2821 Multiple Post-Patent Office Proceedings [R-07.2015]
A supplemental examination proceeding must conclude within three months from the filing date of the request. As a general rule, the Office will not merge a supplemental examination proceeding with any other supplemental examination proceeding. The Office, however, reserves its option to merge/consolidate supplemental examination proceedings as circumstances arise. The Office, likewise, does not anticipate that a supplemental examination proceeding or ex parte reexamination proceeding resulting from a supplemental examination proceeding will be merged with any other type of Office proceeding. The Office similarly reserves its option to merge reexamination proceedings that are ordered as a result of supplemental examination proceedings as circumstances arise. In such circumstances, filing a petition to merge is not necessary, since the Office will generally make a decision sua sponte whether to merge.
If multiple post-patent proceedings are simultaneously filed, any determination of which proceedings to initiate, and the order in which to initiate them, will be made on a case-by-case basis.
If the patent owner files a request for supplemental examination that is in compliance with 35 U.S.C. 257 and all applicable rules, the Office is required under 35 U.S.C. 257(a) to conduct the examination and conclude the proceeding within three months from the filing date of the request. Any reexamination proceeding resulting from the supplemental examination proceeding must, in accordance with 35 U.S.C. 257(b), be conducted "according to the procedures established by chapter 30," which govern ex parte reexamination. If reexamination is ordered, the Office is required to proceed with the reexamination. 35 U.S.C. 304 requires the Office to resolve any substantial new question of patentability determined to be raised:
If... the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question (emphasis added).
In addition, 35 U.S.C. 305 expressly provides that, after the order (and after the time period set for filing a patent owner statement under 35 U.S.C. 304, which is excluded by 35 U.S.C. 257(b)), "reexamination will be conducted." Therefore, once reexamination is ordered, the Office is required by statute to conduct the reexamination. Further, 35 U.S.C. 305 requires that an ex parte reexamination proceeding "be conducted with special dispatch within the Office." See also, Ethicon v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988). The Office, however, reserves its option, pursuant to 35 U.S.C. 315(d) or 35 U.S.C. 325(d), to determine the manner in which a reexamination proceeding ordered under 35 U.S.C. 257 may proceed, including providing for stay, transfer, consolidation or termination, when there is a copending inter partes review, post grant review, or covered business method review. The patent owner may wish to consider the provisions of 35 U.S.C. 257(c)(1) and 35 U.S.C. 257(c)(2) on the effectiveness of any supplemental examination on already pending litigation when determining whether and when to file a request for supplemental examination.
See MPEP ยง 2283 for information on mergers involving an ex parte reexamination proceeding.
See the Trial Practice Guide for information involving concurrent trials.
