2285 Copending Ex Parte Reexamination and Reissue Proceedings [R-07.2015]

The general policy of the Office is that a reissue application examination and an ex parte reexamination proceeding will not be conducted separately at the same time as to a particular patent. The reason for this policy is to permit timely resolution of both proceedings to the extent possible and to prevent inconsistent, and possibly conflicting, amendments from being introduced into the two proceedings on behalf of the patent owner. Accordingly, if both a reissue application and an ex parte reexamination proceeding are pending concurrently on a patent, a decision will normally be made (A) to merge the two proceedings or (B) to stay one of the two proceedings. See In re Onda, 229 USPQ 235 (Comm’r Pat. 1985). The decision as to whether the proceedings are to be merged, or which proceeding (if any) is to be stayed is made in the Office of Patent Legal Administration (OPLA).

Where a reissue application and a reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of such. 37 CFR 1.178(b), 1.565(a), and 1.985. The patent owner should file in the reissue application, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.178(b) in order to notify the Office in the reissue application of the existence of the reexamination proceeding on the same patent. See MPEP § 1418. In addition, the patent owner should file in the reexamination proceeding, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.565(a) or 1.985 (depending on whether the reexamination proceeding is an ex parte reexamination proceeding or an inter partes reexamination proceeding) to notify the Office in the reexamination proceeding of the existence of the two concurrent proceedings.

I. TIME FOR MAKING DECISION ON MERGING OR STAYING THE PROCEEDINGS

A decision whether or not to merge the reissue application examination and the ex parte reexamination proceeding, or to stay one of the two proceedings, will not be made prior to the mailing of an order to reexamine the patent pursuant to 37 CFR 1.525, and the expiration of the statement-reply period following the order to reexamine. Until such time, the examination of the reissue application will proceed. A determination on the request must not be delayed because of the existence of a copending reissue application, since 35 U.S.C. 304 and 37 CFR 1.515 require a determination within 3 months following the filing date of the request. See MPEP § 2241. If the decision on the request denies reexamination (MPEP § 2247), the examination of the reissue application should be continued. If reexamination is ordered (MPEP § 2246), the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center Quality Assurance Specialist (QAS) 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 to § 2251). Thereafter, CRU SPRS or TC QAS should promptly notify OPLA 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 hand delivered to OPLA at the time of the notification to OPLA.

If a reissue application is filed during the pendency of a reexamination proceeding, OPLA should be notified as promptly as possible after the reissue application reaches the TC, 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 hand delivered to the OPLA at the time of the notification to OPLA.

The decision on whether or not the proceedings are to be merged, or which proceeding (if any) is to be stayed, will generally be made as promptly as possible after receipt of the notification to OPLA and, if applicable, delivery of all the paper files to OPLA. Until a decision is mailed merging the proceedings or staying one of the proceedings, the two proceedings will continue and be conducted simultaneously, but separately.

The Office may in certain situations issue a certificate at the termination of a reexamination prosecution, even if a copending reissue application or another reexamination request has already been filed.

II. CONSIDERATIONS IN DECIDING WHETHER TO MERGE THE PROCEEDINGS OR WHETHER TO STAY A PROCEEDING

The decision on whether to merge the proceedings or stay a proceeding will be made on a case-by-case basis based upon the status of the various proceedings. The decision to merge, or not to merge, is within the sole discretion of the Office to facilitate/carry out the orderly operation of the Office in addressing the proceedings. The status of the reissue application and the reexamination proceeding will be taken into account in the decision as to whether merger will be ordered, or one of the two proceedings stayed.

A. Reissue About To Issue, Reexamination Requested

If the reissue patent will issue before the determination on the reexamination request must be made (e.g., within three months from the request’s filing date), the determination on the request should normally be delayed until after the granting of the reissue patent; and then the determination should be made on the basis of the claims in the reissue patent. The reexamination, if ordered, would then be on the reissue patent claims rather than the original patent claims. Since the reissue application would no longer be pending, the reexamination would be processed in a normal manner.

