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2288    Issuance of Ex Parte Reexamination Certificate [R-08.2012]

35 U.S.C. 307   Certificate of patentability, unpatentability, and claim cancellation.

  • (a) In a reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Director will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.

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37 C.F.R. 1.570   Issuance and publication of ex parte reexamination certificate concludes ex parte reexamination proceeding.

  • (a) To conclude an ex parte reexamination proceeding, the Director will issue and publish an ex parte reexamination certificate in accordance with 35 U.S.C. 307 setting forth the results of the ex parte reexamination proceeding and the content of the patent following the ex parte reexamination proceeding.
  • (b) An ex parte reexamination certificate will be issued and published in each patent in which an ex parte reexamination proceeding has been ordered under § 1.525 and has not been merged with any inter partes reexamination proceeding pursuant to § 1.989(a). Any statutory disclaimer filed by the patent owner will be made part of the ex parte reexamination certificate.
  • (c) The ex parte reexamination certificate will be mailed on the day of its date to the patent owner at the address as provided for in § 1.33(c). A copy of the ex parte reexamination certificate will also be mailed to the requester of the ex parte reexamination proceeding.
  • (d) If an ex parte reexamination certificate has been issued and published which cancels all of the claims of the patent, no further Office proceedings will be conducted with that patent or any reissue applications or any reexamination requests relating thereto.
  • (e) If the ex parte reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.565(d), the reissued patent will constitute the ex parte reexamination certificate required by this section and 35 U.S.C. 307.
  • (f) A notice of the issuance of each ex parte reexamination certificate under this section will be published in the Official Gazette on its date of issuance.

Since abandonment is not possible in a reexamination proceeding, a reexamination certificate will be issued and published at the conclusion of the proceeding in each patent in which a reexamination proceeding has been ordered under 37 CFR 1.525 except where the reexamination has been concluded by vacating the reexamination proceeding or by the grant of a reissue patent on the same patent in which case the reissue patent also serves as the reexamination certificate.

Where the reexamination is to be concluded for a failure to timely respond to an Office action, see MPEP § 2266.

The reexamination certificate will set forth the results of the proceeding and the content of the patent following the reexamination proceeding. The certificate will:

  • (A) cancel any patent claims determined to be unpatentable;
  • (B) confirm any patent claims determined to be patentable;
  • (C) incorporate into the patent any amended or new claims determined to be patentable;
  • (D) make any changes in the description approved during reexamination;
  • (E) include any statutory disclaimer or terminal disclaimer filed by the patent owner;
  • (F) identify unamended claims which were held invalid on final holding by another forum on any grounds;
  • (G) identify any patent claims not reexamined;
  • (H) be mailed on the day it is dated to the patent owner at the address provided for in 37 CFR 1.33(c) and a copy will be mailed to the third party requester; and
  • (I) identify patent claims, dependent on amended claims, determined to be patentable.

If a certificate issues and publishes which cancels all of the claims of the patent, no further Office proceedings will be conducted with regard to that patent or any reissue application or reexamination request directed thereto. However, in an extremely rare situation in which a reissue application is copending with a reexamination proceeding in which a reexamination certificate subsequently issues cancelling all claims of the patent, the patent owner may file a petition under 37 CFR 1.183 requesting waiver of the provisions of 37 CFR 1.570(d), to address claims that were pending in the reissue application prior to the issuance of the certificate. Any such petition must be accompanied by a paper cancelling any claim within the scope of the claims canceled by the certificate and pointing out why the claims remaining in the reissue application can be patentable, despite the cancellation of all the patent claims by certificate, i.e., why the remaining claims are patentable over the cancelled claims. Such a paper will be available to the examiner, should the petition be granted. See 37 CFR 1.570(d).

If a reexamination proceeding is concluded by the grant of a reissued patent as provided for in 37 CFR 1.565(b), the reissued patent will constitute the reexamination certificate required by 35 U.S.C. 307 and this section. See 37 CFR 1.570(e).

A notice of the issuance of each reexamination certificate will be published in the Official Gazette on its date of issuance in a format similar to that used for reissue patents. See 37 CFR 1.570(f) and MPEP § 2291.

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Last Modified: 03/27/2014 10:10:34