2686.03 Copending Reexamination and Reissue Proceedings [R-07.2015]

The general policy of the Office is that the examination of a reissue application and an inter partes reexamination proceeding will not be conducted separately at the same time as to a particular patent. The reason for this policy is to permit timely resolution of both the reissue and the reexamination to the extent possible and to prevent inconsistent, and possibly conflicting, amendments from being introduced into the two files on behalf of the patent owner. If both a reissue application and a reexamination proceeding are pending concurrently on a patent, a decision will normally be made to merge the reissue application examination and the reexamination or to stay one of the two. See In re Onda, 229 USPQ 235 (Comm’r Pat. 1985). The decision as to whether the reissue application examination and the reexamination proceeding are to be merged, or which of the two (if any) is to be stayed, is made in OPLA.

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 such. 37 CFR 1.178(b), 1.565(a), and 1.985. 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 notify the Office in the reissue application 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 (depending on whether the reexamination proceeding is an ex parte reexamination proceeding or an inter partes reexamination proceeding) to notify the Office in the reexamination proceeding of the existence of the two concurrent proceedings.

I. TIME FOR MAKING DECISION ON MERGING OR STAYING THE PROCEEDINGS

A decision whether or not to merge the examination of a reissue application and an inter partes reexamination proceeding, or to stay one of the two, will not be made prior to the mailing of the order to reexamine the patent pursuant to 37 CFR 1.931. Until such time as the reexamination is ordered, the examination of the reissue application will proceed. A determination on the request for reexamination should not be delayed despite the existence of a copending reissue application, since 35 U.S.C. 312(a) requires a determination within three months following the filing date of the request. See MPEP § 2641. If the decision on the request denies reexamination (MPEP § 2647 ), the examination of the reissue application should be continued. If reexamination is to be ordered (MPEP § 2646), the signed order should be (after review by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS)) promptly forwarded to the CRU support staff for mailing; no first Office action will accompany the decision ordering reexamination. At the same time that the signed order is forwarded to OPLA, (A) OPLA should be notified that the proceedings are ready for consideration of merger, and (B) if any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA.

If a reissue application is filed during the pendency of a reexamination proceeding, OPLA should be notified, as promptly as possible after the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the notification to OPLA.

The decision on whether or not to merge the reissue application examination and the reexamination proceeding or which (if any) is to be stayed (suspended), will generally be made as promptly as possible after receipt of the notification to OPLA, and delivery of all the paper files to OPLA.

Until a decision is mailed merging the reissue application examination and the reexamination proceeding, or staying one of them, prosecution in the reissue application and the reexamination proceeding will continue and be conducted simultaneously, but separately.

The Office may in certain situations issue a certificate at the termination of the prosecution of a reexamination proceeding, even if a copending reissue application or another reexamination request has already been filed.

II. CONSIDERATIONS IN DECIDING WHETHER TO MERGE THE REISSUE AND REEXAMINATION OR WHETHER TO STAY ONE OF THEM

The decision on whether to merge the reissue application examination and reexamination proceeding, or stay one of them, will be made on a case-by-case basis. The decision to merge, or not to merge, is within the sole discretion of the Office to facilitate/carry out the orderly operation of the Office in addressing the proceedings. The status of the reissue application and the reexamination proceeding will be taken into account in the decision as to whether merger will be ordered, or one of the two proceedings stayed. Where there is “good cause” to stay the reexamination proceeding, the Director may do so pursuant to 35 U.S.C. 314(c). 

A.Reissue About To Issue, Reexamination Requested

If the reissue patent will issue before the determination on the reexamination request must be made, the determination on the request should normally be made after the granting of the reissue patent; and then the determination should be made on the basis of the claims in the reissue patent. The reexamination, if ordered, would then be based on the reissue patent claims rather than the original patent claims. Since the reissue application would no longer be pending, the reexamination would be processed in a normal manner.

Where a reissue patent has been issued, the determination on the request for reexamination should specifically point out that the determination has been made on the claims of the reissue patent and not on the claims of the original patent. Any amendment made in the reexamination proceeding should treat the changes made by the reissue as the text of the patent, and all bracketing and underlining made with respect to the patent as changed by the reissue. Note that the reissue claims used as the starting point in the reexamination proceeding must be presented in the reexamination proceeding as a “clean copy.” Thus, words bracketed in the reissue patent claim(s) would not appear at all in the reexamination clean copy of the claim(s). Also, words that were added via the reissue patent will appear in italics in the reissue patent, but must appear in plain format in the reexamination clean copy of the claim(s).