Where a reissue patent has been issued, the determination on the request for reexamination should specifically point out that the determination has been made on the claims of the reissue patent and not on the claims of the original patent. Any amendment made in the reexamination proceeding should treat the changes made by the reissue as the text of the patent, and all bracketing and underlining made with respect to the patent as changed by the reissue. Note that the reissue claims used as the starting point in the reexamination proceeding must be presented in the reexamination proceeding as a “clean copy.” Thus, words bracketed in the reissue patent claim(s) would not appear at all in the reexamination clean copy of the claim(s). Also, words that were added via the reissue patent will appear in italics in the reissue patent, but must appear in plain format in the reexamination clean copy of the claim(s).

If a reissue patent issues on the patent under reexamination after reexamination is ordered, the next action from the examiner in the reexamination should point out that further proceedings in the reexamination will be based on the claims of the reissue patent and not on the patent surrendered. Form paragraph 22.05 may be used in the Office action.

Where the reissue patent has issued prior to the filing of a request for reexamination of the parent patent, see MPEP § 2258.

B. Reissue Pending, Reexamination Request Filed

Where a reissue patent will not be granted prior to the expiration of the 3-month period for making the determination on the reexamination request, a decision will be made as to whether the reissue application and the reexamination proceeding are to be merged, or which of the two (if any) is to be stayed, after an order to reexamine has been issued.

The general policy of the Office is to merge the more narrow reexamination proceeding with the broader reissue application examination whenever it is desirable to do so in the interests of expediting the conduct of both proceedings. In making a decision on whether or not to merge the reissue application and the reexamination proceeding, consideration will be given to the status of the reissue application examination at the time the order for reexamination of the patent pursuant to 37 CFR 1.525 is mailed. For example, if examination of the reissue application has not begun, or if a rejection by the primary examiner has not been appealed to the Board pursuant to 37 CFR 41.31, it is likely that the OPLA will order a merger of the reissue application examination and the reexamination proceeding. If, however, the reissue application is on appeal to the Board or the courts, that fact would be considered in making a decision whether to merge the reissue application and the reexamination proceeding or stay one of them. See In re Stoddard, 213 USPQ 386 (Comm’r Pat. 1982); and In re Scragg, 215 USPQ 715 (Comm’r Pat. 1982).

If such a merger of the reissue application and the reexamination proceeding is ordered, the order merging them will also require that the patent owner place the same claims in the reissue application and in the reexamination proceeding for purposes of the merged proceedings. An amendment may be required to be filed to do this within a specified time set in the order merging the proceedings.

If the reissue application examination has progressed to a point where a merger of the two proceedings is not desirable at that time, then the reexamination proceeding will generally be stayed until the reissue application examination is complete on the issues then pending. After completion of the examination on the issues then pending in the reissue application examination, the stay of the reexamination proceeding will be removed and the proceedings will be merged if the reissue application is pending, or the reexamination proceeding will be conducted separately if the reissue application has become abandoned. The reissue application examination will be reopened, if necessary, for merger of the reexamination proceeding therewith.

If the reissue application examination and the reexamination proceeding are merged, the issuance of the reissue patent will also serve as the certificate under 37 CFR 1.570 and the reissue patent will so indicate.

C. Reexamination Proceedings Underway, Reissue Application Filed

When a reissue application is filed after an ex parte reexamination request has been filed, OPLA should be notified as promptly as possible after the reissue application reaches the TC. A determination will be made as to whether reexamination should be ordered. If reexamination is ordered, no first Office action will accompany the decision ordering reexamination. The order and any of the files that are paper files should then be hand delivered to OPLA.

Where reexamination has already been ordered prior to the filing of a reissue application, OPLA should be notified as promptly as possible after the reissue application reaches the TC, 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 hand delivered to the OPLA at the time of the notification to OPLA.

In making a decision on whether or not to merge the reissue application examination and the reexamination proceeding, consideration will be given as to whether issues are raised in the reissue application that would not be proper for consideration in reexamination. In addition, consideration will also be given to the status of the reexamination proceeding. For example, if the reexamination proceeding is on appeal to the Board or to the U.S. Court of Appeals for the Federal Circuit, or a Notice of Intent to Issue a Reexamination Certificate was issued for the reexamination, that fact would be considered in making a decision whether to merge the reissue application examination and the reexamination proceeding or stay one of them.

