The inter partes reexamination statute and rules permit any third party requester to request, prior to September 16, 2012, inter partes reexamination of a patent which issued from an original application filed on or after November 29, 1999, where the request contains certain elements (see 37 CFR 1.915(b)) and is accompanied by the fee required under 37 CFR 1.20(c)(2). The Office initially determines whether the standard for granting reexamination (see 35 U.S.C. 312(a)) is met. If yes, reexamination will be ordered. The reexamination proceedings which follow the order for reexamination are somewhat similar to regular examination procedures in patent applications; however, there are notable differences. For example, there are certain limitations as to the kind of rejections which may be made, a third party requester may participate throughout the proceeding, there is an “action closing prosecution” and a “right of appeal notice” rather than a final rejection, special reexamination forms are to be used, and time periods are set to provide “special dispatch.” When the prosecution of an inter partes reexamination proceeding is terminated, an inter partes reexamination certificate is issued to indicate the status of all claims following the reexamination and concludes the reexamination proceeding.
The basic characteristics of inter partes reexamination are as follows:
- (A) Any third party requester, prior to September 16, 2012, can request inter partes reexamination at any time during the period of enforceability of the patent (for a patent issued from an original application filed on or after November 29, 1999);
- (B) Prior art considered during reexamination is limited to prior patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103;
- (C) The standard for granting reexamination (35 U.S.C. 312(a)) must be met for reexamination to be ordered;
- (D) If ordered, the actual reexamination proceeding is essentially inter partes in nature;
- (E) Decision on the request must be made not later than three months from its filing date, and the remainder of proceedings must proceed with “special dispatch” within the Office;
- (F) If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of an inter partes reexamination certificate;
- (G) The scope of the patent claims cannot be enlarged by amendment;
- (H) Reexamination and patent files are open to the public, but see paragraph (I) below;
- (I) The reexamination file is scanned to provide an electronic copy of the file, which is the Official file of the proceeding. All public access to and copying of reexamination proceedings may be had from the electronic copy.
Patent owners and third party requesters are cautioned that the reexamination statute, regulations, and published examining procedures do not countenance so-called “litigation tactics” in reexamination proceedings. The parties are expected to conduct themselves accordingly. For example, it is expected that submissions of papers that are not provided for in the reexamination regulations and/or appear to be excluded by the regulation will either be filed with an appropriate petition to accept the paper and/or waive the regulation(s), or not filed at all. Parties are advised that multiple submissions, such as a reply to a paper opposing a petition and a sur-reply directed to such a reply are not provided for in the regulations or examining procedures governing inter partes reexamination. It is expected that the parties will adhere to the provisions of 37 CFR 11.18(b) throughout the course of a reexamination proceeding.