2648 Petition From Denial of Request [R-7]
37 C.F.R. 1.927 Petition to review refusal to order inter partes reexamination.
The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing to order inter partes reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.
PROCESSING OF PETITION UNDER 37 CFR 1.927
Once a request for inter partes reexamination has been denied, jurisdiction over the reexamination proceeding is retained by the Central Reexamination Unit (CRU) to await any petition seeking review of the examiner’s determination refusing reexamination. If no petition is filed within one (1) month, the CRU will process the reexamination as a concluded reexamination file. See MPEP § 2647 and § 2694. If a petition is timely filed, the petition (together with the reexamination file) is forwarded to the office of the CRU Director for decision. The CRU Director will then review the examiner’s determination that a substantial new question of patentability has not been raised. The CRU Director’s review will be de novo. Each decision by the CRU Director will conclude with the following paragraph:
If the petition is granted, the decision of the CRU Director should include a sentence stating that an Office action will be mailed in due course.
The CRU Director will sign the decision granting the petition, and then forward the reexamination file, together with the decision, to the CRU support staff for mailing of the decision, update scanning and PALM processing. The ** > CRU Supervisory Patent Examiner (SPE) < will ordinarily reassign the reexamination to another examiner pursuant to 37 CFR 1.931(b), notify the CRU support staff of the assignment so that the new assignment can be entered in the PALM records, and forward the file to the new examiner to prepare a first Office action.
Reassignment to another examiner will be the general rule. Only in exceptional circumstances where no other examiner is available and capable to give a proper examination, will the case remain with the examiner who denied the request.
Under normal circumstances, the reexamination proceeding will not be reassigned to a primary examiner or assistant examiner who was involved in any part of the examination of the patent for which reexamination is requested, or was so-involved in the examination of the parent of the patent. The CRU Director can make an exception to this practice and reassign the reexamination proceeding to an examiner involved with the original examination (of the patent) only where unusual circumstances are found to exist. For example, where there are no examiners other than an original examiner of the patent and the examiner who issued the denial with adequate knowledge of the relevant technology, the CRU Director may permit reassignment of the reexamination proceeding to an examiner that originally examined the patent.
** > The < requester may seek review of a denial of a request for reexamination only by petitioning the Director of the * > USPTO < under 37 CFR 1.927 and 1.181 within one (1) month of the mailing date of the decision denying the request for reexamination. Additionally, any request for an extension of the time period to file such a petition from the > examiner’s < denial of a request for reexamination can only be entertained by filing a petition under 37 CFR 1.183 with the appropriate fee to waive the time provisions of 37 CFR 1.927.
After the time for petition has expired without a petition having been filed, or a petition has been filed and the decision thereon affirms the denial of the request, a partial refund of the filing fee for the request for reexamination will be made to the third party requester. 35 U.S.C. 312(c) and 37 CFR 1.26(c). A decision on a petition under 37 CFR 1.927 and 1.181 is final and is not appealable.
Except for the limited ultra vires exception described in MPEP § 2646, no petition may be filed requesting review of a decision granting a request for reexamination even if the decision grants the request as to a specific claim for reasons other than those advanced by the third party requester. No right to review exists as to that claim, because it will be reexamined in view of all prior art during the reexamination under 37 CFR 1.937.