III. EXAMINER ASSIGNMENT

With respect to the appropriate examiner assignment of the merged reexamination/reissue proceeding, see MPEP § 2236.

IV. CONDUCT OF MERGED REISSUE APPLICATION AND REEXAMINATION PROCEEDING

Where merger is ordered, the patent owner is required to maintain identical amendments in the reissue application and the reexamination file for purposes of the merged proceeding. The maintenance of identical amendments in both files is required as long as the reissue and reexamination proceedings remain merged. See 37 CFR 1.565(d). Where identical amendments are not present in both files at the time merger is ordered, the patent owner will be required to submit an appropriate “housekeeping” amendment placing the same amendments in both proceedings. This may be accomplished by amending either of the two proceedings (the reissue application or the reexamination) or both of them, as appropriate. The patent owner must not address any issue of patentability in the housekeeping amendment. Amendments in a merged reexamination/reissue proceeding are submitted under 37 CFR 1.173, in accordance with reissue practice.

Where the merger decision indicates that an Office action will follow, the merged proceeding is returned to the examiner immediately after the decision to issue an Office action. 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 SPRS or TC QAS 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 technical support staff or the time for submitting the amendment expires, the merged proceeding will be returned to the examiner to issue an Office action.

Once the proceeding is returned to the examiner for issuance of an Office action, the examiner should prepare an Office action at the most advanced point possible for the first proceeding. Thus, if the first proceeding is ready for a final rejection and the second proceeding does not provide any new information which would call for a new ground of rejection, the examiner should issue a final rejection for the merged proceeding.

In the event that a “housekeeping” amendment to make the claims the same in each file is required by the merger decision (identical amendments to be placed in all files) but is not timely submitted, any claim that does not contain identical text in all of the merged proceedings should be rejected under 35 U.S.C. 112, second paragraph, as being indefinite as to the content of the claim, and thus failing to particularly point out the invention.

If a reissue application examination and a reexamination proceeding are merged, the merged examination will be conducted on the basis of the rules relating to the broader reissue application examination. Amendments should be submitted in accordance with the reissue practice under 37 CFR 1.121(i) and 37 CFR 1.173; see MPEP § 1453. The examiner, in examining the merged proceeding, will apply the reissue statute, rules, procedures, and case law to the merged proceeding. This is appropriate in view of the fact that the statutory provisions for reissue applications and reissue application examination include provisions equivalent to 35 U.S.C. 305 relating to the conduct of reexamination proceedings.

In any merged reissue application and reexamination proceeding, each Office action issued by the examiner will take the form of a single action which jointly applies to both the reissue application and the reexamination proceeding. Each action will contain identifying data for both the reissue application and the reexamination proceeding, and each action will be physically entered into both files, which will be maintained as separate files.

Any response by the applicant/patent owner in such a merged proceeding must consist of a single response, filed in duplicate for entry in both files (or provide multiple copies if there are multiple reexamination proceedings being merged with a reissue application), and service of a copy must be made on any third party reexamination requester. A copy of all Office actions will be mailed to the third party reexamination requester but not to any other third party.

If the applicant/patent owner in such a merged proceeding fails to file a timely and appropriate response to any Office action, then the merger will be automatically dissolved (severed). The reissue application will be held abandoned. A NIRC will be issued (see MPEP § 2287), and the Director will proceed to issue a reexamination certificate under 37 CFR 1.570 in accordance with the last action of the Office, unless further action is clearly needed in view of the difference in rules relating to reexamination and reissue proceedings.

If the applicant/patent owner in a merged proceeding files an express abandonment of the reissue application pursuant to 37 CFR 1.138, the next Office action of the examiner will accept the express abandonment, dissolve the merged proceeding, and continue the reexamination proceeding. If the applicant/patent owner files a continued prosecution reissue application (a CPA) of a reissue design application under 37 CFR 1.53(d), whereby the existing reissue design application is considered to be expressly abandoned, this will most likely result in the dissolution of the merged proceeding, a stay of the CPA reissue application, and separate, continued prosecution of the reexamination proceeding.