If a reissue patent issues on the patent under reexamination after reexamination is ordered, the next action from the examiner in the reexamination should point out that further proceedings in the reexamination will be based on the claims of the reissue patent and not on the patent surrendered. Form paragraph 22.05 may be used in the Office action.

Where the reissue patent has issued prior to the filing of a request for reexamination of the original patent, see MPEP § 2640.

B.Reissue Pending, Reexamination Request Filed

Where a reissue patent will not be granted prior to the expiration of the three-month period for making the determination on the reexamination request, a decision will be made after an order to reexamine is issued as to whether the reissue application examination and the reexamination proceeding are to be merged, or which of the two (if any) is to be stayed. In this situation, no first Office action will have accompanied the order for reexamination.

In making a decision on whether or not to merge the reissue application examination and the reexamination proceeding, consideration will be given as to whether issues are raised in the reissue application that would not be proper for consideration in reexamination and/or not be proper for comment by the reexamination third party requester. If such issues are raised, merger would ordinarily not be ordered, and one of the two proceedings stayed. Consideration will also be given to the status of the reissue application examination at the time the order to reexamine the patent pursuant to 37 CFR 1.931 is mailed. For example, if the reissue application is on appeal to the Board or to the courts, that fact would be considered in making a decision whether to merge the reissue application examination and the reexamination proceeding or stay one of them. See In re Scragg, 215 USPQ 715 (Comm’r Pat. 1982), In re Stoddard, 213 USPQ 386 (Comm’r Pat. 1982).

If merger of the reissue application examination and the reexamination proceeding is ordered, the order merging them will also require that the patent owner place the same claims in the reissue application and in the reexamination proceeding for purposes of the merger. The decision to merge may require an amendment to be filed by the patent owner to provide identical sets of claims, within a specified time set in the decision to merge.

If merger would be appropriate, but the examination of the reissue application has progressed to a point where a merger is not desirable at that time, then the reexamination proceeding will generally be stayed until the reissue application examination is complete on the issues then pending. After completion of the examination on the issues then pending in the reissue application examination, the stay of the reexamination proceeding will be removed. The proceedings would be merged if the reissue application is pending, or the reexamination proceeding will be conducted separately if the reissue application has become abandoned. The reissue application examination would be reopened, if necessary, for merger of the reexamination proceeding therewith. If a stay of a reexamination proceeding has been removed following a reissue application examination, the first Office action will set a shortened statutory period for response of one month or thirty days (whichever is longer) unless a longer period for response clearly is warranted by the nature of the examiner’s action. The second Office action will normally be final and will also set a one month or thirty days period for response. These shortened periods are considered necessary to prevent undue delay in concluding the proceedings and also to proceed with “special dispatch” in view of the earlier stay.

If the reissue application examination and reexamination proceedings are merged, the issuance of the reissue patent will also serve as the inter partes reexamination certificate under 37 CFR 1.997, and the reissue patent will so indicate.

C.Reexamination Proceedings Underway, Reissue Application Filed

When a reissue application is filed after an inter partes reexamination request has been filed, OPLA should be notified, as promptly as possible. A determination will be made as to whether reexamination should be ordered. If reexamination is ordered, no first Office action will accompany the decision ordering reexamination. The order and any of the files that are paper files should then be hand delivered to OPLA.

Where reexamination has already been ordered prior to the filing of a reissue application, OPLA should be notified, as promptly as possible, that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the email notification to OPLA.

In making a decision on whether or not to merge the reissue application examination and the reexamination proceeding, consideration will be given as to whether issues are raised in the reissue application that would not be proper for consideration in reexamination and/or not be proper for comment by the reexamination third party requester. If such issues are raised, merger would ordinarily not be ordered, and one of the two proceedings stayed. In addition, consideration will also be given to the status of the reexamination proceeding. For example, if the reexamination proceeding is on appeal to the Board or to the U.S. Court of Appeals for the Federal Circuit, or a Notice of Intent to Issue a Reexamination Certificate was issued for the reexamination proceeding, that fact would be considered in making a decision whether to merge the reissue application examination and the reexamination proceeding or stay one of them.

D.Examiner Assignment

With respect to the appropriate examiner assignment of the merged reexamination proceeding and the reissue application examination, see MPEP § 2636.

