2248 Petition From Denial of Request Filed Under 35 U.S.C. 302 [R-08.2017]

PROCESSING OF PETITION UNDER 37 CFR 1.515(c)

After a request for reexamination under 35 U.S.C. 302 has been denied, the Central Reexamination Unit (CRU) will allow time for a petition seeking review of the examiner’s determination refusing reexamination. If a petition seeking review of the examiner’s determination refusing reexamination is not filed within one (1) month of the examiner’s determination, the CRU will then process the reexamination file as a concluded reexamination file. See MPEP § 2247 and § 2294.

If a petition seeking review of the examiner’s determination refusing reexamination is filed, it is brought to the attention of the CRU Director or designee for decision. Where a petition is filed, the CRU Director will review the examiner’s determination that a substantial new question of patentability has not been raised. The CRU Director’s review will be de novo. Each decision by the CRU Director will conclude with the paragraph:

This decision is final and nonappealable. See 35 U.S.C. 303(c) and 37 CFR 1.515(c). No further communication on this matter will be acknowledged or considered.

If the petition is granted, the decision of the CRU Director should include a sentence setting a two-month period for filing a statement under 37 CFR 1.530; the reexamination file will then be returned to the CRU Supervisory Patent Reexamination Specialist (SPRS) of the art unit that will handle the reexamination for consideration of reassignment to another examiner.

In the situation in which the examiner's determination failed to find any SNQ, reassignment will be the general rule. Only in exceptional circumstances, where no other examiner is available and capable to give a proper examination, will the case remain with the examiner who denied the request.

Under normal circumstances, the reexamination proceeding will not be reassigned to a primary examiner or assistant examiner who was involved in any part of the examination of the patent for which reexamination is requested. Only where unusual circumstances are found to exist may the CRU Director make an exception to this practice and reassign the reexamination proceeding to an examiner involved with the examination of the patent. For example, if the original examiner of the patent and the examiner who issued the denial are the only examiners with adequate knowledge of the relevant technology, the CRU Director may permit reassignment of the reexamination proceeding to the examiner that originally examined the patent.

The requester may seek review of a denial of a request for reexamination only by petitioning the Director of the USPTO under 37 CFR 1.515(c) and 1.181 within one month of the mailing date of the decision denying the request for reexamination. Additionally, any request for an extension of the time period to file such a petition from the examiner’s denial of a request for reexamination can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).

After the time for petition has expired without a petition having been filed, or a petition has been filed and the decision thereon affirms the denial of the request, a partial refund of the filing fee for requesting reexamination will be made to the requester. (35 U.S.C. 303(c) and 37 CFR 1.26(c)). A decision on a petition under 37 CFR 1.515(c) is final and is not appealable.

37 CFR 1.515(c) applies only to challenging a basis for refusing reexamination; it does not apply to challenging a basis for granting of reexamination. Even if an order grants reexamination, a petition under 37 CFR 1.515(c) may be filed to challenge any refusal to reexamine a requested claim or a claim based on a requested basis, if applicable, as described below.

If an order granting reexamination includes a determination that the third party requester has not raised a substantial new question of patentability (SNQ) for one claim, but has raised a SNQ for at least one other claim, then third party requester may (within one month of the mailing date of the order) file a petition under 37 CFR 1.515(c) for reconsideration of the determination as to the claim for which no SNQ has been found to be raised.

Similarly, a petition under 37 CFR 1.181 may be filed (within one month of the mailing date of the order) requesting review of a determination granting a request for reexamination, if the determination grants the request as to a specific claim for some reasons (SNQs) advanced in the request but does not grant the request as to the claim for other reasons (SNQs) advanced in the request. A decision on such a petition is final and non-appealable. If no petition is timely filed, the determination shall be final and non-appealable. See, e.g., Belkin Int'l, Inc. v. Kappos, 696 F.3d 1379, 104 USPQ2d 1348 (Fed. Cir. 2012).

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