Chapter 2600: Optional Inter Partes Reexamination
This chapter discusses inter partes reexamination proceedings. These involve the initiator of the reexamination as well as the patent holder and an examiner. Many of the characteristics of an inter partes reexamination proceeding are identical to that of the ex parte reexamination proceedings discussed in chapter 2200. The major differences with inter partes proceedings are outlined here in this chapter.
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The Executive Summaries from the main chapter sections have been copied here for your convenience (subsections are not included here). They will help you remember what each main section of the Guidebook (MPEP) covers as you answer the questions from the quizzes above.
This section provides an introduction to optional inter partes reexaminations. It covers the history of these proceedings. Section 6(c) of the AIA replaced the inter partes reexamination process, effective September 16, 2012, with a new inter partes review process, such that on or after September 16, 2012 the Office no longer entertains original requests for inter partes reexamination but instead accepts petitions to conduct inter partes review. Further details on inter partes reexamination requests is covered in this section.
This section covers the processing of prior art citations during an inter partes reexamination proceeding.
The inter partes reexamination statute and rules permit any third party requester to request, prior to September 16, 2012, inter partes reexamination of a patent which issued from an original application filed on or after November 29, 1999, where the request contains certain elements and is accompanied by the required fee. Further details of an inter partes reexamination are discussed here including the basic characteristics of these proceedings.
For instance, any third party requester can request inter partes reexamination at any time during the period of enforceability of the patent. In addition, prior art considered during reexamination is limited to prior patents or printed publications. Further characteristics are outlined in this section.
Where an attorney or agent files a request for an inter partes reexamination for an identified client (the third party requester), he or she may act under a power of attorney from the client or may act in a representative capacity.
While the filing of the power of attorney is desirable, processing of the reexamination request will not be delayed due to its absence.
All correspondence for a third party requester is addressed to the representative of the requester, unless a specific indication is made to forward correspondence to another address. A third party requester may not be represented during a reexamination proceeding by an attorney or other person who is not registered to practice before the Office.
This section discusses details on the withdrawal of an attorney or agent. For instances, the Office requires the practitioner(s) to certify that they have given reasonable notice to the client, prior to the expiration of the response period that they intend to withdraw from employment. Additional requirements are explained in this section.
This section covers the correspondence rules of inter partes reexaminations. These proceedings may not be sent by facsimile transmission. However, they may be submitted by certificate of mailing and 'Express Mail' mailing procedures.
After filing of a request for inter partes reexamination, no papers directed to the merits of the reexamination other than:
- citations of patents or printed publications,
- another complete request, or
- notifications pursuant to MPEP § 2686, should be filed with the Office prior to the date of the first Office action in the reexamination proceeding.
Request papers that fail to satisfy all the requirements of 37 CFR 1.915 are incomplete and will not be granted a filing date. This section further covers incomplete requests for inter partes reexaminations including the Office procedure where the request fails to comply with the requirements for a filing date.
In some instances, it may not be possible to deliver mail to the patent owner because no current address is available.
- If all efforts to correspond with the patent owner fail, the reexamination proceeding will proceed without the patent owner.
- The publication in the Official Gazette of the notice of the filing of the inter partes reexamination request will serve as constructive notice to the patent owner in such an instance.
Reexamination files are open to inspection by the general public by way of the Public PAIR via the USPTO Internet site.
This section covers details on the fees due for an inter partes reexamination proceeding. All petitions filed relating to a reexamination proceeding require fees.
The patent claims in effect at the time of the determination will be the basis for deciding whether reexamination is to be ordered. This section covers further details on the decision on the request for reexamination. It discusses how a request for reexamination of the patent after the reissue of the patent will be denied because the patent on which the request for reexamination is based has been surrendered. It also covers the second or subsequent request filed during reexamination.
The determination of whether or not to reexamine must be made (completed and mailed) not later than three (3) months after the filing date of a request. If the 3-month period ends on a Saturday, Sunday or Federal holiday within the District of Columbia, then the determination must be mailed by the preceding business day.
This section covers the criteria for deciding a request. For reexaminations filed prior to September 16, 2011, the presence or absence of “a substantial new question of patentability” determines whether or not reexamination is ordered. For reexaminations filed on or after September 16, 2011, and prior to September 16, 2012 whether or not the request and the prior art establish a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request determines whether or not reexamination is ordered. The reasonable likelihood standard requires a showing that is "elevated" from that of the substantial question of patentability question standard.