III. CONDUCT OF MERGED REISSUE AND REEXAMINATION PROCEEDING

The decision ordering merger will set forth the practice and procedure to be followed in the examination and prosecution of the merged reissue and inter partes reexamination proceeding. Any questions as to the practice and procedure set forth should be referred to OPLA. In addition, the examiner should consult with OPLA prior to issuing any Office action in the merged proceeding, in the same manner as he or she would consult with the OPLA in an inter partes reexamination proceeding that has not been merged.

Where merger is ordered, the patent owner is required to maintain identical amendments in the reissue application and the reexamination file for purposes of the merged proceeding. The maintenance of identical amendments in both files is required as long as the reissue and reexamination proceedings remain merged. Where identical amendments are not present in both files at the time merger is ordered, the patent owner will be required to submit an appropriate amendment placing the same amendments in both proceedings. This may be accomplished by amending either of the two proceedings (the reissue application or the reexamination) or both of them, as appropriate. The patent owner must not address any issue of patentability in the amendment. Amendments in a merged reexamination/reissue proceeding are submitted under 37 CFR 1.173, in accordance with reissue practice. In the event that an amendment to make the claims the same in each file is required by the merger decision (identical amendments to be placed in all files) but is not timely submitted, any claim that does not contain identical text in all of the merged proceedings should be rejected under 35 U.S.C. 112, paragraph 2, as being indefinite as to the content of the claim, and thus failing to particularly point out the invention.

IV. INTER PARTES REEXAMINATION, EX PARTE REEXAMINATION, AND REISSUE APPLICATION FOR THE SAME PATENT

It will sometimes happen that an inter partes reexamination, an ex parte reexamination and a reissue application will all be copending. In these situations, OPLA should be notified by, as promptly as possible after the reissue application reaches the TC, that the proceedings are ready for consideration of merger. If any of the reexamination files, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the notification to OPLA. The three most common examples of this are as follows:

• (A) A reissue application was previously merged with an ex parte reexamination, and then an inter partes reexamination is filed. An order to reexamine is prepared, and the signed order and any paper files should be promptly processed for mailing of the order, and then consideration by OPLA as to whether or not to merge the proceedings. OPLA should be notified of potential merger consideration.
• (B) A reissue application was previously merged with an inter partes reexamination, and then a request for ex parte reexamination is filed. After an order to reexamine has been issued, the TC Quality Assurance Specialist (QAS) will retain jurisdiction over the merged reexamination proceeding until the patent owner’s statement and any reply by the ex parte third party requester have been received for the ex parte reexamination request, or until the time for filing the same expires. OPLA should then be notified that the proceedings are ready for consideration of merger. If any of the reexamination files, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the notification to OPLA.
• (C) An inter partes reexamination was merged with an ex parte reexamination, and then a reissue application is filed. Once the reissue application is received, OPLA should be promptly notified that the proceedings are ready for consideration of merger. If any of the reexamination files, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the notification to OPLA.

The decision to merge the three proceedings by OPLA will provide the guidance for conducting the merged proceeding. It is to be noted that the merger will not be carried out pursuant to MPEP Chapter 2200. Prosecution prior to the point of merger will remain as-is, in the files.

In the event the inter partes reexamination prosecution is terminated and only the ex parte reexamination and the reissue application remain, the prosecution will no longer be governed by the present section. Any further prosecution will be governed by MPEP Chapter 2200; specifically see MPEP § 2285.

V. PETITION TO MERGE REISSUE APPLICATION AND INTER PARTES REEXAMINATION PROCEEDING OR TO STAY EITHER OF THE TWO BECAUSE OF THE EXISTENCE OF THE OTHER

No petition to merge the reexamination proceeding and the reissue application examination, or stay one of them, is necessary, since the Office will generally, sua sponte, make a decision to merge the reexamination proceeding and the reissue application examination or to stay one of them. If any petition to merge the reexamination proceeding and the reissue application examination, or to stay one of them because of the other, is filed prior to the determination (37 CFR 1.923) and the order to reexamine (37 CFR 1.931), it will not be considered, but will be returned to the party submitting the same by the CRU (or it will be expunged, if the petition has been scanned into the Office’s IFW system prior to its discovery), regardless of whether the petition is filed in the reexamination proceeding, the reissue application, or both. This is necessary in order to prevent premature papers relating to the reexamination proceeding from being filed. The decision returning or expunging such a premature petition will be made of record in both the reexamination file and the reissue application file. See MPEP § 2667.