Where the merged proceeding is dissolved based on abandonment of the reissue application and the reexamination proceeding continues, any grounds of rejection which are not applicable under reexamination should be withdrawn (e.g., based on public use or on sale) and any new grounds of rejection which are applicable under reexamination (e.g., improper broadened claims) should be made by the examiner. The existence of any questions remaining which cannot be considered under reexamination following dissolution of the merged proceeding would be noted by the examiner as not being proper under reexamination pursuant to 37 CFR 1.552(c).

Where the merged proceeding is dissolved based on abandonment of the reissue application and the reexamination proceeding continues, there is no guarantee that any continuation reissue application will be merged with the reexamination proceeding (the continuation reissue application might be stayed pending conclusion of the reexamination). This policy is necessary to prevent the patent owner from filing reissue continuation applications to delay a decision by the Board on rejected claims.

If applicant/patent owner files a request for continued examination (RCE) of the reissue application under 37 CFR 1.114 (which may be filed on or after May 29, 2000 for an application filed on or after June 8, 1995), then the merger will be automatically dissolved (severed), and the reissue application will then be suspended. Patent owners are put on notice that, in such event, a request for continued examination (RCE) is not available in the reexamination proceeding, and any response to an Office action (e.g., response to a final rejection) in the reexamination proceeding must be made taking into account the non-availability of RCE practice. Any failure to timely respond would result in the termination of the prosecution pursuant to 37 CFR 1.550(d).

V. PETITION TO MERGE REISSUE APPLICATION AND REEXAMINATION PROCEEDING OR TO STAY EITHER OF THE TWO BECAUSE OF THE EXISTENCE OF THE OTHER

No petition to merge the reissue application and the reexamination proceeding, or stay one of them, should be filed before an order granting reexamination is issued because the Office will generally, sua sponte, make a decision to merge the reissue application and the reexamination proceeding or stay one of them. If any petition to merge the reissue application and the reexamination proceeding, or to stay one of them because of the other, is filed prior to the determination (37 CFR 1.515) and order to reexamine (37 CFR 1.525), it will not be considered, but will be returned to the party submitting the same by the CRU or TC Director, regardless of whether the petition is filed in the reexamination proceeding, the reissue application, or both. This is necessary to prevent premature papers relating to the reexamination proceeding from being filed. The decision expunging such a premature petition will be made of record in both the reexamination file and the reissue application file. See MPEP § 2267.

The patent owner may file a petition under 37 CFR 1.182 to merge the reissue application and the reexamination proceeding, or stay one of them because of the other, at the time the patent owner’s statement under 37 CFR 1.530 is filed or subsequent thereto in the event the Office has not acted prior to that date to merge or stay. The third party requester does not have a right to file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, since a reexamination third party requester does not have any standing to request relief with respect to a reissue application, to which requester cannot be a party. No such standing is provided for anywhere in the statute. Instead of filing a petition under 37 CFR 1.182 to merge a reexamination proceeding with a reissue application, a third party requester may file a notification of concurrent proceedings pursuant to MPEP § 2282. After being notified of the existence of a reissue application and after consideration of the merger and suspension options becomes ripe, the Office of Patent Legal Administration (OPLA) would sua sponte consider the action to be taken. A petition to merge the reissue application and the reexamination proceeding, which is filed by a party other than the patent owner will not be considered, but will be returned to that party (or expunged if already entered) by the CRU or TC Director as being improper under 37 CFR 1.550(g). The requester does have the right to file a petition under 37 CFR 1.182 to stay the reexamination proceeding that it requested.

All petitions to merge or stay which are filed by the patent owner or the third party requester subsequent to the date of the order for reexamination will be referred to OPLA for decision.

VI. FEES IN MERGED PROCEEDINGS

Where the proceedings have been merged and a paper is filed which requires payment of a fee (e.g., excess claim 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 an appeal brief even though the brief relates to merged multiple proceedings and copies must be filed for each file in the merged proceeding. As to excess claim fees, reissue practice will control.

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