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 2659    Res Judicata and Collateral Estoppel in Reexamination Proceedings  

MPEP SECTION SUMMARY Claims finally held invalid by a Federal Court, after all appeals, will be withdrawn from consideration and not reexamined during a reexamination proceeding. Accordingly, a rejection on the grounds of res judicata for such withdrawn claims will not be appropriate during reexamination.

MPEP SECTION SUMMARY In view of the requirement for “special dispatch,” all reexamination proceedings will be “special” throughout their pendency in the Office.

 

MPEP SECTION SUMMARY This section includes a detailed outline of the time periods for response and comments for the various stages of an inter partes reexamination proceeding. For instance, after an Office action that is not an Action Closing Prosecution (non-ACP Office action), the patent owner may file a patent owner’s response within the time for response set in the non-ACP Office action. The time period set for response will normally be two (2) months from the mailing date of the action.

The time periods for response and comments for the various stages of an inter partes reexamination proceeding are as follows:

• After an Office action that is not an Action Closing Prosecution (non-ACP Office action).
• (1) Patent owner may file a patent owner’s response within the time for response set in the non-ACP Office action. The time period set for response will normally be two (2) months from the mailing date of the action.
• (2) Where patent owner files a timely response to the non-ACP Office action, the third party requester may once file written comments addressing issues raised by the Office action or by the patent owner response to the action. The third party requester’s written comments must be submitted within 30 days from the date of service of the patent owner’s response on the third party requester. The date of service can be found on the Certificate of Service that accompanies the patent owner’s response.
• After an Office letter indicating that a response by the patent owner is not proper.
• After an Action Closing Prosecution (ACP).
• Appeal to the Board after the examiner issues Right of Appeal Notice.
• (1) After the examiner issues a Right of Appeal Notice (RAN), the patent owner and the third party requester may each file a notice of appeal within 30 days or one month (whichever is longer) from the mailing date of the RAN. The time for filing a notice of appeal cannot be extended.
• (2) A patent owner who has not filed a timely notice of appeal may file a notice of cross appeal (with respect to any decision adverse to the patentability of any claim) within fourteen days of service of a third party requester’s notice of appeal.
• After an Office notification of defective notice of appeal or notice of cross appeal (to the Board).
• Filing of briefs after notice of appeal or notice of cross appeal (to the Board).
• (1) Each party that filed a notice of appeal or notice of cross appeal may file an appellant brief and fee within two months after the last-filed notice of appeal or cross appeal. Additionally, if any party to the reexamination is entitled to file an appeal or cross appeal but fails to timely do so, the appellant brief and fee may be filed within two months after the expiration of time for filing (by the last party entitled to do so) of the notice of appeal or cross appeal.
• (2) Once an appellant brief has been properly filed, an opposing party may file a respondent brief and fee within one month from the date of service of the appellant brief.
• (3) The times for filing appellant and respondent briefs may not be extended.

• After an Office notification of non-compliance of appellant brief or respondent brief.
• Rebuttal brief after the examiner issues an examiner’s answer.
• Oral Hearing.
• Appeal to Court.
• Extensions of Time.
• Litigation.

 

» 2665 Extension of Time for Patent Owner Response