2611 Time for Requesting Inter Partes Reexamination [R-7]
An inter partes reexamination can be filed for a patent issued from an original application filed on or after November 29, 1999. For a patent which issued from an original application filed prior to November 29, 1999, the statutory inter partes reexamination option is not available, only the ex parte reexamination is available. See Chapter 2200, section 2209et seq. as to ex parte reexamination.
Public Law 106-113 > (the American Inventor’s Protection Act of 1999) < , see section 4608 of S.1948, states the effective date and applicability of the Optional Inter Partes Reexamination Procedure established by Subtitle F of the Act. Specifically, Section 4608 states that the changes in Subtitle F... "shall take effect on the date of enactment of this Act and shall apply to any patent that issues from an original application filed in the United States on or after that date." The phrase "original application" is interpreted to encompass utility, plant and design applications, including first filed applications, continuations, divisionals, continuations-in-part, continued prosecution applications (CPAs) and the national stage phase of international applications. This interpretation is consistent with the use of the phrase in 35 U.S.C. 251 and the federal rules pertaining to reexamination. In addition, MPEP § 201.04(a) defines an original application as "... an application which is not a reissue application." MPEP § 201.04(a) further states that "[a]n original application may be a first filing or a continuing application" . Therefore, the optional inter partes reexamination is available to patents which issued from all applications (except for reissues) filed on or after November 29, 1999. A patent which issued from an application filed prior to November 29, 1999, in which a request for continued examination (RCE) under 37 CFR 1.114 was filed on or after May 29, 2000, however, is not eligible for optional inter partes reexamination. An RCE is not considered a filing of an original application; rather it is a continuation of the prosecution of the application in which it is filed. See 35 U.S.C. 132(b), 37 CFR 1.114 and MPEP § 706.07(h).
Under 37 CFR 1.913, any third-party requester may, during the period of enforceability of a patent, file a request for inter partes reexamination. This period of enforceability was set by rule since no useful purpose was seen for expending Office resources on deciding patent validity questions in patents which cannot be enforced. In this regard, see Patlex Corporation v. Mossinghoff, 758 F.2d 594, 225 USPQ 243, 249 (Fed. Cir. 1985). The period of enforceability is determined by adding 6 years to the date on which the patent expires. The patent expiration date for a utility patent, for example, is determined by taking into account the term of the patent, whether maintenance fees have been paid for the patent, whether any disclaimer was filed as to the patent to shorten its term, any patent term extensions or adjustments for delays within the Office under 35 U.S.C. 154 (see MPEP § 2710, et seq.), and any patent term extensions available under 35 U.S.C. 156 for premarket regulatory review (see MPEP § 2750et. seq.). Any other relevant information should also be taken into account. In addition, if litigation is instituted within the period of the statute of limitations, requests for inter partes reexamination may be filed after the statute of limitations has expired, as long as the patent is still enforceable against someone.