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1449    Protest Filed in Reissue Where Patent Is in Interference or Contested Case [R-11.2013]

If a protest (see MPEP Chapter 1900) is filed in a reissue application related to a patent involved in a pending interference proceeding or contested case before the Patent Trial and Appeal Board (PTAB), the reissue application should be referred to the PTAB before considering the protest and taking any action on the reissue application.

In consultation with the examiner and the PTAB, a TC TQAS will check to see that:

  • (A) all parties to the interference or contested case are aware of the filing of the reissue; and
  • (B) the Office does not allow claims in the reissue which are unpatentable over the pending interference count(s), or found unpatentable in the interference proceeding or contested case. After the reissue application has been reviewed by the PTAB, the reissue application with the protest will be returned to the examiner. See MPEP § 1441.01 for a discussion as to protests under 37 CFR 1.291 in reissue applications.

It is particularly important that the reissue application not be allowed without the administrative patent judge’s approval.

1449.01   Concurrent Office Proceedings [R-11.2013]

I.   CONCURRENT REEXAMINATION PROCEEDINGS

37 CFR 1.565(d) provides that if “a reissue application and an ex parte reexamination proceeding on which an order pursuant to 37 CFR 1.525 has been mailed are pending concurrently on a patent, a decision may be made to merge the two proceedings or to suspend one of the two proceedings.” 37 CFR 1.991 provides that if "a reissue application and an inter partes reexamination proceeding on which an order pursuant to 37 CFR 1.931 has been mailed are pending concurrently on a patent, a decision may be made to merge the two proceedings or to suspend one of the two proceedings." If an examiner becomes aware that a reissue application and an ex parte or inter partes reexamination proceeding are both pending for the same patent, he or she should immediately inform his or her Technology Center (TC) Training Quality Assurance Specialist (TQAS).

Under 37 CFR 1.177, a patent owner may file more than one reissue application for the same patent. If an examiner becomes aware that multiple reissue applications are pending for the same patent, and an ex parte or inter partes reexamination proceeding is pending for the same patent, he or she should immediately inform his or her TC TQAS.

Where a reissue application and a reexamination proceeding are pending concurrently on a patent, and an order granting reexamination has been issued for the reexamination proceeding, the Office of Patent Legal Administration (OPLA) must be notified (by e-mail to a lead Senior Legal Advisor responsible for reexamination) that the proceedings are ready for a decision as to whether to merge the reissue and the reexamination, or stay one of the two. See MPEP § 2285 for the procedure of notifying OPLA and general guidance, if a reissue application and an ex parte reexamination proceeding are both pending for the same patent, and an inter partes reexamination proceeding is not involved. See MPEP § 2686.03 where a reissue application and an inter partes reexamination proceeding are both pending for the same patent, regardless of whether an ex parte reexamination proceeding is also pending.

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 the concurrent proceeding. 37 CFR 1.178(b), 37 CFR 1.565(a), and 37 CFR 1.985(a). 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 alert the Office 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(a) (for an ex parte reexamination proceeding or an inter partes reexamination proceeding, respectively) to provide a notification to the Office in the reexamination proceeding of the existence of the two concurrent proceedings.

The patent owner may file a petition under 37 CFR 1.182 in a reissue application to merge the reissue application with the reexamination proceeding, or to stay one of the proceedings because of the other. This petition must be filed after the order to reexamine is issued (37 CFR 1.525, 37 CFR 1.931) in the reexamination proceeding. If the petition is filed before the reexamination order, it will not be considered, and will not be entered into the Image File Wrapper (IFW) or will be expunged from the record, if entered into the Image File Wrapper (IFW) before discovery that the petition is an improper paper. If the petition is filed after the order to reexamine is issued, the petition and any other materials for the files for the reissue application and the reexamination proceeding will be forwarded/referred to OPLA for decision. An e-mail will be sent to one of the lead Senior Legal Advisors of OPLA responsible for reexamination, providing notification that the petition is ready to be addressed.

