2694 Concluded Reexamination Proceedings [R-07.2015]
Inter partes reexamination proceedings may be concluded in one of three ways:
- (A) The prosecution of the reexamination proceeding may be brought to an
end, and the proceeding itself concluded, by a denial of reexamination, or vacating
the reexamination proceeding, or terminating the reexamination proceeding. (In these
instances, no reexamination certificate is issued).
- (1) A reexamination file (IFW or paper) in which reexamination has been denied or vacated should be forwarded to the Central Reexamination Unit (CRU) if the file is not already there. The CRU will process the file to provide the partial refund set forth in 37 CFR 1.26(c). The reexamination file will then be given an 820 status (reexamination denied) or an 822 status (reexamination vacated). A copy of the PALM "Application Number Information" screen and the "Contents" screen is printed, the printed copy is annotated by adding the comment "PROCEEDING CONCLUDED," and the annotated copy is then scanned into IFW using the miscellaneous letter document code.
- (2) A reexamination file (IFW or paper) in which reexamination has been terminated should be forwarded to the CRU if the file is not already there. The reexamination file will then be given an 820 status (reexamination terminated). A copy of the PALM “Application Number Information” screen and the “Contents” screen is printed, the printed copy is annotated by adding the comment “PROCEEDING CONCLUDED,” and the annotated copy is then scanned into IFW using the miscellaneous letter document code. A partial refund is not made in this instance, since the reexamination was properly commenced and addressed, and was terminated later based upon a court decision, or the like.
- (B) The proceeding may be concluded under 37 CFR 1.997(b)
with the issuance of a reexamination certificate.
A reexamination proceeding that is to be concluded in this manner should be processed as set forth in MPEP § 2687 and then forwarded to the CRU for review, mailing of the NIRC, and forwarding the file to the Office of Data Management.
- (C) The proceeding may be concluded under 37 CFR 1.997(e)
where the reexamination proceeding has been merged with a reissue proceeding and a
reissue patent is granted; an individual reexamination certificate is not issued, but
rather the reissue patent serves as the certificate.