From the category archives:

MPEP 2600

Inter Partes Reexamination (MPEP 2600)

by patentbar on December 8, 2007 · 0 comments

in MPEP 2600

What is Different from Ex Parte Reexamination?

  • applicable only to patents issuing from apps filed on or after 11/29/99
  • if request is granted, first OA is mailed with the order granting request
  • if request is denied, partial refund
  • no interviews are permitted during inter partes reexam
  • 3rd party requestor may respond to patent owner’s reply to each office action
  • 3rd party requestor may appeal to the Board or participate in patent owner’s appeal to Board
  • a party who has previously requested an inter partes reexam in which a final decision favorable to the patentability of a claim is estopped from later Court action on the basis of issues raised or issues that could have been raised in the inter partes reexam

Estoppel: Who May Not Request Inter Partes Reexamination?

  • the patent owner
  • a party who previously lost in a court action on a validity challenge to the patent on the basis of issues raised or issues that could have been raised
  • a party who has previously requested an inter partes reexam which has been granted and is still pending
  • a party who has previously requested an inter partes reexam in which a final decision favorable to the patentability of a claim was made on the basis of issues raised (or could have been) on previous request

Request for, and Service of, Inter Partes Reexamination –

Essentially the same as ex parte reexam, except: includes rule 20c2 fee of $8,800 – no small entity discount; certification that R907 estoppel does not apply, and must identify the real party who is making request

3rd Party Requestor Participation in Inter Partes Reexamination –

  • 3rd party requestor may file written comments, once, to patent owner’s reply to each OA
  • must be filed within 30 days of receiving service of patent owner’s reply to OA
  • no EOT
  • written comment (50 max) must be limited to issues raised in OA & reply
  • citations of additional prior art are limited to those necessary to respond to patent owner’s reply and issues raised by examiner in office action

Appeal in Inter Partes Reexamination –

  • examiner will issue a notice of right to appeal which is a final action setting forth final grounds for rejection and/or patentability for each claim
  • no amendments are allowed after the issuance of notice of right to appeal
  • parties may then appeal within 1 month of date of notice of right to appeal
  • parties may stipulate and request issuance of notice of right to appeal anytime after patent owner’s reply to initial OA
  • if no party appeals, reexam is terminated and inter partes reexam certificate will issue
  • if a party appeals by filing notice of appeal, all other parties may file, within 14 days, a notice of cross appeal

Nine-Step procedure (time limits are not extendable)

  1. appeal brief – due two months from notice of appeal
  2. respondent’s brief – due one month from service of appeal brief
  3. examiner’s answer: no new grounds for rejection (or reopen pros)
  4. rebuttal brief – due one month from examiner’s answer
  5. request for oral hearing – due 2 months from examiner’s answer
  6. oral argument – 20 mins for examiner and 30 mins for each party
  7. decision by board
  8. petition for rehearing due one month from initial decision
  9. appeal to federal circuit by patent owner

Inter Partes Reexaminations in Conjunction with Other Proceedings –

  • like ex parte reexam, patent owner must disclose any other proceedings to examiner
  • Multiple Reexams: may be merged or one proceeding suspended until the other concludes; if inter partes merged with ex parte reexam, inter partes rules govern, but ex parte requestor get no additional rights, and one reexam certificate will issue
  • Reexamination – Interference: Commissioner is empowered to suspend one proceeding until the other is concluded
  • Reexamination – Reissue: may be merged or one proceeding suspended until the other concluded.; if merged with reissue, inter partes rules govern, but requestor can participate; identical papers filed and same claims must be pending in both files, and reissue patent also serves as the reexam certificate
  • Reexamination – Litigation: Commissioner has discretion whether to suspend in view of litigation; patent owner may seek stay of court action until reexam is terminated

{ 0 comments }