1449.01 Concurrent Office Proceedings [R-08.2017]
37 CFR 1.565(d) provides that if “a reissue application and an ex parte reexamination proceeding on which an order pursuant to § 1.525 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.” 37 CFR 1.991 provides that if “a reissue application and an inter partes reexamination proceeding on which an order pursuant to § 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, the examiner should immediately inform their Technology Center (TC) Training Quality Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist (SPRS).
Under 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, the examiner should immediately inform their TC TQAS or SPRS.
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 (by email to a Legal Advisor involved in reexamination) 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) (for an ex parte reexamination proceeding or an inter partes reexamination proceeding, respectively) 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 order to reexamine is issued (37 CFR 1.525, 37 CFR 1.931) in the reexamination proceeding. If the petition is filed before the reexamination order, it will not be considered, and will not be entered into the Image File Wrapper (IFW) or will be expunged from the record, if entered into the Image File Wrapper (IFW) before discovery that the petition is an improper paper. If the petition is filed after the order to reexamine is issued, the petition and any other materials for the files for the reissue application and the reexamination proceeding will be forwarded/referred to OPLA for decision. An email will be sent to a Legal Advisor in OPLA involved in reexamination, providing notification that the petition is ready to be addressed. See MPEP § 2285, subsection V, and MPEP § 2686.03, subsection V.
A. Certificate Is To Be Issued for a Patent, While a Reissue Application for the Patent Is Pending
The following provides guidance to address the situation where a reexamination certificate or PTAB trial certificate is to be issued for a patent, while a reissue application for the patent is pending and will not be merged with the reexamination or trial before the PTAB (i.e., a derivation proceeding, an inter partes review, a post-grant review, and a covered business method review). This can occur, for example, where a reissue application prosecution is stayed or suspended, and the prosecution of a reexamination proceeding or a PTAB trial for the patent (for which reissue is requested) is permitted to proceed. It can also occur where a reissue application is filed after the reexamination proceeding or the PTAB trial has entered the publication process, such that it is too late to consider the question of stay or merger.
- (A) The examiner will not act on the reissue application until the certificate issues and publishes.
- (B) After the certificate issues and publishes–
At the time that the certificate is issued and published, the Office will resume examination of the reissue application–
- (1) An Office action will be issued giving the patent owner (applicant) two months to submit an amendment of the reissue application claims, based upon the results of the concluded reexamination proceeding or concluded trial before the PTAB.
- (2) The reissue application will then be examined. Any claim canceled by the certificate will be treated the same way as a claim lost in litigation, and stated in the next action to be deemed as canceled. The remaining claims will be examined. If the reissue application is subsequently allowed, the claims that were canceled by the certificate will be formally canceled in the reissue application by examiner’s amendment (unless they have already been canceled by the applicant).
It is to be noted that the patent owner/applicant will have been advised in any decision suspending the copending reissue application to bring to the attention of the Office the issuance of the certificate, request a resumption of examination of the reissue application, and to include an amendment of the reissue application claims at that time, if it is deemed appropriate based upon the results of the reexamination proceeding or trial before the PTAB.
- (3) Generally, further prosecution will be limited to claims narrower than those claims canceled as a result of the certificate (this includes any existing patent claims and any claims added in the reexamination proceeding or trial before the PTAB). Any claims added thereafter, which are equal in scope to claims canceled as a result of the certificate, or are broader than the scope of the claims canceled as a result of the certificate, will generally be deemed as surrendered based on the patent owner’s failure to prosecute claims of equal scope, and to present claims of broader scope in the reexamination proceeding or trial before the PTAB. Such claims will be rejected under 35 U.S.C. 251. Further, a rejection of such claims based on estoppel will be made, citing to MPEP § 2308.03 as to treatment of claims lost in a proceeding before the Office, and noting that a reexamination or trial before the PTAB is a “proceeding.”
An exception to the guidance stated in part (3) above: claims that are broader than the scope of the claims canceled as a result of the certificate may be presented where:
- (a) The broader claims in the reissue application can be patentable, despite the fact that the claims in the reexamination or trial before the PTAB are not; and
- (b) The broader claims in the reissue application could not have been presented in the reexamination proceeding or trial before the PTAB.