This section provides further details on the criteria for deciding an inter partes reexamination. Both the policy as to substantial new question of patentablity in specific situations and the policy where a federal court decision has been issued on the patent are discussed.
The claims of the patent in effect at the time of the determination will be the basis for deciding whether “a substantial new question of patentability” or "a reasonable likelihood that the requester will prevail" is present. This section further discusses the claims considered in deciding the request.
The determination of whether or not “a substantial new question of patentability” or "a reasonable likelihood that the requester will prevail" is present can be based upon any prior art patents or printed publications.
The examiner is not limited in making the determination based on the patents and printed publications relied upon in the request. The examiner can find “a substantial new question of patentability” or "a reasonable likelihood that the requester will prevail" based upon the prior art patents or printed publications relied upon in the request, a combination of the prior art relied upon in the request and other prior art found elsewhere, or based entirely on different patents or printed publications.
This section covers the decision ordering reexamination. The decision will identify all claims and issues, identify the patents and/or printed publications relied upon, and provide a brief statement of the rationale supporting each SNQ/RLP.
A substantive determination by the Director of the Office to institute reexamination pursuant to a finding that the prior art patents or printed publications raise a substantial new question of patentability is not subject to review by petition or otherwise. This section covers further details on petitions to vacate the order granting the reexamination.
The request for reexamination will be denied if a SNQ/RLP is not found based on patents or printed publications. If the examiner concludes that no SNQ/RLP has been raised, the examiner should prepare a decision denying the reexamination request. The concluded reexamination file (electronic or paper) containing the request and the decision denying the request becomes part of the patent’s record.
If the examiner’s position is to deny reexamination, the examiner prepares for and sets up a panel review conference to discuss the issuance of a decision denying reexamination.
If the request for the inter partes reexamination is denied, the applicant has time to seek review of the examiner's determination to refuse the reexamination. More details on the petition from denial request are presented in this section.
Once inter partes reexamination is ordered, a first Office action on the merits will be issued (the first Office action will ordinarily be mailed with the order), and prosecution will proceed. Each time the patent owner responds to an Office action, the third party requester may comment on the Office action and the patent owner response, and thereby participate in the proceeding.
Typically, the primary source of prior art reviewed by the examiner in the reexamination will be the patents and printed publications cited in the request for inter partes reexamination. Further details on the exact patents and printed publications the examiner will also need to consider are outlined in this section.
This section also discusses what happens after the Notice of Intent to Issue Inter Partes Rexamination Certificate (NIRC) has been mailed. Essentially, once the NIRC has been mailed, the reexamination proceeding must proceed to publication of the Reexamination Certificate as soon as possible.
The reexamination request must provide a listing of the patents and printed publications (discussed in the request).
The examiner must list all prior art patents or printed publications which have been cited in the decision on the request, applied in making rejections or cited as being pertinent during the reexamination proceedings.
Such prior art patents or printed publications may have come to the examiner’s attention because they were of record in the patent file due to a prior art submission which was received prior to the date of the order; of record in the patent file as result of earlier examination proceedings as to the patent; discovered by the examiner during a prior art search; or submitted pursuant to 37 CFR 1.948.
Inter partes reexamination differs from ex parte reexamination in matters of procedure, such as when the third party requester can participate, the types of Office actions and the timing of issuance of the Office actions, and the requirement for identification of the real party in interest.
Inter partes reexamination also differs from ex parte reexamination in the estoppel effect it provides as to the third party requesters and when the initiation of a reexamination is prohibited. Inter partes reexamination does not, however, differ from ex parte reexamination as to the substance to be considered in the proceeding.
This section discusses prior art patents or printed publications and double patenting, compliance with 35 U.S.C. 112, the criteria for enlargement of the scope of the claims, and other matters related to the scope of inter partes reexamination.
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.
In view of the requirement for “special dispatch,” all reexamination proceedings will be “special” throughout their pendency in the Office.
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 for taking any action by a patent owner in an inter partes reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. This section provides further details on extensions of time for the patent owner's response.
This section covers the patent owner's response to the Office action. It includes a discussion on the substance of the response, procedural considerations of the response, and the supplemental response to the Office action.
If the patent owner in an inter partes reexamination proceeding fails to file a timely and appropriate response to any Office action and no claims are allowable, then the prosecution of the reexamination proceeding is terminated, and a certificate under 37 CFR 1.997 is issued canceling all claims of the patent.
