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)
- appeal brief – due two months from notice of appeal
- respondent’s brief – due one month from service of appeal brief
- examiner’s answer: no new grounds for rejection (or reopen pros)
- rebuttal brief – due one month from examiner’s answer
- request for oral hearing – due 2 months from examiner’s answer
- oral argument – 20 mins for examiner and 30 mins for each party
- decision by board
- petition for rehearing due one month from initial decision
- 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
