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2686.01 Multiple Copending Reexamination Proceedings [R-5] - 2600 Optional Inter Partes Reexamination
2686.01 Multiple Copending Reexamination Proceedings [R-5]
37 CFR 1.989 Merger of concurrent reexamination proceedings.
(a) If any reexamination is ordered while a prior inter partes reexamination proceeding is pending for the same patent and prosecution in the prior inter partes reexamination proceeding has not been terminated, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger is ordered, the merged examination will normally result in the issuance of a single reexamination certificate under § 1.997.
(b) An inter partes reexamination proceeding filed under § 1.913 which is merged with an ex parte reexamination proceeding filed under § 1.510 will result in the merged proceeding being governed by §§ 1.902 through 1.997, except that the rights of any third party requester of the ex parte reexamination shall be governed by §§ 1.510 through 1.560.
This section discusses multiple copending reexamination requests which are filed on the same patent, where at least one of the multiple copending reexamination requests is an inter partes request. If all of the multiple copending reexamination requests are ex parte requests, see MPEP § 2283.
Initially, it is appropriate to point out who can file a second or subsequent request for reexamination while a first reexamination proceeding is pending.
Case (1) - The earlier (pending) reexamination is an inter partes reexamination:
(1)(a) The subsequent request is an inter partes reexamination request. Pursuant to 35 U.S.C. 317(a), once an order for inter partes reexamination has been issued in a first reexamination proceeding, neither the third party requester, nor its privy, may file a subsequent request for an inter partes reexamination of the patent until an inter partes reexamination certificate is issued, unless authorized by the Director of the USPTO. In addition, the patent owner is not entitled to file any inter partes reexamination request (see MPEP § 2612). Thus, only a third party who is not a party to the earlier pending inter partes reexamination proceeding (nor a privy) can file the subsequent inter partes reexamination request.
(1)(b) The subsequent request is an ex parte reexamination request. Any party (including the patent owner) can file the subsequent ex parte reexamination request.
Case (2) - The earlier (pending) reexamination is an ex parte reexamination:
(2)(a) The subsequent request is an inter partes reexamination request. Any party other than the patent owner can file the subsequent inter partes reexamination request.
(2)(b) The subsequent (later) request is an ex parte reexamination request. Any party (including the patent owner) can file the subsequent ex parte reexamination request.
In order for the second or subsequent request to be granted, a substantial new question of patentability must be raised by the art (patents and/or printed publications) cited in the second or subsequent request for reexamination. See MPEP § 2640 regarding whether a substantial new question of patentability is raised by the art cited in a second or subsequent request filed while a first reexamination proceeding is pending.
If the second or subsequent request is granted, the decision on whether or not to merge the proceedings will be made by the Office of Patent Legal Administration. (OPLA). No decision on merging the reexaminations should be made until such time as reexamination is actually ordered in the later filed request for reexamination.
I. WHEN PROCEEDINGS ARE MERGED
If a second request for reexamination is filed **>prior to the issuance of a Notice of Intent to Issue a Reexamination Certificate for the first reexamination proceeding, the proceedings generally will be merged. In this situation, the second request is decided based on the original patent claims, and if reexamination is ordered, the reexamination proceedings generally would be merged.<
After the second reexamination proceeding is merged with the first reexamination proceeding, prosecution will be conducted at the most advanced point possible for the first proceeding. Thus, if a final rejection (a Right of Appeal Notice) has been issued in the first proceeding, prosecution will ordinarily be reopened to consider the substantial new question of patentability presented in the second request unless the examiner concludes that no new rejection or change of position is warranted. Also, the patent owner will be provided with an opportunity to respond to any new rejection in a merged reexamination proceeding prior to an Action Closing Prosecution (ACP) being issued. See MPEP § 2671.02.
Where the reexamination proceedings are merged, a single certificate will be issued based upon the merged proceedings, 37 CFR 1.989(a).
II. WHEN PROCEEDING IS SUSPENDED
It may also be desirable in certain situations to suspend one of the proceedings for a short and specified period of time. For example, a suspension of a first reexamination proceeding may be issued to allow time for the decision on the second request. Further, after the second proceeding has been ordered, it may be desirable to suspend the second proceeding prior to merging, where the first proceeding is presently on appeal before a Federal court to await the court's decision prior to merging. A suspension will only be granted in exceptional (extraordinary) instances because of the statutory requirements that examination proceed with "special dispatch", and the express written approval by the OPLA must be obtained. Suspension will not be granted when there is an outstanding Office action.
