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2648    Petition From Denial of Request [R-11.2013]

37 C.F.R. 1.927  Petition to review refusal to order inter partes reexamination.

[Editor Note: For a request filed prior to September 16, 2011.]

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.

37 C.F.R. 1.927  Petition to review refusal to order inter partes reexamination.

[Editor Note: For a request filed beginning September 16, 2011 and ending September 15, 2012.]

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 a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request has not been established, 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, the Central Reexamination Unit (CRU) will allow time for 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 then reviews the examiner’s determination that a substantial new question of patentability has not been raised or that there is no reasonable likelihood that the requester will prevail. The CRU Director’s review is de novo. Each decision by the CRU Director concludes with the following paragraph:

This decision is final and nonappealable. See 35 U.S.C. 312(c) and 37 CFR 1.927. No further communication on this matter will be acknowledged or considered.

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 signs the decision granting the petition, and then forwards 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 Reexamination Specialist (SPRS) ordinarily reassigns the reexamination to another examiner pursuant to 37 CFR 1.931(b), notifies the CRU support staff of the assignment so that the new assignment can be entered in the PALM records, and forwards the file to the new examiner to prepare a first Office action.

Reassignment to another examiner is the general rule. Only in exceptional circumstances where no other examiner is available and capable to give a proper examination, does the case remain with the examiner who denied the request.

Under normal circumstances, the reexamination proceeding is not 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 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 being filed), or a petition has been filed and the decision affirms the denial of the request, a partial refund of the filing fee for the request for reexamination is made to the third party requester. 35 U.S.C. 312(c) and 37 CFR 1.26(c). A decision on a petition seeking review of an Office denial to reexamine a patent under 37 CFR 1.927 and 1.181 is final and is not appealable.

37 CFR 1.927 applies only to challenging a basis for denying of reexamination; it does not apply to challenging a basis for granting of reexamination.

If an order granting reexamination includes a determination that one or more alleged SNQs did not raise a SNQ, the third party requester may (within one month of the mailing date of the order) file a petition under 37 CFR 1.927 for reconsideration of the determination.

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Last Modified: 03/27/2014 10:10:35