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2654    Conduct of Inter Partes Reexamination Proceedings [R-11.2013]

35 U.S.C. 314   Conduct of inter partes reexamination proceedings

[Editor Note: As in effect September 16, 2011 through September 15, 2012]

  • (a) IN GENERAL.— Except as otherwise provided in this section, reexamination shall be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133. In any inter partes reexamination proceeding under this chapter, the patent owner shall be permitted to propose any amendment to the patent and a new claim or claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted.
  • (b) RESPONSE.—
    • (1) With the exception of the inter partes reexamination request, any document filed by either the patent owner or the third-party requester shall be served on the other party. In addition, the Office shall send to the third-party requester a copy of any communication sent by the Office to the patent owner concerning the patent subject to the inter partes reexamination proceeding.
    • (2) Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the third-party requester shall have one opportunity to file written comments addressing issues raised by the action of the Office or the patent owner’s response thereto, if those written comments are received by the Office within 30 days after the date of service of the patent owner’s response.
  • (c) SPECIAL DISPATCH.— Unless otherwise provided by the Director for good cause, all inter partes reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and Interferences, shall be conducted with special dispatch within the Office.

37 C.F.R. 1.937   Conduct of inter partes reexamination.

  • (a) All inter partes reexamination proceedings, including any appeals to the Patent Trial and Appeal Board, will be conducted with special dispatch within the Office, unless the Director makes a determination that there is good cause for suspending the reexamination proceeding.
  • (b) The inter partes reexamination proceeding will be conducted in accordance with §§ 1.104 through 1.116, the sections governing the application examination process, and will result in the issuance of an inter partes reexamination certificate under § 1.997, except as otherwise provided.
  • (c) All communications between the Office and the parties to the inter partes reexamination which are directed to the merits of the proceeding must be in writing and filed with the Office for entry into the record of the proceeding.
  • (d) A petition in an inter partes reexamination proceeding must be accompanied by the fee set forth in §  1.20(c)(6), except for petitions under §  1.956 to extend the period for response by a patent owner, petitions under §  1.958 to accept a delayed response by a patent owner, petitions under §  1.78 to accept an unintentionally delayed benefit claim, and petitions under § 1.530(l) for correction of inventorship in a reexamination proceeding.

Once inter partes reexamination is ordered, a first Office action on the merits will be issued (the first Office action will ordinarily be mailed with the order; see MPEP § 2660), and prosecution will proceed. Each time the patent owner responds to an Office action, the third party requester may comment on the Office action and the patent owner response, and thereby participate in the proceeding.

Reexamination will proceed even if the order is returned undelivered. As pointed out in MPEP § 2630, the notice under 37 CFR 1.11(c) is constructive notice to the patent owner, and lack of response from the patent owner will not delay reexamination.

Examination will be conducted in accordance with 37 CFR 1.104, 1.105, 1.110-1.113, 1.115, and 1.116 (35 U.S.C.132 and 133) and will result in the issuance of a reexamination certificate under 37 CFR 1.997. The proceeding shall be conducted with "special dispatch" pursuant to 35 U.S.C. 314(c). The patent owner and the third party requester are sent copies of all Office actions. Also, the patent owner and the third party requester must serve copies of all their submissions to the Office on each other. Citations of art submitted in the patent file prior to issuance of an order for reexamination will be considered by the examiner during the reexamination.

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