[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2002]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR1.565]

[Page 138-139]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
                         DEPARTMENT OF COMMERCE
 
PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents
 
              Subpart D--Ex Parte Reexamination of Patents
 
Sec. 1.565  Concurrent office proceedings which include an ex parte reexamination proceeding.

    (a) In an ex parte reexamination proceeding before the Office, the 
patent owner must inform the Office of any prior or concurrent 
proceedings in which the patent is or was involved such as 
interferences, reissues, ex parte reexaminations, inter partes 
reexaminations, or litigation and the results of such proceedings. See 
Sec. 1.985 for notification of prior or concurrent proceedings in an 
inter partes reexamination proceeding.
    (b) If a patent in the process of ex parte reexamination is or 
becomes involved in litigation, the Commissioner shall determine whether 
or not to suspend the reexamination. See Sec. 1.987 for inter partes 
reexamination proceedings.
    (c) If ex parte reexamination is ordered while a prior ex parte 
reexamination proceeding is pending and prosecution in the prior ex 
parte reexamination proceeding has not been terminated, the ex parte 
reexamination proceedings will be consolidated and result in the 
issuance of a single certificate under Sec. 1.570. For merger of inter 
partes reexamination proceedings, see Sec. 1.989(a). For merger of ex 
parte reexamination and inter partes reexamination proceedings, see 
Sec. 1.989(b).
    (d) If a reissue application and an ex parte reexamination 
proceeding on which an order pursuant to Sec. 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. 
Where merger of a reissue application and an ex parte reexamination 
proceeding is ordered, the merged examination will be conducted in 
accordance with Secs. 1.171 through 1.179, and the patent owner will be 
required to place and maintain the same claims in the reissue 
application and the ex parte reexamination proceeding during the 
pendency of the merged proceeding. The examiner's actions and responses 
by the patent owner in a merged proceeding will apply to both the 
reissue

[[Page 139]]

application and the ex parte reexamination proceeding and be physically 
entered into both files. Any ex parte reexamination proceeding merged 
with a reissue application shall be terminated by the grant of the 
reissued patent. For merger of a reissue application and an inter partes 
reexamination, see Sec. 1.991.
    (e) If a patent in the process of ex parte reexamination is or 
becomes involved in an interference, the Commissioner may suspend the 
reexamination or the interference. The Commissioner will not consider a 
request to suspend an interference unless a motion (Sec. 1.635) to 
suspend the interference has been presented to, and denied by, an 
administrative patent judge, and the request is filed within ten (10) 
days of a decision by an administrative patent judge denying the motion 
for suspension or such other time as the administrative patent judge may 
set. For concurrent inter partes reexamination and interference of a 
patent, see Sec. 1.993.

[65 FR 76776, Dec. 7, 2000]

                   Ex Parte Reexamination Certificate