A.   Reexamination Certificate Is To Be Issued for a Patent, While a Reissue Application for the Patent Is Pending

The following provides guidance to address the situation where a reexamination certificate is to be issued for a patent, while a reissue application for the patent is pending and will not be merged with the reexamination. This can occur, for example, where a reissue application prosecution is stayed or suspended, and the prosecution of a reexamination proceeding for the patent (for which reissue is requested) is permitted to proceed. It can also occur where a reissue application is filed after the reexamination proceeding has entered the publication process, such that it is too late to consider the question of stay or merger.

  • (A) The examiner will not act on the reissue application until the reexamination certificate issues and publishes.
  • (B) After the reexamination certificate issues and publishes--

    At the time that the reexamination certificate is issued and published, the Office will resume examination of the reissue application--

    • (1) An Office action will be issued giving the patent owner (applicant) one month to submit an amendment of the reissue application claims, based upon the results of the concluded reexamination proceeding.
    • (2) The reissue application will then be examined. Any claim canceled by the reexamination certificate will be treated the same way as a claim lost in litigation, and stated in the next action to be deemed as canceled. The remaining claims will be examined. If the reissue application is subsequently allowed, the claims that were canceled by the reexamination certificate will be formally canceled in the reissue application by examiner’s amendment (unless they have already been canceled by the applicant).

      It is to be noted that the patent owner/applicant will have been advised in any decision suspending the copending reissue application to bring to the attention of the Office the issuance of the reexamination certificate, request a resumption of examination of the reissue application, and to include an amendment of the reissue application claims at that time, if it is deemed appropriate based upon the results of the reexamination proceeding.

    • (3) Generally, further prosecution will be limited to claims narrower than those claims canceled as a result of the reexamination certificate (this includes any existing patent claims and any claims added in the reexamination proceeding). Any claims added thereafter, which are equal in scope to claims canceled as a result of the reexamination certificate, or are broader than the scope of the claims canceled as a result of the reexamination certificate, will generally be deemed as surrendered based on the patent owner’s failure to prosecute claims of equal scope, and to present claims of broader scope in the reexamination proceeding. Such claims will be rejected under 35 U.S.C. 251. Further, a rejection of such claims based on estoppel will be made, citing to MPEP § 2308.03 as to treatment of claims lost in a proceeding before the Office, and noting that a reexamination is a "proceeding."

      An exception to the guidance stated in part (3) above: claims that are broader than the scope of the claims canceled as a result of the reexamination certificate may be presented where:

      • (a) The broader claims in the reissue application can be patentable, despite the fact that the claims in the reexamination are not; and
      • (b) The broader claims in the reissue application could not have been presented in the reexamination proceeding.

        Criterion (a) can occur if the broadened claims in the reissue application have an earlier effective date than those canceled by the reexamination certificate (as where the claims in the reissue application are supported by a parent application, and the reexamination claims are not). Criterion (a) can also occur if the subject matter of the broadened claims in the reissue application can be sworn behind, and the more specific subject matter of the reexamination claims cannot be sworn behind. Criterion (b) can occur if the claims in the reissue application are broader than all claims of the patent as it existed during reexamination (e.g., claims directed to a distinct invention).

    • (4) What happened in the concluded reexamination proceeding must be taken into account by the examiner as to any new claims presented by the reissue application. This is in addition to any other issue that may be addressed in any reissue application.
    • (5) If all of the patent claims were canceled by the reexamination certificate, action on the reissue application can still proceed, as will be discussed below; however, patent owner/applicant must first file a petition under 37 CFR 1.183 to waive 37 CFR 1.570 and/or 37 CFR 1.997(d), depending on whether the certificate was issued for an ex parte reexamination proceeding, an inter partes reexamination proceeding, or a merger of the two. The petition would be grantable where the patent owner/applicant shows that either:
      • (a) The reissue claims are narrower than those claims canceled as a result of the reexamination certificate; or
      • (b) Criteria (a) and (b) of part (3) above are satisfied by the claims of the reissue application.

      The claims satisfying this requirement may only be provided where a petition accompanies the amendment providing the claims

  • (C) The reissue application can still proceed even where all of the patent claims were canceled by the reexamination certificate, based on the following. Where the reexamination certificate issues and publishes to cancel all existing patent claims, the reissue application can continue in the Office to correct the 35 U.S.C. 251 "error" of presenting the existing claims, which were in-fact unpatentable. Of course, what happened in the concluded reexamination proceeding must be taken into account by the examiner, as to any new claims presented by the reissue application. See the discussion in part (B)(3)(b) above. If a reissue application is filed after a reexamination certificate issues and publishes to cancel all existing patent claims, then the matter should be forwarded to OPLA for resolution.