This section covers further details on both petitions based on unavoidable delay and unintentional delay as well as renewed petitions.
This section covers details on the examiner actions following a response, comments or the expiration of time for the response or comments. Each of the following are discussed; examiner issues action on merits that do not close prosecution, examiner issues action closing prosecution (ACP), and panel review.
This section covers patent owner comments and amendments after Action Closing Prosecution (ACP). After an ACP, the patent owner has one opportunity to file written comments limited to the issues raised in the reexamination proceeding and to present a proposed amendment to the claims. This section discusses the time for making patent owner submissions which is normally 30 days or one month (whichever is longer) from the mailing date of the ACP.
Once an ACP that is not premature has been entered in a reexamination proceeding, the patent owner no longer has a right to unrestricted further prosecution. Where the patent owner files comments and/or a proposed amendment, the third party requester may once file comments responding to the patent owner’s comments, and/or proposed amendment, and/or the issues raised in the ACP. If the patent owner does not timely file comments and/or a proposed amendment, then the third party requester is precluded from filing comments. Lastly, if the patent owner believes the ACP is premature, they may submit a petition under 37 C.F.R. 1.181 in addition to comments.
This section covers examiner considerations of submissions after ACP and further actions. For instance, the patent owner is given 30 days or one month, whichever is longer, to make the submission after Action Closing Prosecution (ACP). In addition, this section covers options as to which action to issue and the action taken by an examiner in reference to the submission. A patent owner cannot, as a matter of right, amend claims rejected in the ACP, add new claims after an ACP, or reinstate previously canceled claims.
This section covers appeals in inter partes reexaminations. An appeal cannot be taken by parties to the reexamination until a Right of Appeal Notice (RAN) has been issued. Once a RAN has been issued, the patent owner and any third party requester will have a time period of one month or thirty days (whichever is longer) to file a notice of appeal. The time for filing a notice of appeal may not be extended. Further details are covered.
This section covers details of the appellant brief. In order to file an appellant brief, it is necessary to have first filed a timely and proper notice of appeal or notice of cross appeal.
Each party that filed a timely and proper notice of appeal or notice of cross appeal must then file its appellant brief with fee by the later of the following periods no later than two months from the date of the last-filed notice of appeal or cross appeal; or if a patent owner or third party requester is entitled to file an appeal or cross appeal but fails to timely do so, no later than two months from the expiration of the time for filing (by the last party entitled to do so) such notice of appeal or cross appeal.
This section also covers rules concerning amendments to the brief. For instance, the brief is not to include any new or non-admitted (non-entered) amendment, or new or non-admitted (non-entered) affidavit or other evidence.
All appellant and respondent briefs will be processed by the Board and the reexamination proceeding then forwarded to the Central Reexamination Unit (CRU). The CRU will forward the reexamination proceeding to the examiner after all appellant and respondent briefs have been filed or after the time for filing them has expired.
As long as at least one timely appellant brief has been filed, the case must be considered for appeal by the examiner.
If the examiner reaches the conclusion that the appeal should not go forward, no appeal conference is held. Prosecution is reopened, and the examiner issues of a new non-final Office action.
The examiner should furnish each party to the reexamination (even a party that has not filed an appellant nor respondent brief) with a comprehensive examiner’s answer that provides a written statement in answer to each appellant brief and each respondent brief.
The examiner’s answer may incorporate from any of the briefs the most accurate and most comprehensive information. It should contain a response to the allegations or arguments made in all of the briefs and should call attention to any errors in an appellant’s copy of the claims. If a ground of rejection or reason for patentability is not addressed in the examiner’s answer, the proceeding will be remanded by the Board to the examiner.
In the examiner’s answer, each appellant is given a period of one month from the mailing date of the examiner’s answer within which to file a rebuttal brief in response to the issues raised in the examiner’s answer and/or in the respondent brief of an opposing party. The one month period may not be extended.
The rebuttal brief must clearly identify each issue, and point out where the issue was raised in the examiner’s answer and/or in the respondent brief.
In addition, the rebuttal brief must be limited to issues raised in the examiner’s answer or in any respondent brief.
If an appellant or a respondent desires an oral hearing in an appeal of an inter partes reexamination proceeding, he/she must file a written request for such hearing, accompanied by the fee, within two months after the date of the examiner’s answer. There is no extension of the time for requesting a hearing.
