2294 Concluded Reexamination Proceedings [R-07.2015]
Ex parte reexamination proceedings may be concluded in one of four ways:
- (A) The prosecution of the proceeding may be brought to an end, and the
proceeding itself concluded, by a denial of reexamination, or vacating the
reexamination proceeding, or terminating the reexamination proceeding. (In these
instances, no Reexamination Certificate is issued).
- (1) A reexamination file (IFW or paper) in which reexamination has been denied or vacated is processed by the Central Reexamination Unit (CRU) or Technology Center (TC) to provide the partial refund set forth in 37 CFR 1.26(c). The reexamination file will then be given a 420 status (reexamination denied) or a 422 status (reexamination vacated). A copy of the Patent Data Portal (PDP) “Application Number Information” screen and the “Contents” screen is printed. The printed copy is annotated by adding the comment “PROCEEDING CONCLUDED,” and the annotated copy is then scanned into IFW using the miscellaneous letter document code.
- (2) A reexamination file (IFW or paper) in which the reexamination proceeding has been terminated should be forwarded to the Central Reexamination Unit (CRU) if the file is not already there. The reexamination file will then be given a 420 status. A copy of the PDP “Application Number Information” screen and the “Contents” screen is printed, the printed copy is annotated by adding the comment “PROCEEDING CONCLUDED,” and the annotated copy is then scanned into IFW using the miscellaneous letter document code. A partial refund is not made in this instance, since the reexamination was properly commenced and addressed, and was terminated later based upon a court decision, or the like.
- (B) The proceeding may be concluded under 37 CFR 1.570(b) with the issuance of a Reexamination Certificate.
A reexamination proceeding that is to be concluded in this manner should be processed as set forth in MPEP § 2287, and reviewed by the CRU Supervisory Patent Reexamination Specialist (SPRS) or TC Quality Assurance Specialist (QAS).
- (C) The proceeding may be concluded under 37 CFR 1.570(e) where the reexamination proceeding has been merged with a reissue proceeding and a reissue patent is granted; an individual reexamination certificate is not issued, but rather the reissue patent serves as the certificate.
A reexamination proceeding that is to be concluded in this manner should be processed, together with the reissue proceeding, as set forth in MPEP § 1455 and MPEP § 1456.
- (D) The proceeding may be concluded under 37 CFR 1.997(b) where the ex parte reexamination proceeding has been merged with an inter partes reexamination proceeding and a single reexamination certificate is issued.
A reexamination proceeding that is to be concluded in this manner should be processed, together with the inter partes reexamination, into a merged certificate of the nature set forth in MPEP § 2690 and MPEP § 2694.
