37 CFR 1.989 Merger of concurrent reexamination proceedings.
- (a) If any reexamination is ordered while a prior inter partes reexamination proceeding is pending for the same patent and prosecution in the prior inter partes reexamination proceeding has not been terminated, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger is ordered, the merged examination will normally result in the issuance and publication of a single reexamination certificate under § 1.997.
- (b) An inter partes reexamination proceeding filed under § 1.913 which is merged with an ex parte reexamination proceeding filed under § 1.510 will result in the merged proceeding being governed by §§ 1.902 through 1.997, except that the rights of any third party requester of the ex parte reexamination shall be governed by §§ 1.510 through 1.560.
This section discusses multiple copending reexamination requests which are filed on the same patent, where at least one of the multiple copending reexamination requests is an inter partes request. If all of the multiple copending reexamination requests are ex parte requests, see MPEP § 2283.
I. WHEN PROCEEDINGS ARE MERGED
Where a second request for reexamination is filed and reexamination is ordered, and a first reexamination proceeding is pending, the proceedings will be merged where the Office (in its discretion) deems it appropriate to do so, to facilitate the orderly handling of the proceedings. However, a decision not to merge is within the sole discretion of the Office to facilitate/carry out the statutory mandate of 35 U.S.C. 314(c) to conduct reexamination proceedings with “special dispatch.”
Where a second request for reexamination is filed while a first reexamination proceeding is pending, the second request is decided based on the claims in effect at the time of the determination, and if reexamination is ordered (and the statement-reply period expires for any ex parte reexamination proceeding), the question of merger will then be considered. If the proceedings are merged, the prosecution will be conducted at the most advanced point possible for the first proceeding. Thus, if a final rejection (a Right of Appeal Notice) has been issued in the first proceeding, prosecution will ordinarily be reopened to consider the question of patentability presented in the second request unless the examiner concludes that no new rejection or change of position is warranted. Also, the patent owner will be provided with an opportunity to respond to any new rejection in a merged reexamination proceeding prior to an Action Closing Prosecution (ACP) being issued. See MPEP § 2671.02.
Where the reexamination proceedings are merged, a single certificate will be issued and published based upon the merged proceedings, 37 CFR 1.989(a).
II. WHEN PROCEEDING IS SUSPENDED
It may also be desirable in certain situations to suspend one of the proceedings for a specified period of time. For example, a suspension of a first reexamination proceeding may be issued to allow time for the decision on the second request. A suspension will only be granted in exceptional (extraordinary) instances because of the statutory requirements that examination proceed with “special dispatch”, and the express written approval by OPLA must be obtained. Suspension will not be granted when there is an outstanding Office action.
III. MERGER OF REEXAMINATIONS
The following guidelines should be observed when two requests for reexamination directed to a single patent have been filed:
The second request (i.e., Request 2) should be processed as quickly as possible, and assigned to the same examiner to whom the first request (i.e., Request 1) is assigned. If Request 2 is denied, prosecution of Request 1 should continue. If Request 2 is granted, a first Office action on the merits will not be sent with the order granting reexamination in the second proceeding. Instead, the order will indicate that an Office action will follow in due course. MPEP § 2660. The order granting the second proceeding will be prepared, reviewed by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) and mailed. The order will be mailed specially, and the two proceedings will be forwarded to OPLA for preparation of a decision whether to merge the two proceedings.
A decision to merge the reexamination proceedings will require that responses/comments by the patent owner and the third party requester(s) must consist of a single response/comment paper, addressed to both files, filed in duplicate each bearing a signature, for entry in both files. The same applies to any other paper filed in the merged proceeding. The merger decision also will point out that both files will be maintained as separate complete files.
