2246 Decision Ordering Reexamination under 35 U.S.C. 304 [R-01.2024]

If a request for reexamination is granted, the examiner’s decision granting the request will conclude that a substantial new question of patentability has been raised by (A) identifying all claims and issues, (B) identifying the patents and/or printed publications relied on, and (C) providing a brief statement of the rationale supporting each new question.

In the examiner’s decision, the examiner must identify at least one substantial new question of patentability and explain how the prior art patents and/or printed publications raise such a question. The examiner should indicate, insofar as possible, their initial position on all the issues identified in the request or by the requester (without rejecting claims) so that comment thereon may be received in the patent owner’s statement and in the requester’s reply. The prior art relied on should be listed on a form PTO-892 if it is not already listed on a form PTO/SB/08 or PTO/SB/42 (or on a form having a format equivalent to one of these forms) by the requester. A copy of a reference should be supplied only where it has not been previously supplied to the patent owner and requester.

As to each substantial new question of patentability identified in the decision, the decision should point out:

• (A) The prior art patents and printed publications which add some new teaching as to at least one claim;
• (B) What that new teaching is;
• (C) The claims that the new teaching is directed to;
• (D) That the new teaching was not previously considered nor addressed in the earlier concluded examination or review of the patent or a final holding of invalidity by a federal court, and was not raised to or by the Office in a pending reexamination or supplemental examination of the patent;
• (E) That the new teaching is such that a reasonable examiner would consider the new teaching to be important in deciding to allow the claim being considered; and
• (F) Where the question is raised, or where it is not clear that a patent or printed publication pre-dates the patent claims, a discussion should be provided as to why the patent or printed publication is deemed to be available against the patent claims.

See MPEP § 2247.01 for an example of a decision granting a request for reexamination.

In a simple case, the examiner may adopt the reasons provided by the requester in the discussion of the substantial new question of patentability.

The example in MPEP § 2247.01 is drafted for the case where the “request indicates that Requester considers that Claims 1-3 are unpatentable over Smith taken with Jones.” There may, however, be a request that does not indicate the claims to be unpatentable over the art, but rather that a substantial new question of patentability is raised by the art. This may occur, for example, in a patent owner request filed to address prior art that raises a substantial new question of patentability but the claims are still patentable over the art. In such an instance, the decision on the request should not state that the “request indicates that Requester considers that Claims 1-3 are unpatentable over Smith taken with Jones.” Rather, it should state that the “request indicates that Requester considers that a substantial new question of patentability is raised as to Claims 1-3 based on Smith taken with Jones.”

In the decision on the request, the examiner will not decide, and no statement should be made as to, whether the claims are rejected over the patents and printed publications. The examiner does not decide the question of patentability of the claims in the decision on the request. The examiner only decides whether there is a substantial new question of patentability to grant the request to order reexamination.

If arguments are raised by a requester (third party or patent owner) as to grounds not based on the patents or printed publications, such as those based on public use or sale, or abandonment under 35 U.S.C. 102(c) for reexamination proceedings examined under the first-to-invent prior art regime, the examiner should note that such grounds are improper for reexamination under 35 U.S.C. 302 and are not considered or commented upon. See 37 CFR 1.552(c).

The decision granting the request must set forth the time periods for the patent owner and requester to file their statement and any reply thereto.

Form paragraph 22.01 should be used at the beginning of each decision letter.

Form paragraph 22.73 should be used at the end of each decision letter.

I. PROCESS OF PREPARING THE DECISION ON THE REQUEST FILED UNDER 35 U.S.C. 302

After the reexamination file has been reviewed in the Central Reexamination Unit (CRU) to ensure that it is ready for examination, the reexamination proceeding will be assigned to an examiner.

In the event the CRU Reexamination Specialist (SPRS) believes that another Art Unit within the CRU should examine the reexamination file, see MPEP § 2237 for procedures for transferring the reexamination file.

After the examiner receives the new reexamination file, the examiner will prepare for and set up a panel review conference as per MPEP § 2271.01, to discuss the issuance of a decision on the request for reexamination. The examiner may prepare the decision on the request for reexamination, and, where applicable, (where the statement has been waived by patent owner - see MPEP § 2249 “Waiver of Statement Program”) the first Office action to accompany the decision after the conference, or may prepare the decision on the request for reexamination, and, where applicable, the first Office action prior to the conference and revise it as needed after the conference.

If the conference confirms the examiner’s preliminary decision to grant reexamination, the decision on the request for reexamination will be completed and signed by the examiner, with the two or more other conferees initialing the action (as “conferee”) to indicate their presence in the conference. When ready, the examiner’s decision will be processed and mailed. A transmittal form PTOL-465 with the third-party requester’s address will be completed, if a copy for mailing is not already available. The transmittal form PTOL-465 is used to forward copies of Office actions (and any references cited in the actions) to the third-party requester. Whenever an Office action is issued, a copy of this form will be made and attached to a copy of the Office action. The use of this form removes the need to retype the third-party requester’s address each time a mailing is required. In conjunction with the mailing, any appropriate processing (e.g., content entry through the Patent Data Portal, update scanning) is carried out by the staff of the CRU.