The patent owner may file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, or stay one of them because of the other, after the order to reexamine (37 CFR 1.931), in the event the Office has not acted prior to that date to merge or stay. The third party requester does not have a right to file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, since the reexamination third party requester does not have any standing to request relief with respect to a reissue application, to which requester cannot be a party. No such standing is provided for anywhere in the statute. Instead of filing a petition under 37 CFR 1.182 to merge a reexamination proceeding with a reissue application, a third party requester may file a notification of concurrent proceedings pursuant to 37 CFR 1.985(b). After being notified of the existence of a reissue application and after consideration of the merger and suspension options becomes ripe, the Office of Patent Legal Administration would sua sponte consider any action to be taken after the order to reexamine (37 CFR 1.931), in the event the Office has not acted prior to that date to merge or stay. The requester does have the right to file a petition under 37 CFR 1.182 to stay the reexamination proceeding that it requested.

Any merger or stay petition under 37 CFR 1.182 filed prior to the initial Office action on the merits must also be filed under 37 CFR 1.183 to waive the requirement of 37 CFR 1.939(b) that no paper shall be filed prior to the initial Office action on the merits of the inter partes reexamination proceeding. Any petition to merge or stay which is filed by a party other than the patent owner will not be considered, but will be returned to that party by OPLA (or expunged by OPLA, if the petition was inadvertently already entered).

All petitions to merge or stay which are filed by the patent owner or the third party requester subsequent to the date of the order for reexamination will be referred to OPLA for decision.

VI. 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 fees, appeal fees, brief fees, oral hearing fees), only a single fee need be paid. For example, only one fee need be paid for an appellant brief, even though the brief relates to merged multiple examinations and copies of the brief are filed for each file in the merger (as is required). As to excess claim fees, reissue practice will control.

VII. INTERVIEWS IN MERGED PROCEEDINGS

Pursuant to 37 CFR 1.955, an interview which discusses the merits of a proceeding is not permitted in an inter partes reexamination proceeding. Thus, in a merged proceeding of an inter partes reexamination and a reissue application, there will be no inter partes interview as to the substance of the proceeding. Also, there will be no separate ex parte interview as to the substance of the proceeding with either the patent owner (the reissue applicant) or the third party requester (of the reexamination). Accordingly, where a party requests any information as to the merits of the merged proceeding, the examiner will not conduct an interview with that party to provide the information. Further, an informal amendment by the patent owner (the reissue applicant) will not be accepted, because that would be tantamount to an ex parte interview. All communications between the Office and the patent owner (and the third party requester) which are directed to the merits of the merged proceeding must be in writing and filed with the Office for entry into the record of the proceeding.

VIII. EXAMINER’S AMENDMENT TO PLACE PROCEEDING IN CONDITION FOR ALLOWANCE IN MERGED REISSUE/INTER PARTES REEXAMINATION

As pointed out immediately above, interviews, both personal and telephone are not permitted in a merged reissue/inter partes reexamination proceeding. Thus, the examiner is not permitted to telephone the patent owner/reissue applicant and obtain authorization to make an amendment. Accordingly, the only times that an examiner’s amendment can be made in conjunction with a Notice of Allowability are where the patent owner authorization need not be obtained. Such amendments include:

• (A) An examiner’s amendment to deal with formal matters such as grammar, incorrect spelling, or incorrect number; i.e., matters that do not involve a rejection, do not go to the merits, and do not require the examiner to obtain approval.
• (B) An examiner’s amendment to change the title.

See also MPEP § 1302.04et seq. as to examiner’s amendments not needing authorization by an applicant or a patent owner. Note, however, that in a merged reissue/inter partes reexamination proceeding (as opposed to an application per se) all such examiner’s amendments must be made by formal examiner’s amendment accompanying the Notice of Allowability, in order to provide notice of the changes made in the patent being reexamined to both the patent owner/reissue applicant and the third party requester.

Note that any change going to the merits of the case (i.e., more than a formal matter) could not be made by examiner’s amendment accompanying the Notice of Allowability. Rather, a change going to the merits would require (A) reopening of prosecution with the approval of the CRU Director, (B) an Office action suggesting the change to the patent owner/reissue applicant, (C) a formal amendment submitted by patent owner/reissue applicant, and (D) an opportunity for the third party requester to comment on the patent owner/applicant’s submission.