2236 Assignment of Reexamination [R-10.2019]
Reexamination requests are generally assigned to the Central Reexamination Unit (CRU) art unit which examines the technology (Chemical, Electrical, Mechanical, etc.) in which the patent to be reexamined is currently classified as an original classification. In that art unit, the CRU Supervisory Patent Reexamination Specialist (SPRS) will assign the reexamination request to a primary examiner, other than the examiner who originally examined the patent application (see “Examiner Assignment Policy” below), who is most familiar with the claimed subject matter of the patent. In an extremely rare situation, where a proceeding is still in a Technology Center (TC) rather than the CRU, the reexamination may be assigned to an assistant examiner if no knowledgeable primary examiner is available. In such an instance a primary examiner must sign all actions, conference all actions with a SPRS or manager and another examiner, and take responsibility for all actions taken.
I. EXAMINER ASSIGNMENT POLICYIt is the policy of the Office that the CRU SPRS will assign the reexamination request to an examiner different from the examiner(s) who examined the patent application. Thus, under normal circumstances, the reexamination request will not be assigned to a primary examiner or assistant examiner who was involved in any part of the examination of the patent for which reexamination is requested (e.g., by preparing/signing an action), or was so involved in the examination of the parent of the patent. This would preclude assignment of the request to an examiner who was a conferee in an appeal conference or panel review conference in an earlier concluded examination of the patent (e.g., the application for patent, a reissue, or a prior concluded reexamination proceeding). The conferee is considered to have participated in preparing the Office action which is preceded by the conference.
Exceptions to this general policy include cases where the original examiner is the only examiner with adequate knowledge of the relevant technology to examine the case. In the unusual case where there is a need to assign the request to the original examiner, the assignment must be approved by the CRU Director, and the fact that such approval was given by the CRU Director must be stated by the examiner in the decision on the request for reexamination or must be indicated with the CRU Director’s signature affixed at the end of the order or action.
It should be noted that while an examiner who examined an earlier concluded reexamination proceeding is generally excluded from assignment of a newly filed reexamination, if the earlier reexamination is still ongoing, the same examiner will generally be assigned the new reexamination.
Copending reissue and reexamination proceedings:- (A) When a reissue application is pending for a patent, and a reexamination request is filed under 35 U.S.C. 302 for the same patent, the reexamination request is generally assigned to an examiner who did not examine the original patent application even if the examiner who examined the patent application is also examining the reissue application. If the reexamination request is granted and the reissue and reexamination proceedings are later merged (see MPEP § 2285), the merged proceeding will be handled (upon return of the files from the Office of Patent Legal Administration (OPLA)) by the examiner who is handling the reissue application. However, if that examiner was involved in any part of the examination of the patent for which reexamination is requested (e.g., by preparing/signing an action), or was involved in the examination of the parent application of the patent, a different examiner will be assigned. In this instance, the reissue application would be transferred (reassigned) from the originally assigned examiner.
- (B) When a reexamination proceeding is pending for a patent, and a
reissue application is filed for the same patent:
- (1) Where reexamination has already been ordered (granted) in the reexamination proceeding, OPLA should be notified as promptly as possible after the reissue application is available for docketing, that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be scanned into the Image File Wrapper (IFW) at the time of the notification to OPLA. If the reissue and reexamination proceedings are merged by OPLA, the reissue application will generally be assigned to the examiner who would ordinarily handle the reissue application. However, if that examiner was involved in any part of the examination of patent for which reexamination is requested (e.g., by preparing/signing an action), or was so involved in the examination of the parent application of the patent, a different examiner will be assigned. If the reissue and reexamination proceedings are not merged by OPLA, the decision will provide guidance as to assignment of the reissue proceeding depending on the individual fact situation.
- (2) If reexamination has not yet been ordered, the Supervisory Patent Reexamination Specialist (SPRS) will ensure that any parallel reissue application is not assigned or acted upon, until a decision on the reexamination request under 35 U.S.C. 302 is made. If reexamination is denied, the reexamination proceeding will be concluded pursuant to MPEP § 2294, and the reissue application assigned in accordance with MPEP § 1440. If the reexamination request is granted (i.e., reexamination is ordered), the SPRS will await the filing of any statement under 37 CFR 1.530 and any reply under 37 CFR 1.535, or the expiration of the time for same (see MPEP § 2249 – § 2251), and then OPLA will be promptly notified to consider merger of the proceedings. If any of the reexamination file, reissue application, or patent files are in paper form, they should be scanned into the Image File Wrapper (IFW) at the time OPLA is notified. If the reissue and reexamination proceedings are merged, the reissue application will generally be assigned (upon return of the files from OPLA) to the examiner who ordinarily handles the reissue application. However, if that examiner was involved in any part of the examination of the patent for which reexamination is requested (e.g., by preparing/signing an action), or was so involved in the examination of the parent application of the patent, a different examiner will be assigned. If the reissue and reexamination proceedings are not merged, the decision may provide guidance as to assignment of the reissue proceeding, if necessary, depending on the individual fact situation.
Should a reexamination be inadvertently assigned to an “original examiner” (in a situation where the TC or CRU Director’s approval is not stated in the decision on the request), the patent owner or the third party requester who objects must promptly file a paper notifying the Office. Any paper notifying the Office of an assignment to an “original examiner” must be filed within two months of the first Office action or other Office communication indicating the examiner assignment, otherwise reassignment based on such objection will not be considered. Reassignment of the reexamination proceeding to a different examiner will be addressed on a case-by-case basis. In no event will the assignment to the original examiner, by itself, be grounds for vacating any Office decision(s) or action(s) and “restarting” the reexamination.
A situation may arise where a party timely (i.e., within the two months noted above) files a paper notifying the Office to the assignment of a reexamination to the “original examiner,” but that paper does not have a right of entry under the rules. An example of this is where a third party requester becomes aware of the assignment to the “original examiner” via that examiner signing the order for reexamination, and the patent owner does not file a statement under 37 CFR 1.530. In that situation, the third party requester cannot file a reply under 37 CFR 1.535, and thus has no way to present the paper directed to the examiner assignment (no right of entry under the rules). In situations where a paper directed to the examiner assignment has no right of entry under the rules, the Office may waive the rules to the extent that the paper directed to the examiner assignment will be entered and considered.
