proceeding is currently pending and the court decision issues, or the Office becomes aware of a court decision relating to a pending reexamination proceeding, the order to reexamine is reviewed to see if a substantial new question of patentability is still present.
• If no substantial new question of patentability is still present, the reexamination is terminated.

V.   LITIGATION REVIEW AND APPROVAL

In order to ensure that the Office is aware of prior or concurrent litigation, the examiner is responsible for conducting a reasonable investigation for evidence as to whether the patent for which ex parte reexamination is requested has been or is involved in litigation.

VI.   FEDERAL COURT DECISION CONTROLLING IN REEXAMINATION PROCEEDING

Once a federal court has ruled upon the merits of a patent and an ex parte reexamination is still appropriate under the guidelines set forth above, the federal court decision will be considered controlling and will be followed as to claims finally held to be invalid by the court.

MPEP SECTION SUMMARY During the pendency of an inter partes review, post grant review or covered business method review ("PTAB Review Proceeding"), if another proceeding (e.g., a reexamination proceeding) or matter involving the patent is before the Office, the Director may determine the manner in which the PTAB Review Proceeding and the other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of such matter or proceeding.

 

» 2287 Conclusion of Ex Parte Reexamination Proceeding