III. MERGER OF REEXAMINATIONS
The following guidelines should be observed when two requests for reexamination directed to a single patent have been filed:
The second request (i.e., Request 2) should be processed as quickly as possible, and assigned to the same examiner to whom the first request (i.e., Request 1) is assigned. Request 2 should be decided immediately after consultation with the Reexamination Legal Advisor (RLA). If Request 2 is denied, prosecution of Request 1 should continue. If Request 2 is granted, a first Office action on the merits will not be sent with the order granting reexamination in the second proceeding. Instead, the order will indicate that an Office action will follow in due course. MPEP § 2660. The order granting the second proceeding will be prepared, reviewed by the Special Program Examiner (SPRE) and then hand-carried directly to the Central Reexamination Unit (CRU). In the CRU, the order will be mailed specially, and the two proceedings will be forwarded to OPLA for preparation of a decision *>whether to merge< the two proceedings.
*>A< decision *>to merge< the reexamination proceedings should include a requirement that the patent owner maintain identical claims in both files. It will further require that responses/comments by the patent owner and the third party requester(s) must consist of a single response/comment paper, addressed to both files, filed in duplicate each bearing a signature, for entry in both files. The same applies to any other paper filed in the merged proceeding. The decision will point out that both files will be maintained as separate complete files. Where the claims are already the same in both reexamination files, the decision on merger will indicate at its conclusion that an Office action will be mailed in due course, and that the patent owner need not take any action at present. Where the claims are not the same in both files, the decision will state at its conclusion that patent owner is given one month to provide an amendment to make the claims the same in each file. After the decision of merger is prepared and signed, the decision will be hand-carried directly to the CRU, where the decision will be mailed specially.
Where the merger decision indicates that an Office action will follow, the merged proceeding is immediately returned to the examiner, to issue an Office action, after the CRU mailing and processing of the decision. Where the merger decision indicates that the patent owner is given one month to provide an amendment to make the claims the same in each file (identical amendments to be placed in all files), the CRU will retain jurisdiction over the merged reexamination proceeding to await submission of the amendment or the expiration of the time to submit the amendment. After the amendment is received and processed by the CRU, or the time for submitting the amendment expires, the merged proceeding will be returned to the examiner, to issue an Office action.
Once the merged proceeding is returned to the examiner for issuance of an Office action, the examiner should after consultation with the RLA, prepare the action at the most advanced point possible for the first proceeding. Thus, if the first proceeding is ready for an Action Closing Prosecution (ACP) and the second proceeding does not provide any new information which would call for a new ground of rejection, the examiner should issue an ACP for the merged proceeding using the guidance for the prosecution stage set forth below.
If the decision on the reexamination request has not yet been made in Request 1 and Request 1 is grantable, it should be processed to the point where an order granting reexamination is mailed. An Office action should not be mailed with the order. Then, Request 1 is normally held until Request 2 is ready for the prosecution stage following an order granting reexamination, or until Request 2 is denied. Request 2 should be determined on its own merits without reference in the decision to Request 1. As before, an Office action should not be mailed with the order in Request 2.
A. The Prosecution Stage, After Merger
When prosecution is appropriate in merged proceedings, a single combined examiner's action will be prepared. Each action will contain the control number of the two proceedings on every page. A single action cover form (having both control numbers penned in at the top) will be provided by the examiner to the clerical staff. The clerical staff will copy the action cover form, and then use the PALM printer to print the appropriate data on the original for the first request, and on the copy for the second request. Each requester will receive a copy of the action and both action cover forms, with the transmission form PTOL-2070 placed on top of the package. The patent owner will get a copy of both action cover forms and the action itself.
When a "Notice of Intent To Issue Inter Partes Reexamination Certificate" (NIRC) is appropriate, plural notices will be printed. Both reexamination files will then be processed. The *>CRU< should prepare the file of the concurrent proceedings in the manner specified in MPEP § 2687, before release to Office of Publications (via the CRU).
The above guidance should be extended to situations where more than two requests for reexamination are filed for a single patent. The guidance should also be extended to situations where one of the requests is a request for ex parte reexamination. However, where an ex parte reexamination is to be included in the merger, allowance must be made for the statement and reply periods provided for in an ex parte reexamination after the order granting reexamination is issued. If all the reexamination proceedings to be merged are ex parte reexaminations, the present section does not apply, but rather see MPEP § 2283.
