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1449.01 Concurrent Office Proceedings [R-5] - 1400 Correction of Patents
1449.01 Concurrent Office Proceedings [R-5]
I. CONCURRENT REEXAMINATION PROCEEDINGS:
37 CFR 1.565(d) provides that if "a reissue application and an ex parte reexamination proceeding on which an order pursuant to 37 CFR 1.525 has been mailed are pending concurrently on a patent, a decision will normally be made to merge the two proceedings or to suspend one of the two proceedings." 37 CFR 1.991 provides that if "a reissue application and an inter partes reexamination proceeding on which an order pursuant to 37 CFR 1.931 has been mailed are pending concurrently on a patent, a decision may be made to merge the two proceedings or to suspend one of the two proceedings". If an examiner becomes aware that a reissue application and an ex parte or inter partes reexamination proceeding are both pending for the same patent, he or she should >immediately< inform the Technology Center (TC) >or Central Reexamination Unit (CRU)< Special Program Examiner (SPRE)*.
Pursuant to 37 CFR 1.177, a patent owner may file more than one reissue application for the same patent. If an examiner becomes aware that multiple reissue applications are pending for the same patent, and an ex parte or inter partes reexamination proceeding is pending for the same patent, he or she should >immediately< inform the TC SPRE*.
Where a reissue application and a reexamination proceeding are pending concurrently on a patent, and an order granting reexamination has been issued for the reexamination proceeding, the Office of Patent Legal Administration (OPLA) must be notified that the proceedings are ready for a decision as to whether to merge the reissue and the reexamination, or stay one of the two. See MPEP § 2285 for the procedure of notifying OPLA and general guidance, if a reissue application and an ex parte reexamination proceeding are both pending for the same patent, and an inter partes reexamination proceeding is not involved. See MPEP § 2686.03 where a reissue application and an inter partes reexamination proceeding are both pending for the same patent, regardless of whether an ex parte reexamination proceeding is also pending.
Where a reissue application and a reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of the concurrent proceeding. 37 CFR § 1.178(b), 37 CFR 1.565(a), and 37 CFR 1.985(a). The patent owner should file in the reissue application, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.178(b) in order to alert the Office of the existence of the reexamination proceeding on the same patent. See MPEP § 1418. In addition, the patent owner should file in the reexamination proceeding, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.565(a) or 1.985(a) (depending on whether the reexamination proceeding is an ex parte reexamination proceeding or an inter partes reexamination proceeding) to provide a notification to the Office in the reexamination proceeding of the existence of the two concurrent proceedings.
The patent owner may file a petition under 37 CFR 1.182 in a reissue application to merge the reissue application with the reexamination proceeding, or to stay one of the proceedings because of the other. This petition must be filed after the issuance of the order to reexamine (37 CFR 1.525, 37 CFR 1.931) in the reexamination proceeding. If the petition is filed prior to the reexamination order, it will not be considered, and will be returned to the patent owner by the TC >or CRU< Director. If the petition is filed after the issuance of the order to reexamine, the petition and the files for the reissue application and the reexamination proceeding will be forwarded to OPLA for decision.
II. CONCURRENT INTERFERENCE PROCEEDINGS
If the original patent is involved in an interference, the examiner must consult the administrative patent judge in charge of the interference before taking any action on the reissue application. It is particularly important that the reissue application not be granted without the administrative patent judge's approval. See MPEP Chapter 2300.
III. CONCURRENT REISSUE PROCEEDINGS
Where more than one reissue applications are pending concurrently on the same patent, see MPEP §§ 1450 and 1451.
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