II. SEEKING REVIEW OF A FINDING OF A SUBSTANTIAL NEW QUESTION OF PATENTABILITY IN EX PARTE REEXAMINATION PROCEEDINGS UNDER 35 U.S.C. 302

A substantive determination by the Director of the USPTO to institute reexamination pursuant to a finding that the prior art patents or printed publications raise a substantial new question of patentability (SNQ) is not subject to review by the courts until a final agency decision in the reexamination proceeding has issued. See Joy Mfg. Co. v. Nat’l Mine Serv. Co., Inc., 810 F.2d 1127, 1 USPQ2d 1627 (Fed. Cir. 1987); Heinl v. Godici, 143 F. Supp.2d 593 (E.D.Va. 2001). Note further the decision of Patlex Corp. v. Quigg, 680 F. Supp. 33, 35, 6 USPQ2d 1296, 1298 (D.D.C. 1988) (the legislative scheme leaves the Director’s 35 U.S.C. 303 determination entirely to the Director's discretion and not subject to judicial review until a final agency decision on the reexamination proceeding has issued).

A patent owner may challenge the correctness of the decision to grant an order for ex parte reexamination under 35 U.S.C. 304 on the basis that there is no SNQ by requesting reconsideration of the examiner's SNQ determination in a patent owner’s statement under 37 CFR 1.530 discussing the SNQ raised in the reexamination order for the examiner's consideration. See 35 U.S.C. 304. When the examiner makes a rejection based in whole or in part on a reference (patent or printed publication) in an Office action, the patent owner may present a challenge to the examiner's SNQ determination by requesting reconsideration of the examiner's determination that the reference raises a SNQ and presenting appropriate arguments in the response to the Office action. See 37 CFR 1.111(b) (the patent owner's response to an Office action must point out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the Office action). By presenting arguments regarding the SNQ to the examiner in the early stages of the proceeding, the patent owner helps the Office to resolve the issues quickly. For example, if the patent owner timely files a statement or response, and the examiner agrees with the patent owner that no SNQ has been raised in the ex parte reexamination proceeding, then the proceeding prosecution will be terminated or the reexamination order will be vacated (whichever is appropriate). However, if the examiner determines that the SNQ is proper, further review can be obtained by exhausting the patent owner's rights through the reexamination proceeding and ultimately seeking review before the Board - along with an appeal of any rejections. To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board.

In order to preserve the right to have the Board review the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner. Accordingly, for ex parte reexamination proceedings ordered under 35 U.S.C. 304 on or after June 25, 2010, the patent owner may seek a final agency decision from the Board on the SNQ issue only if the patent owner has first requested reconsideration before the examiner (e.g., in a patent owner's statement under 37 CFR 1.530 or in a patent owner's response under 37 CFR 1.111) and then seeks review of the examiner's SNQ determination before the Board. In its appeal brief, the patent owner is to clearly present the issue and arguments regarding the examiner's SNQ determination under a separate heading and identify the communication in which the patent owner first requested reconsideration before the examiner. (For ex parte reexamination proceedings ordered under 35 U.S.C. 304 prior to June 25, 2010, if the patent owner presents the SNQ issue in its appeal brief, the Board panel will review the procedural SNQ issue along with its review of any rejections in an appeal and will enter a final agency decision accordingly.) See MPEP § 2274 for further discussion of the appeal process as to the SNQ issue.

Separate from the Board's consideration of the SNQ issue, a patent owner may file a petition under 37 CFR 1.181(a)(3) to vacate an ex parte reexamination order as “ultra vires.” Such petitions should be rare, and will be granted only in a situation where the USPTO acted in “brazen defiance” of its statutory authorization in granting the order for ex parte reexamination. See Heinl, 143 F. Supp. 2d at 601-02. These types of petitions to vacate an ex parte reexamination order are not decided by the Board, but are delegated to the Director of Central Reexamination Unit (CRU).

“Appropriate circumstances” under 37 CFR 1.181(a)(3) exist to vacate the order granting reexamination where, for example:

• (A) the reexamination order under 35 U.S.C. 304 is facially not based on prior art patents or printed publications (this does not include a situation where the Office has given reasons why a reference is a prior art patent or printed publication, and patent owner disagrees, but rather would include, for example, a situation where reexamination is ordered based on 35 U.S.C. 112, with a reference used to support a new question as to 35 U.S.C. 112);
• (B) all claims of the patent for which reexamination was ordered were held to be invalid by a final decision of a federal court after all appeals;
• (C) reexamination was ordered for the wrong patent; or
• (D) reexamination was ordered based on a duplicate copy of the request.

There is no right to petition, as an “ultra vires” action by the Office, if the finding of a SNQ is based on reasons other than those urged by the requester (or based on less than all the grounds urged by the requester).

When a petition under 37 CFR 1.181 is filed to vacate a reexamination order under 35 U.S.C. 304, the third-party requester (where one is present in the reexamination proceeding) may file a single submission in opposition to the petition. Because reexamination proceedings are conducted with special dispatch, 35 U.S.C. 305, any such opposition by the third-party requester must be filed within two weeks of the date upon which a copy of the original 37 CFR 1.181 petition was served on the third-party requester to ensure consideration. It is advisable that, upon receipt and review of the served copy of such a 37 CFR 1.181 petition which the third-party requester intends to oppose, the requester should immediately place a courtesy telephone call to both the CRU support staff and the CRU SPRS to notify the Office that an opposition to the 37 CFR 1.181 petition will be filed. Whenever possible, filing of the opposition should be submitted electronically.

The filing of a 37 CFR 1.181 petition to vacate an ultra vires reexamination order is limited to a single submission, even if an opposition thereto is filed by a third-party requester.

III. PRIOR ART SUBMITTED AFTER THE ORDER

Any prior art citations or written statements under 37 CFR 1.501 submitted after the date of the decision on the order are stored until the reexamination is concluded. Note 37 CFR 1.502 and 1.902. After the reexamination proceeding is concluded, the submission is entered in the patent file. Submissions filed after the date of an order for reexamination will not be considered by the examiner during the reexamination. See MPEP § 2206.

[top]