2640 Decision on Request
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Amendments which:
- have been filed in a copending reexamination proceeding in which the reexamination certificate has not been issued, or
- have been submitted in a reissue application on which no reissue patent has been issued, will not be considered or commented upon when deciding a request for reexamination.
The decision on the request for reexamination has as its main object either the granting or denial of the request for reexamination.
- This decision is based on whether or not “a substantial new question of patentability” or a "reasonable likelihood that the requester will prevail" is found.
A determination as to ultimate patentability/unpatentability of the claims is not made in the decision on the request; rather, it is made later, during the examination stage of the reexamination proceeding if reexamination is ordered.
- It is only necessary to establish that a substantial new question of patentability or reasonable likelihood that requester will prevail exists as to one of the patent claims in order to grant reexamination.
The second or subsequent request must be directed to the claims of the patent, as modified by any disclaimer, or by any reexamination certificate that has issued as of the time of the determination.
I. REQUEST FOR REEXAMINATION OF THE PATENT AFTER REISSUE OF THE PATENT
Where a request for reexamination is filed on a patent after a reissue patent for that patent has already issued, reexamination will be denied, because the patent on which the request for reexamination is based has been surrendered.
- Should reexamination of the reissued patent be desired, a new request for reexamination, including and based on the specification and claims of the reissue patent, must be filed.
II. SECOND OR SUBSEQUENT REQUEST FILED DURING REEXAMINATION
Where an ordered inter partes reexamination is pending, and an inter partes reexamination request is subsequently filed, the prohibition provision of 37 CFR 1.907(a) must be considered.
Once an order for inter partes reexamination has been issued, neither the third party requester of the inter partes reexamination, nor its privies, may file a subsequent request for inter partes reexamination of the same patent until an inter partes reexamination certificate has been issued, unless expressly authorized by the Director of the Office.
For inter partes reexamination requests filed prior to September 16, 2011:
- If a second or subsequent request for reexamination is filed (by any party permitted to do so) while a first reexamination is pending, the presence of a substantial new question of patentability depends on the art (patents and printed publications) cited by the second or subsequent request.
- The cited art will be reviewed for a substantial new question of patentability based on the following guidelines:
If one of the two reexaminations is an inter partes reexamination, the following possibilities exist:
- (1) An ordered inter partes reexamination is pending, and an ex parte reexamination request is subsequently filed.
- (2) An ordered inter partes reexamination is pending, and an inter partes reexamination request is subsequently filed.
- (3) An ordered ex parte reexamination is pending, and an inter partes reexamination request is subsequently filed.
In all three instances, if the subsequent request includes the art which raised a substantial new question in the earlier pending reexamination, then reexamination should be ordered only if the art cited raises a substantial new question of patentability which is different from that raised in the earlier pending reexamination.
- If the art cited in the subsequent request raises the same substantial new question of patentability as that raised in the earlier pending reexamination it is not "new," and therefore, the subsequent request should be denied.
Where the request raises a different substantial new question of patentability as to some patent claims, but not as to others, the request would be granted in part.
- If the subsequent request does not include the art which raised the substantial new question of patentability in the earlier pending reexamination, reexamination may or may not be ordered, depending on whether the different art cited raises a substantial new question of patentability.
2641 Time for Deciding Request
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