The merger decision should include a requirement that the patent owner maintain identical claims in both files. If the claims are not the same in both files at the time the merger decision is drafted, an Office action will be issued concurrently with the merger decision; the Office action will contain a rejection of the claims under 35 U.S.C. 112(b) as being indefinite as to the content of the claims, and thus failing to particularly point out the invention, and the Office action will require a patent owner amendment placing the claims in identical form. Patent owner must respond to the Office action in accordance with the procedures in 37 CFR 1.111. For patent owner’s response to the Office action to be considered to be a complete response, patent owner must include (in the proceeding(s) for which any new or amended claims are being added) the remarks that set forth the basis for having presented any new or amended claims in the proceedings. The third party inter partes requester (in the proceedings in which the amendment is made) will then have an opportunity to comment on patent owner’s response with respect to the amendments made in the proceeding(s) in accordance with the procedures in 37 CFR 1.947. Where the claims are already the same in both reexamination files, the decision on merger will indicate at its conclusion that an Office action will be mailed in due course, and that the patent owner need not take any action at present.
After the decision of merger is prepared and signed, the decision will be forwarded directly to the CRU, where the decision will be mailed specially.
Where the merger decision indicates that an Office action will follow, the merged proceeding is immediately returned to the examiner, to issue an Office action, after the CRU mailing and processing of the decision. Where the merger decision indicates that the patent owner is given one month to provide an amendment to make the claims the same in each file (identical amendments to be placed in all files), the CRU will retain jurisdiction over the merged reexamination proceeding to await submission of the amendment or the expiration of the time to submit the amendment. After the amendment is received and processed by the CRU, or the time for submitting the amendment expires, the merged proceeding will be returned to the examiner, to issue an Office action.
Once the merged proceeding is returned to the examiner for issuance of an Office action, the examiner should prepare the action at the most advanced point possible for the first proceeding. Thus, if the first proceeding is ready for an Action Closing Prosecution (ACP) and the second proceeding does not provide any new information which would call for a new ground of rejection, the examiner should issue an ACP for the merged proceeding using the guidance for the prosecution stage set forth below.
If the decision on the reexamination request has not yet been made in Request 1 and Request 1 is grantable, it should be processed to the point where an order granting reexamination is mailed. An Office action should not be mailed with the order. Then, Request 1 is normally held until Request 2 is ready for the prosecution stage following an order granting reexamination, or until Request 2 is denied. Request 2 should be determined on its own merits without reference in the decision to Request 1. As before, an Office action should not be mailed with the order in Request 2.
A.The Prosecution Stage, After Merger
Where merger is ordered, the patent owner is required to maintain identical amendments in the merged reexamination files for purposes of the merged proceeding. The maintenance of identical amendments in the files is required as long as the reexamination proceedings remain merged. Where identical amendments are not present in the reexamination files at the time merger is ordered, the patent owner will have been required in an Office action to submit an appropriate amendment placing the same amendments in the proceedings. This may be accomplished by patent owner amending one or more of the proceedings, as appropriate. As pointed out above, patent owner must include (in the proceeding(s) for which any new or amended claims are being added) the remarks that set forth the basis for having presented any new or amended claims in the proceedings. Any inter partes third party requester will then have an opportunity to comment on patent owner’s response in accordance with the procedures in 37 CFR 1.947.
When prosecution is appropriate in merged proceedings, a single combined examiner’s action will be prepared. Each action will contain the control number of the two proceedings on every page. A single action cover mailing sheet (having both control numbers at the top) will be provided by the examiner to the technical support staff. The technical support staff will ensure that the action is processed and mailed to the patent owner and to each of the requesters, that the action cover mailing sheets accurately reflect the mailing to each of these parties, that all parties receive copies of the action, the cover mailing sheets, and any other attachments, and that the entire action, including the mailing sheets and any other attachments, is scanned into the file of the Image File Wrapper (IFW) database.
When a “Notice of Intent To Issue Inter Partes Reexamination Certificate” (NIRC) is appropriate, a notice will be printed for the merged proceeding and scanned into the files of the merged proceeding. Both reexamination files will then be processed. The CRU should prepare the file of the concurrent proceedings in the manner specified in MPEP § 2687, before release to Office of Data Management (via the CRU).
