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2290    Format of Ex Parte Reexamination Certificate

MPEP SECTION SUMMARY

An ex parte reexamination certificate is issued at the close of each ex parte reexamination proceeding in which reexamination has been ordered, except for the following two cases:

  • The ex parte reexamination proceeding is merged with a reissue application. If the ex parte reexamination proceeding is concluded by the grant of a reissue patent, the reissue patent will constitute the reexamination certificate;
  • The ex parte reexamination proceeding is merged with an inter partes reexamination proceeding. If the ex parte reexamination proceeding is to be concluded as part of a merged proceeding containing an inter partes reexamination proceeding, a single reexamination certificate will issue for both proceedings.



2293    Intervening Rights

MPEP SECTION SUMMARY

The situation of intervening rights resulting from reexamination proceedings parallels the intervening rights situation resulting from reissue proceedings, and the rights detailed in 35 U.S.C. 252 apply equally in reexamination and reissue situations.

 

35 U.S.C. 307 Certificate of patentability, unpatentability, and claim cancellation.

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(b) Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination proceeding will have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the same, prior to issuance of a certificate under the provisions of subsection (a) of this section.



2294    Concluded Reexamination Proceedings

MPEP SECTION SUMMARY

Ex parte reexamination proceedings may be concluded in one of four ways:

  • The prosecution of the proceeding may be brought to an end, and the proceeding itself concluded, by a denial of reexamination, or vacating the reexamination proceeding, or terminating the reexamination proceeding. (In these instances, no Reexamination Certificate is issued).
  • The proceeding may be concluded under 37 CFR 1.570(b) with the issuance of a Reexamination Certificate.
  • The proceeding may be concluded under 37 CFR 1.570(e) where the reexamination proceeding has been merged with a reissue proceeding and a reissue patent is granted; an individual reexamination certificate is not issued, but rather the reissue patent serves as the certificate.
  • The proceeding may be concluded under 37 CFR 1.997(b) where the ex parte reexamination proceeding has been merged with an inter partes reexamination proceeding and a single reexamination certificate is issued.



2295    Reexamination of a Reexamination  

MPEP SECTION SUMMARY

This section provides guidance for the processing and examination of a reexamination request filed on a patent for which a reexamination certificate has already issued, or a reexamination certificate issues on a prior reexamination, while the new reexamination is pending. This reexamination request is generally referred to as a “Reexamination of a reexamination.”

The reexamination request is to be considered based on the claims in the patent as modified by the previously issued reexamination certificate, and not based on the original claims of the patent.


I.   PRIOR REEXAMINATION MATURES TO CERTIFICATE WHILE LATER REEXAMINATION IS PENDING

If a second request for reexamination of a patent is filed where the certificate for the first reexamination of the patent will issue within 3 months from the filing of the second request, the proceedings normally will not be merged.

  • If the certificate for the first reexamination proceeding will issue before the decision on the second request must be decided, the reexamination certificate is allowed to issue.


II.   PATENT OWNER’S SUBMISSION OF AMENDMENTS

Any amendment to the claims (or specification) of the reexamination proceeding must be presented as if the changes made to the patent text via the reexamination certificate are a part of the original patent.

Example:

For example, an amendment in a “reexamination of a reexamination” might include italicized text of claim 1 of the reexamination certificate as underlined (or italicized) in the copy of claim 1 submitted in the amendment. This would indicate that text already present in the patent (via the reexamination certificate) is again being added. This would be an improper amendment, and as such, an “informal submission.” Accordingly, the examiner would notify the patent owner that the amendment does not comply with 37 CFR 1.530.