IV. PROCEEDINGS NOT MERGED
**>Pursuant to 35 U.S.C. 314(c), "[u]nless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section…shall be conducted with special dispatch within the Office." This statutory provision is grounded on the need for certainty and finality as to the question of patentability raised by the request for reexamination. Thus, if a second request for reexamination is filed after the issuance of a Notice of Intent to Issue a Reexamination Certificate for the first reexamination proceeding, the two proceedings generally will not be merged. If the Office were to merge the two proceedings, the first reexamination proceeding would need to be withdrawn from its processing for ultimate publication of a reexamination certificate, thus delaying, instead of advancing, prosecution. This would run contrary to the statutory "special dispatch" requirement of 35 U.S.C. 314 and its intent. On the other hand, if the Office does not merge, the first reexamination proceeding can be concluded, and any substantial new question of patentability raised by the second reexamination request can be resolved in the second proceeding, with no delay resulting. The second request is then considered based on the claims in the patent as indicated in the issued reexamination certificate, rather than the original claims of the patent. However, the Office always retains the authority to merge because in some instances, it may be more efficient to merge the two proceedings, which would foster "special dispatch."
Even prior to the issuance of a Notice of Intent to Issue a Reexamination Certificate for the first reexamination proceeding, there are instances where the Office may not merge an ongoing reexamination proceeding with a subsequent reexamination proceeding, which instances are addressed on a case-by-case basis. For example: If an ongoing reexamination proceeding is ready for decision by the Board of Patent Appeals and Interferences, or is on appeal to the U.S. Court of Appeals for the Federal Circuit, it would be inefficient (and contrary to the statutory mandate for special dispatch) to "pull back" the ongoing reexamination proceeding for merger with a subsequent reexamination. As another example, an ongoing reexamination proceeding might be directed to one set of claims for which a first accused infringer (with respect to the first set) has filed the ongoing request for reexamination. A later reexamination request might then be directed to a different set of claims for which a second accused infringer (with respect to the second set) has filed the request. (See MPEP § 2640 regarding reexamination of fewer than all the patent claims.) In this instance, where there are simply no claims in common, merger would serve only to delay the resolution of the first proceeding. Since reexamination was enacted as an effective alternative to litigation, the ability to decide the question of whether to merge based on the merits of a particular fact pattern must be reserved to the Office.<
For processing of the second reexamination proceeding, see MPEP § 2295 and § 2695.
V. FEES IN MERGED PROCEEDINGS
Where the proceedings have been merged and a paper is filed which requires payment of a fee (e.g., >excess claims fee, extension of time fee,< petition fee, appeal fee, brief fee, oral hearing fee), only a single fee need be paid. For example, only one fee need be paid for the patent owner's appellant brief (or that of the third party requester), even though the brief relates to merged multiple proceedings and copies must be filed for each file in the merged proceeding.
VI. PETITION TO MERGE MULTIPLE COPENDING REEXAMINATION PROCEEDINGS
No petition to merge multiple reexamination proceedings is necessary since the Office will generally, sua sponte, make a decision as to whether or not it is appropriate to merge the multiple reexamination proceedings. If any petition to merge the proceedings is filed prior to the order to reexamine the second request, it will not be considered but will be returned to the party submitting the same by the OPLA. The decision returning such a premature petition will be made of record in both reexamination files, but no copy of the petition will be retained by the Office. See MPEP § 2667.
The patent owner can file a petition to merge the proceedings at any time after the order to reexamine the second request. A requester of any of the multiple reexamination proceedings may also petition to merge the proceedings at any time after the order to reexamine the second request. A petition to merge the multiple proceedings which is filed by a party other than the patent owner or one of the third party requesters of the reexaminations will not be considered but will be returned to that party by the OPLA. Note that the acceptance of a petition to merge the multiple proceedings at any time after the order to reexamine the second request is contrary to 37 CFR 1.939 since such acceptance can be prior to the issuance of the first Office action. Accordingly, the requirement of 37 CFR 1.939 is hereby waived to the extent that a petition for merger of a reexamination proceeding with a reexamination proceeding or with a reissue (see MPEP § 2686.03) can be submitted after the order to reexamine has been issued in all the reexamination proceedings to be merged. This waiver is made to assure merger at the earliest possible stage.
All decisions on the merits of petitions to merge multiple reexamination proceedings, where at least one of the proceedings is an inter partes reexamination, will be made by the OPLA.
Decisions on the merits of petitions to merge multiple reexamination proceedings, where none of the proceedings is an inter partes reexamination, will be made by the *>CRU< Director (or by the SPRE, if the *>CRU< Director delegates such to the SPRE); see MPEP § 2283.
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