904.04 Search of Related Post-Grant Proceedings [R-07.2022]

As explained in MPEP § 904 the examiner is required to review specific papers of PTAB post-grant proceedings in related applications. An application under examination is sufficiently related to another proceeding, such that a complete search requires review of a post grant proceeding, if any one of the following conditions are met:

• 1) the examined application is the reissue of a patent that was previously or currently is the subject of a post-grant proceeding;
• 2) the examined application includes a benefit claim under 37 CFR 1.78 to the filing date of a prior US nonprovisional application where the prior US application has issued as a patent and that patent was previously or currently is the subject of a post-grant proceeding;

The examiner will be notified when there is a related PTAB post-grant proceeding through the Office’s integrated examination tools. When a PTAB post-grant proceeding has been identified, the examiner must compare the claims of the examined application with that of challenged patents claims to determine whether they have similar scope or similar claim elements . The presence of a recorded terminal disclaimer or a non-statutory double patenting rejection between the application being examined and patent subject to a post-grant proceeding is evidence that the claims have a similar scope or similar claim elements. If the claims do not have a similar scope or similar claim elements the examiner will annotate the search notes indicating the review was completed. See MPEP § 719.05 II.A., element K. When the claims are determined to have a similar scope or similar claim elements, the examiner is required to consider the following:

• 1. Petition;
• 2. Patent Owner’s Preliminary Response to the Petition;
• 3. PTAB’s Decision on the Institution:
  • a. If instituted, further consider the Patent Owner’s response to the Petition;
  • b. If instituted, further consider the Final Written Decision by PTAB;
• 4. If present, any court decisions (e.g. Federal Circuit) concerning the case and further PTAB proceedings (e.g. PTAB rehearing or remand); and
• 5. If present, Parties’ supporting evidence, including expert declaration.

Once the examiner has reviewed the required documents, the examiner should document the search as shown in MPEP § 719.05 II.A., element L.

Where the examined application shares a common inventor or common assignee applicant with another application or patent, the examiner should exercise professional judgment in determining whether a complete search would include review of the other application or patent as well as any post-grant proceedings on the other application or patent.

For reexamination proceedings, see MPEP §§ 2256 and 2286.01.