No appellant or respondent will be permitted to participate in an oral hearing, unless he or she has requested an oral hearing and submitted the fee.
After consideration of the record of the inter partes reexamination proceeding, including all briefs and the examiner’s answer, the Board of Patent Appeals and Interferences (Board) issues its decision, affirming the examiner in whole or in part, or reversing the examiner’s decision, sometimes also setting forth a new ground of rejection. Where there is reason to do so, the Board will sometimes remand the reexamination proceeding to the examiner for further consideration, prior to rendering a decision.
This section covers further details of the Board decision including new grounds of rejection and review of Board decision by petition.
This section covers the action following the decision by the Board. When a decision by the Board of Patent Appeals and Interferences on appeal has become final for judicial review, prosecution of the inter partes reexamination proceeding will not be reopened or reconsidered by the primary examiner except without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
After an appeal to the Board has been decided, a copy of the decision is mailed to all parties to the reexamination proceeding, and the original of the decision is placed in the file.
This section covers when the Board affirms, reverses a rejection, or affirms-in-part, a new ground of rejection, when the Board reverses the examiner's determination not to make a proposed rejection, and remand by the Board.
This section covers an appeal to the courts. A patent owner and/or a third party requester in an inter partes reexamination proceeding who is a party to an appeal to the Board and who is dissatisfied with the decision of the Board may appeal to the Federal Circuit. The patent owner and/or third party requester may not appeal to the Federal Circuit until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable to the Federal Circuit. The steps for appealing to the Federal Circuit are covered here.
An appeal to a U.S. District Court is no longer available to the patent owner and the third party requester in an inter partes reexamination proceeding.
Duty of disclosure considerations as to inter partes reexamination proceedings parallel those of ex parte reexamination proceedings.
There will be no interviews in an inter partes reexamination proceeding which discuss the merits of the proceeding. The Office may, in its sole discretion, telephone a party as to matters of completing or correcting the record of a file, where the subject matter discussed does not go to the merits of the reexamination proceeding.
This section discusses how the Office should be notified of the existence of concurrent proceedings. It covers multiple copending reexamination proceedings, copending reexamination and interference proceedings, copending reexamination and reissue proceedings, reexamination and litigation proceedings, and reexamination and inter partes review, post-grant review, and covered business method patent review proceedings.
Upon conclusion of the inter partes reexamination proceeding, the examiner must complete a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). If appropriate, an examiner’s amendment will also be prepared. Where the claims are found patentable, reasons must be given for each claim found patentable.
This section covers further details on the NIRC such as instances where a NIRC would be appropriate, preparation of the NIRC action, examiner's amendment to place the proceeding in condition for notice of intent to issue an inter partes reexamination certificate, reasons for patentability and/or confirmation, preparation of the case for publication, and reexamination proceedings in which all the claims are canceled.
Since abandonment is not possible in a reexamination proceeding, an inter partes reexamination certificate will be issued at the conclusion of the proceeding for each patent in which a reexamination proceeding has been ordered, except where the reexamination has been concluded by vacating the reexamination proceeding, or by the grant of a reissue patent on the same patent in which case the reissue patent also serves as the reexamination certificate. Further details on the issuance of the inter partes reexamination certificate are discussed in this section.
An inter partes reexamination certificate is issued at the close of each inter partes reexamination proceeding in which reexamination has been ordered, unless the inter partes reexamination proceeding is merged with a reissue application. In that situation, the inter partes reexamination proceeding is concluded by the grant of a reissue patent, the reissue patent will constitute the reexamination certificate. Further details on the format of the inter partes reexamination certificate are covered in this section.
The situation of intervening rights resulting from inter partes reexamination proceedings parallels the intervening rights situation resulting from reissue patents or from ex parte reexamination proceedings.
Inter partes reexamination proceedings may be concluded in one of three ways:
- The prosecution of the reexamination 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 1.997(b) with the issuance of a reexamination certificate.
- The proceeding may be concluded under 37 CFR 1.997(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.
When 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.”
A reexamination of a reexamination is processed in accordance with the guidelines set forth in MPEP § 2295 regardless of whether the reexamination certificate was issued for an ex parte reexamination or an inter partes reexamination, and regardless of whether the pending reexamination proceeding is an ex parte reexamination or an inter partes reexamination.
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