2239 Reexamination Ordered at the Director’s Initiative [R-08.2012]
37 C.F.R. 1.520 Ex parte reexamination at the initiative of the Director.
The Director, at any time during the period of enforceability of a patent, may determine whether or not a substantial new question of patentability is raised by patents or printed publications which have been discovered by the Director or which have been brought to the Director’s attention, even though no request for reexamination has been filed in accordance with § 1.510 or § 1.913. The Director may initiate ex parte reexamination without a request for reexamination pursuant to § 1.510 or § 1.913. Normally requests from outside the Office that the Director undertake reexamination on his own initiative will not be considered. Any determination to initiate ex parte reexamination under this section will become a part of the official file of the patent and will be mailed to the patent owner at the address as provided for in § 1.33(c).
The Director of the USPTO may initiate reexamination without a request being filed and without a fee being paid. Such reexamination may be ordered at any time during the period of enforceability of the patent.
A decision to order reexamination at the Director’s initiative is, however, rare. Only in compelling circumstances, after a review of all the facts concerning the patent, would such a decision be made. Authority to order reexamination at the Director’s initiative has been delegated to the Deputy Commissioner for Patent Examination Policy. A decision to order reexamination at the Director’s initiative may also be made by the Director of the USPTO, the Deputy Director or the Commissioner for Patents.
If an Office employee becomes aware of an unusual fact situation in a patent which he or she considers to clearly warrant reexamination, a memorandum setting forth these facts (including a proposed rejection of all appropriate claims) along with the patent file (paper or electronic) and any prior art patents or printed publications should be forwarded to the Office of Patent Legal Administration (OPLA) through the Central Reexamination Unit (CRU) or Technology Center (TC) supervisory chain of command. A disk having the memorandum in electronic format should be included with a paper copy of the memorandum.
If an order to reexamine is to be issued, the decision is prepared in the OPLA. The decision is signed by the Deputy Commissioner for Patent Examination Policy and mailed by the CRU. The patent file is then forwarded to the CRU reexamination preprocessing staff for preparation of a reexamination file and Official Gazette notice. Examination and prosecution will then proceed without further communication with anyone but the patent owner.
If the Deputy Commissioner for Patent Examination Policy refuses to issue an order for reexamination, no record of any consideration of the matter will be maintained in the patent file or anywhere else in the Office, and the patent owner will not be notified.
The Director of the USPTO will not normally consider requests to order reexamination at the Director’s initiative received from members of the public. If a member of the public desires reexamination of a patent, a request and fee should be filed in accordance with 37 CFR 1.510 or 37 CFR 1.915.