This section provides guidance for the processing and examination of a reexamination request filed on a patent for which a reexamination certificate has already issued, or a reexamination certificate issues on a prior reexamination, while the new reexamination is pending. This reexamination request is generally referred to as a “Reexamination of a reexamination.”
The reexamination request is to be considered based on the claims in the patent as modified by the previously issued reexamination certificate, and not based on the original claims of the patent. Accordingly, when the file for the new reexamination proceeding (reexamination of a reexamination) is first received by the Central Reexamination Unit (CRU), the CRU technical support staff will print out a copy of the issued reexamination certificate and make it of record in the second reexamination file wrapper as a preliminary amendment. Such incorporation must be done prior to forwarding the proceeding to the examiner for action.
The examiner should review the CRU support staff’s entry of the reexamination certificate to ensure that all certificate changes are properly entered so that (A) the reexamination will be given on an accurate specification and claims, and (B) the appropriate version of the patent will be printed in any future reexamination certificate that will ultimately issue. The examiner will issue a decision on the reexamination request based on the patent claims (and specification) with the certificate changes entered.
I. PRIOR REEXAMINATION MATURES TO CERTIFICATE WHILE LATER REEXAMINATION IS PENDING
If a second request for reexamination of a patent is filed where the certificate for the first reexamination of the patent will issue within 3 months from the filing of the second request, the proceedings normally will not be merged. If the certificate for the first reexamination proceeding will issue before the decision on the second request must be decided, the reexamination certificate is allowed to issue. The second request is then considered based upon the claims in the patent as indicated in the issued reexamination certificate rather than the original claims of the patent. The Legal Instrument Examiner (LIE) will print out a copy of the issued reexamination certificate and make it of record in the second reexamination file wrapper as a preliminary amendment.
In the order/denial decision on the second request, it should be noted that this preliminary amendment (the certificate) was entered into the reexamination file, and that the determination (order/denial) was based upon the new patent claims in the certificate.
A copy of the reexamination certificate should be included as an attachment to the order/denial decision to ensure that any third party requester of the second reexamination has a copy of the certificate claims.
II. PATENT OWNER’S SUBMISSION OF AMENDMENTS
Any amendment to the claims (or specification) of the reexamination proceeding must be presented as if the changes made to the patent text via the reexamination certificate are a part of the original patent. Thus, all italicized text in the certificate is considered as if the text was present without italics in the original patent. Further, any certificate text placed in brackets is considered as if it were never present in the patent at all.
For example, an amendment in a “reexamination of a reexamination” might include italicized text of claim 1 of the reexamination certificate as underlined (or italicized) in the copy of claim 1 submitted in the amendment. This would indicate that text already present in the patent (via the reexamination certificate) is again being added. This would be an improper amendment, and as such, an “informal submission.” Accordingly, the examiner would notify the patent owner that the amendment does not comply with 37 CFR 1.530. Form PTOL-475 or form PTO-2311 would be used to provide the notification of the defect in the amendment, as appropriate, and an appropriate time period (see MPEP § 2266.02) would be set for correction of the defect.
III. COMPLETION OF THE CHECKLISTS
After the mailing of the NIRC, the reexamination file will be processed by the CRU or the TC so that the Office of Data Management can prepare and issue a certificate in accordance with 35 U.S.C. 307 and 37 CFR 1.570. The certificate will set forth the results of the reexamination proceeding and the content of the patent following the proceeding. See MPEP § 2287. The examiner will complete a checklist, Form PTO-1516, and the CRU support staff will complete the reexamination clerk checklist Form PTO-1517. In completing the checklists, the examiner and CRU support staff should keep in mind that the “patent” is the original patent as modified by the reexamination certificate. For example, claims canceled by the prior reexamination certificate should be listed in Item 8 – “Claim(s) __________ was (were) previously canceled.” Likewise, in Item 12 of the examiner checklist – “Claim(s) ________ is (are) determined to be patentable as amended”; any claims amended only by the prior reexamination certificate (i.e., not further amended in the present reexamination) should not be listed.
Each “reexamination of a reexamination” must be reviewed by a CRU Supervisory Patent Reexamination Specialist (SPRS) or TC Quality Assurance Specialist (QAS) and a paralegal to ensure compliance with the above guidelines.