A panel review will be conducted at each stage of the examiner’s examination in an inter partes reexamination proceeding, other than for actions such as notices of informality or incomplete response. Matters requiring decision outside of the examiner’s jurisdiction (e.g., decisions on petitions or extensions of time, or Central Reexamination Unit (CRU) support staff notices) will not be reviewed by a panel.
The panel review is carried out for each Office action. The panel reviews the examiner’s preliminary decision to reject and/or allow the claims in the reexamination proceeding, prior to the issuance of each Office action.
I. MAKE-UP OF THE PANEL
The panel will consist of three members, one of whom will be a manager. The second member will be the examiner in charge of the proceeding. The manager may select the third member. The examiner-conferees will be primary examiners, or examiners who are knowledgeable in the technology of the invention claimed in the patent being reexamined and/or who are experienced in reexamination practice. The majority of those present at the conference will be examiners who were not involved in the examination or issuance of the patent. An “original” examiner (see MPEP § 2636) should be chosen as a conferee only if that examiner is the most knowledgeable in the art, or there is some other specific and justifiable reason to choose an original examiner as a participant in the conference.
II. PANEL PROCESS
The examiner must inform his/her manager of his/her intent to issue an Office action. The manager will then convene a panel and the members will confer and review the patentability of the claim(s). If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims, the Office action shall be issued and signed by the examiner, with the two other conferees initialing the action (as “conferee”) to indicate their participation in the conference. Both conferees will initial, even though one of them may have dissented from the 3-party conference decision as to the patentability of claims. If the conference does not confirm the examiner’s preliminary decision, the examiner will reevaluate and issue an appropriate Office action .
Where the examiner in charge of the proceeding is not in agreement with the conference decision, the manager will generally assign the proceeding to another examiner.
III. WHAT THE CONFERENCES SHOULD ACCOMPLISH
Each conference will provide a forum to consider all issues of patentability as well as procedural issues having an impact on patentability. Review of the patentability of the claims by more than one primary examiner should diminish any perception that the patent owner can disproportionately influence the examiner in charge of the proceeding. The conferences will also provide greater assurance that all matters will be addressed appropriately. All issues in the proceeding will be viewed from the perspectives of three examiners. What the examiner in charge of the proceeding might have missed, one of the other two conference members would likely detect. The conference will provide for a comprehensive discussion of, and finding for, each issue.
IV. CONSEQUENCES OF FAILURE TO HOLD CONFERENCE
Should the examiner issue Office action without panel review, the patent owner or the third party requester who wishes to object must promptly file a paper alerting the Office of this fact. (The failure to hold a panel review conference would be noted by the parties where there are no conferees’ initials at the end of the Office action.) Any challenge of the failure to hold a panel review conference must be made within two weeks of receipt of the Office action issued, or the challenge will not be considered. In no event will the failure to hold a patentability review conference, by itself, be grounds for vacating any Office decision(s) or action(s) and “restarting” the reexamination proceeding.