The above guidance should be extended to situations where more than two requests for reexamination are filed for a single patent. The guidance should also be extended to situations where one of the requests is a request for ex parte reexamination. However, where an ex parte reexamination is to be included in the merger, allowance must be made for the statement and reply periods provided for in an ex parte reexamination after the order granting reexamination is issued. If all the reexamination proceedings to be merged are ex parte reexaminations, the present section does not apply, but rather see MPEP § 2283.
IV. PROCEEDINGS NOT MERGED
Pursuant to 35 U.S.C. 314(c), “[u]nless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section…shall be conducted with special dispatch within the Office.” This statutory provision is grounded on the need for certainty and finality as to the question of patentability raised by the request for reexamination. Thus, if a second request for reexamination will unduly delay the first reexamination proceeding, the two proceedings generally will not be merged. If the Office were to merge the two proceedings, the first reexamination proceeding would need to be withdrawn from its place in the process, thus delaying, instead of advancing, prosecution. This would run contrary to the statutory “special dispatch” requirement of 35 U.S.C. 314 and its intent. On the other hand, if the Office does not merge, the first reexamination proceeding can be concluded, and any question of patentability raised by the second reexamination request can be resolved in the second proceeding, with no delay resulting. The second request is then considered based on the claims in the patent as indicated in the issued reexamination certificate, rather than the original claims of the patent. However, the Office always retains the authority to merge because in some instances, it may be more efficient to merge the two proceedings, which would foster “special dispatch.” The instances where the Office may, or may not, merge an ongoing reexamination proceeding with a subsequent reexamination proceeding, are addressed on a case-by-case basis.
V. 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 fee, appeal fee, brief fee, oral hearing fee), only a single fee need be paid. For example, only one fee need be paid for the patent owner’s appellant brief (or that of the third party requester), even though the brief relates to merged multiple proceedings and copies must be filed for each file in the merged proceeding.
VI. PETITION TO MERGE MULTIPLE COPENDING REEXAMINATION PROCEEDINGS
No petition to merge multiple reexamination proceedings is necessary since the Office will generally, sua sponte, make a decision as to whether it is appropriate to merge the multiple reexamination proceedings. If any petition to merge the proceedings is filed prior to the order to reexamine the second request, it will not be considered but will be returned to the party submitting the same. The decision expunging such a premature petition will be made of record in both reexamination files. See MPEP § 2667.
The patent owner can file a petition to merge the proceedings at any time after the order to reexamine the second request. Note that the acceptance of a petition to merge the multiple proceedings at any time after the order to reexamine the second request is contrary to 37 CFR 1.939 since such acceptance can be prior to the issuance of the first Office action. Accordingly, the requirement of 37 CFR 1.939 is hereby waived to the extent that a petition for merger of a reexamination proceeding with a reexamination proceeding or with a reissue (see MPEP § 2686.03) can be submitted after the order to reexamine has been issued in all the reexamination proceedings to be merged. This waiver is made to assure merger at the earliest possible stage. The third party requester of a reexamination proceeding (reexamination # 1) does not have a right to file a petition under 37 CFR 1.182 to merge that reexamination proceeding with another reexamination proceeding (reexamination # 2), where the reexamination third party requester does not have any standing to request relief with respect to the other reexamination proceeding (reexamination # 2). No such standing is provided for anywhere in the statute. Instead of filing a petition under 37 CFR 1.182 to merge the reexamination proceedings, that third party requester may file a notification of concurrent proceedings pursuant to 37 CFR 1.985(b). After being notified of the existence of the concurrent reexamination proceedings and after consideration of the merger and suspension options becomes ripe, the Office would sua sponte consider any action to be taken. The requester does have the right to file a petition under 37 CFR 1.182 to stay the reexamination proceeding that it requested.
All decisions on the merits of petitions to merge multiple reexamination proceedings, where at least one of the proceedings is an inter partes reexamination, will be made by OPLA.
Decisions on the merits of petitions to merge multiple reexamination proceedings, where none of the proceedings is an inter partes reexamination, will be made by the CRU Director (or by the CRU SPRS, if the CRU Director delegates such to the CRU SPRS); see MPEP § 2283.