Criterion (a) can occur if the broadened claims in the reissue application have an earlier effective filing date than those canceled by the certificate (as where the claims in the reissue application are supported by a parent application, and the reexamination or PTAB trial claims are not). Criterion (a) can also occur if the subject matter of the broadened claims in the reissue application can be sworn behind, and the more specific subject matter of the reexamination or PTAB trial claims cannot be sworn behind. Criterion (b) can occur if the claims in the reissue application are broader than all claims of the patent as it existed during reexamination or trial before the PTAB (e.g., claims directed to a distinct invention).
- (4) What happened in the concluded reexamination proceeding or trial before the PTAB must be taken into account by the examiner as to any new claims presented by the reissue application. This is in addition to any other issue that may be addressed in any reissue application.
- (5) If all of the patent claims were canceled by the certificate, action on the reissue application can still proceed, as will be discussed below: if claims were canceled in a reexamination certificate, patent owner/applicant must first file a petition under 37 CFR 1.183 to waive 37 CFR 1.570 and/or 37 CFR 1.997(d), depending on whether the certificate was issued for an ex parte reexamination proceeding, an inter partes reexamination proceeding, or a merger of the two; and if the claims were canceled in a PTAB trial certificate, the patent owner/applicant must first file a petition under 37 CFR 1.182. The petition under 37 CFR 1.183 or the petition under 37 CFR 1.182 would be grantable where the patent owner/applicant shows that either:
- (a) The reissue claims are narrower than those claims canceled as a result of the certificate (this includes any existing patent claims and any claims added in the reexamination proceeding or trial before the PTAB); or
- (b) Criteria (a) and (b) of part (3) above are satisfied by the claims of the reissue application.
The claims satisfying this requirement may only be provided where a petition accompanies the amendment providing the claims.
- (C) The reissue application can still proceed even where all of the patent claims were canceled by the certificate, based on the following. Where the certificate issues and publishes to cancel all existing patent claims, the reissue application can continue in the Office to correct the 35 U.S.C. 251 “error” of presenting the existing claims, which were in-fact unpatentable. Of course, what happened in the concluded reexamination proceeding or PTAB trial must be taken into account by the examiner, as to any new claims presented by the reissue application. See the discussion in part (B)(3)(b) above. If a reissue application is filed after a certificate issues and publishes to cancel all existing patent claims, then the matter should be forwarded to OPLA for resolution.
II. CONCURRENT INTERFERENCE OR OTHER CONTESTED CASE PROCEEDINGS
If the original patent is involved in an interference or another contested case, the examiner must consult with the TQAS or SPRS before taking any action on the reissue application. It is particularly important that the reissue application not be allowed without the PTAB’s approval. See MPEP Chapter 2300.
The Leahy-Smith America Invents Act amended 35 U.S.C. 315(d) and added 35 U.S.C. 325(d) to provide that, during the pendency of an inter partes review, post grant review or covered business method review (“PTAB Review Proceeding”), if another proceeding (e.g., a reissue application) or matter involving the patent is before the Office, the Director may determine the manner in which the PTAB Review Proceeding and other proceeding or matter may proceed, including providing for stay, transfer, consolidation or termination of such matter or proceeding. Accordingly, if an examiner becomes aware of a PTAB Review Proceeding for the same patent that is being examined as a reissue application, the examiner is to consult with the TQAS or SPRS who will coordinate with the PTAB before taking any action on the reissue application.
For guidance to address the situation where a PTAB trial certificate is to be issued for a patent, while a reissue application for the patent is pending and will not be merged, transferred, or consolidated with the PTAB trial, see subsection I.A above. This can occur, for example, where a reissue application prosecution is stayed or suspended, and the pending trial before the PTAB for the patent (for which reissue is requested) is permitted to proceed. It can also occur where a reissue application is filed after the pending trial before the PTAB has entered the publication process for the certificate, such that it is too late to consider the question of stay, transfer, consolidation, or termination.
III. CONCURRENT REISSUE PROCEEDINGS
When more than one reissue application is pending concurrently on the same patent, see MPEP §§ 1450 and 1451.