II.   CONCURRENT INTERFERENCE AND OTHER CONTESTED CASE PROCEEDINGS

If the original patent is involved in an interference or another contested case, the examiner must consult with the TQAS before taking any action on the reissue application. It is particularly important that the reissue application not be allowed without the PTAB’s approval. See MPEP Chapter 2300.

The Leahy-Smith America Invents Act amended 35 U.S.C. 315(d) and added 35 U.S.C. 325(d) to provide that, during the pendency of an inter partes review, post grant review or covered business method review (“PTAB Review Proceeding”), if another proceeding (e.g., a reissue application) or matter involving the patent is before the Office, the Director may determine the manner in which the PTAB Review Proceeding and other proceeding or matter may proceed, including providing for stay, transfer, consolidation or termination of such matter or proceeding. Accordingly, if an examiner becomes aware of a PTAB Review Proceeding for the same patent that is being examined as a reissue application, the examiner is to consult with the TQAS who will coordinate with the PTAB before taking any action on the reissue application.

III.   CONCURRENT REISSUE PROCEEDINGS

When more than one reissue application is pending concurrently on the same patent, see MPEP §§ 1450 and 1451.

1449.02   Interference in Reissue [R-11.2013]

[Editor Note: This section is only appliable to reissue applications subject to pre-AIA 35 U.S.C. 102(g). See MPEP § 2159 et seq.]

37 C.F.R. 41.8   Mandatory notices.

  • (a) In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the initiation of a contested case (§ 41.101), and within 20 days of any change during the proceeding, a party must identify:
    • (1) Its real party-in-interest, and
    • (2) Each judicial or administrative proceeding that could affect, or be affected by, the Board proceeding.
  • (b) For contested cases, a party seeking judicial review of a Board proceeding must file a notice with the Board of the judicial review within 20 days of the filing of the complaint or the notice of appeal. The notice to the Board must include a copy of the complaint or notice of appeal. See also §§ 1.301 to 1.304 of this title.

37 C.F.R. 41.202   Suggesting an interference.

  • (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
    • (1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference,
    • (2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
    • (3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),
    • (4) Explain in detail why the applicant will prevail on priority,
    • (5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant’s specification, and
    • (6) For each constructive reduction to practice for which the applicant wishes to be accorded benefit, provide a chart showing where the disclosure provides a constructive reduction to practice within the scope of the interfering subject matter.

*****

  • (c) Examiner. An examiner may require an applicant to add a claim to provoke an interference. Failure to satisfy the requirement within a period (not less than one month) the examiner sets will operate as a concession of priority for the subject matter of the claim. If the interference would be with a patent, the applicant must also comply with paragraphs (a)(2) through (a)(6) of this section. The claim the examiner proposes to have added must, apart from the question of priority under 35 U.S.C. 102(g):
    • (1) Be patentable to the applicant, and
    • (2) Be drawn to patentable subject matter claimed by another applicant or patentee.

*****

In appropriate circumstances, a reissue application subject to pre-AIA (first to invent) 35 U.S.C. 102(g) may be placed into interference with a patent or pending application. A patentee may thus seek to provoke an interference with a patent or pending application by filing a reissue application, if the reissue application includes an appropriate reissue error as required by 35 U.S.C. 251. Reissue error must be based upon applicant error; a reissue cannot be based solely on the error of the Office for failing to declare an interference or to suggest copying claims for the purpose of establishing an interference. See In re Keil, 808 F.2d 830, 1 USPQ2d 1427 (Fed. Cir. 1987); In re Dien, 680 F.2d 151, 214 USPQ 10 (CCPA 1982); In re Bostwick, 102 F.2d 886, 888, 41 USPQ 279, 281 (CCPA 1939); and In re Guastavino, 83 F.2d 913, 916, 29 USPQ 532, 535 (CCPA 1936). See also Slip Track Systems, Inc. v. Metal Lite, Inc., 159 F.3d 1337, 48 USPQ2d 1055 (Fed. Cir. 1998) (Two patents issued claiming the same patentable subject matter, and the patentee with the earlier filing date requested reexamination of the patent with the later filing date (Slip Track’s patent). A stay of litigation in a priority of invention suit under 35 U.S.C. 291, pending the outcome of the reexamination, was reversed. The suit under 35 U.S.C. 291 was the only option available to Slip Track to determine priority of invention. Slip Track could not file a reissue application solely to provoke an interference proceeding before the Office because it did not assert that there was any error as required by 35 U.S.C. 251 in the patent.). A reissue application can be employed to provoke an interference if the reissue application:

