35 U.S.C. 316 Certificate of patentability, unpatentability and claim cancellation.
- (a) IN GENERAL.— In an inter partes reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.
37 CFR 1.997 Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding.
- (a) To conclude an inter partes reexamination proceeding, the Director will issue and publish an inter partes reexamination certificate in accordance with 35 U.S.C. 316 setting forth the results of the inter partes reexamination proceeding and the content of the patent following the inter partes reexamination proceeding.
- (b) A certificate will be issued and published in each patent in which an inter partes reexamination proceeding has been ordered under § 1.931. Any statutory disclaimer filed by the patent owner will be made part of the certificate.
- (c) The certificate will be sent to the patent owner at the address as provided for in § 1.33(c). A copy of the certificate will also be sent to the third party requester of the inter partes reexamination proceeding.
- (d) If a certificate has been issued and published which cancels all of the claims of the patent, no further Office proceedings will be conducted with that patent or any reissue applications or any reexamination requests relating thereto.
- (e) If the inter partes reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.991, the reissued patent will constitute the reexamination certificate required by this section and 35 U.S.C. 316.
- (f) A notice of the issuance of each certificate under this section will be published in the Official Gazette.
Since abandonment is not possible in a reexamination proceeding, an inter partes reexamination certificate will be issued at the conclusion of the proceeding for each patent in which a reexamination proceeding has been ordered under 37 CFR 1.931, except where the reexamination has been concluded by vacating the reexamination proceeding, or by the grant of a reissue patent on the same patent in which case the reissue patent also serves as the reexamination certificate.
The inter partes reexamination certificate will set forth the results of the proceeding and the content of the patent following the reexamination proceeding. The certificate will:
- (A) cancel any patent claims determined to be unpatentable;
- (B) confirm any patent claims determined to be patentable;
- (C) incorporate into the patent any amended or new claims determined to be patentable;
- (D) make any changes in the description approved during reexamination;
- (E) include any statutory disclaimer or terminal disclaimer filed by the patent owner;
- (F) identify unamended claims which were held invalid on final holding by another forum on any grounds (e.g., by checking Box 9 “Other” on form PTOL-2068 and describing the status and Box 16 “Other” on the examiner’s checklist form PTO-1516);
- (G) identify any patent claims not reexamined;
- (H) be mailed on the day of its date to the patent owner at the address provided for in 37 CFR 1.33(c), and a copy will be mailed to the requester; and
- (I) refer to patent claims, dependent on amended claims, determined to be patentable.
If a certificate issues which cancels all of the claims of the patent, no further Office proceedings will be conducted with regard to that patent or any reissue application or reexamination request directed thereto. However, in an extremely rare situation in which a reissue application is copending with a reexamination proceeding in which a reexamination certificate subsequently issues cancelling all claims of the patent, the patent owner may file a petition under 37 CFR 1.183 requesting waiver of the provisions of 37 CFR 1.997(d), to address claims that were pending in the reissue application prior to the issuance of the certificate. Any such petition must be accompanied by a paper cancelling any claim within the scope of the claims canceled by the certificate and pointing out why the claims remaining in the reissue application can be patentable, despite the cancellation of all the patent claims by certificate, i.e., why the remaining claims are patentable over the cancelled claims. Such a paper will be available to the examiner, should the petition be granted.
If a reexamination proceeding is concluded by the grant of a reissue patent as provided for in 37 CFR 1.991, the reissue patent will constitute the reexamination certificate required by 35 U.S.C. 316.
If all of the claims are disclaimed in a patent under reexamination, a certificate under 37 CFR 1.997 will be issued indicating that fact.
A notice of the issuance of each reexamination certificate will be published in the Official Gazette on its date of issuance in a format similar to that used for reissue patents. See MPEP § 2691.