  • (A) adds copied claims which are not present in the original patent;
  • (B) amends claims to correspond to those of the patent or application with which an interference is sought; or
  • (C) contains at least one error (not directed to provoking an interference) appropriate for the reissue.

In the first two situations, the reissue oath/declaration must assert that applicant erred in failing to include claims of the proper scope to provoke an interference in the original patent application, and must include an identification of the claims added to provoke the interference. Furthermore, the subject matter of the copied or amended claims in the reissue application must be supported by the disclosure of the original patent under 35 U.S.C. 112, first paragraph. See In re Molins, 368 F.2d 258, 261, 151 USPQ 570, 572 (CCPA 1966) and In re Spencer, 273 F.2d 181, 124 USPQ 175 (CCPA 1959).

A reissue applicant cannot present added or amended claims to provoke an interference, if the claims were deliberately omitted from the patent in a reissue application filed before September 16, 2012. If there is evidence that the claims were not inadvertently omitted from the original patent, e.g., the subject matter was described in the original patent as being undesirable, the reissue application may lack proper basis for the reissue. See In re Bostwick, 102 F.2d at 889, 41 USPQ at 282 (CCPA 1939) (reissue lacked a proper basis because the original patent pointed out the disadvantages of the embodiment that provided support for the copied claims).

The issue date of the patent, or the publication date of the application publication (whichever is applicable under pre-AIA 35 U.S.C. 135(b)), with which an interference is sought must be less than 1 year before the presentation of the copied or amended claims in the reissue application. See pre-AIA 35 U.S.C. 135(b) and MPEP § 715.05 and MPEP Chapter 2300. If the reissue application includes broadened claims, the reissue application must be filed within two years from the issue date of the original patent. See 35 U.S.C. 251 and MPEP § 1412.03.

In a reissue application subject to pre-AIA 35 U.S.C. 102 and 103an examiner may, pursuant to 37 CFR 41.202(c), require a reissue applicant to add a claim to provoke an interference, unless the reissue applicant cannot present the added claim to provoke an interference based upon the provisions of the reissue statute and rules, e.g., if the claim was deliberately omitted from the patent and the reissue application was filed before September 16, 2012, or if the claim enlarges the scope of the claims of the original patent and was not "applied for within two years from the grant of the original patent." Failure to satisfy the requirement within a time period (not less than one month) that the examiner sets will operate as a concession of priority for the subject matter of the claim. If the interference would be with a patent, the reissue applicant must also comply with 37 CFR 41.202(a)(2) through (a)(6). The claim the examiner proposes to have added must, apart from the question of priority under 35 U.S.C. 102(g), be patentable to the reissue applicant, and be drawn to patentable subject matter claimed by another applicant or patentee.

I.   REISSUE APPLICATION FILED WHILE PATENT IS IN INTERFERENCE

If a reissue application is filed while the original patent is in an interference proceeding, the reissue applicant must promptly notify the Patent Trial and Appeal Board of the filing of the reissue application within 20 days from the filing date. See 37 CFR 41.8 and MPEP Chapter 2300.

1449.03   Reissue Application in Derivation Proceeding [R-11.2013]

[Editor Note: This section is only appliable to reissue applications subject to 35 U.S.C. 102 as amended by the AIA. See MPEP § 2159 et seq.]

Effective March 16, 2013, an applicant for patent, including a reissue applicant, may file a petition to institute a derivation proceeding in the Office in applications subject to derivation proceedings. See 37 CFR 42.402.

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Last Modified: 03/27/2014 10:10:33