The general policy of the USPTO is that the examination of a reissue application and an inter partes reexamination proceeding will not be conducted separately at the same time as to a particular patent. MPEP § 2686.03. The reason for this policy is to permit timely resolution of both the reissue and the inter partes reexamination, to the extent possible, and to prevent inconsistent, and possibly conflicting, amendments from being introduced into the two files on behalf of the patent owner. If both a reissue application and an inter partes reexamination proceeding are pending concurrently on a patent, a decision will normally be made to merge the reissue application examination and the inter partes reexamination proceeding or to stay one of the two.
Where a reissue application and an inter partes reexamination proceeding are pending concurrently on a patent, the patent owner, i.e., the reissue applicant, has a responsibility to notify the Office of such. 37 CFR 1.178(b), 1.985. See also MPEP § 1418. In addition, the patent owner should file in the inter partes reexamination proceeding, as early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.985 to notify the Office in the inter partes reexamination proceeding of the existence of the two concurrent proceedings.
The decision on whether or not to merge the reissue application examination and the reexamination proceeding or which (if any) is to be stayed (suspended), will generally Read the rest of this entry »
For those looking to add CLE in 2010, or to keep abreast of the changing post grant landscape, there are several upcoming programs in February and March, two offered in New York (Feb. 11th and 12th, March 1st and 2nd) and one in Chicago (March 11th and 12th). The editors of patentspostgrant.com are faculty for the Practicing law Institute and will be speaking at each upcoming event, Scott Mckeown will present at the New York PLI programs on Strategic Use of Merged Proceedings Within the USPTO, as well as the increasing Utilization of Inter Partes Reexamination with Concurrent Litigation (Patent Law institute 4th Annual). Stephen Kunin will also be speaking at the New York and Chicago events on Inter Partes Reexamination Mechanics with Todd Baker. More information on these programs is found below, hope to see you there!
4th Annual Patent Law Institute NYC
Reissue & Reexamination Strategies and Tactics Concurrent with Litigation (NYC) February 11th-12th
Reissue & Reexamination Strategies and tactics Concurrent with Litigation (Chicago March 11th and 12th)
In the case of concurrent post grant proceedings at the USPTO, 37 CFR §§ 1.565(d) and 1.991 provide for a discretionary merger of reissue application examination with either ex parte or inter partes reexamination proceedings. These rules provide that such merged proceedings will be conducted using the rules set forth for reissue application examination that are normally less restrictive than those applicable to reexamination. As can be appreciated, such a merger would provide the patentee greater flexibility after final rejection and, in most situations, RCE practice and extensions of time as a matter of right; important procedural advantages. But note that the USPTO may undo the merged proceedings if an RCE is filed in the reissue application (See MPEP §1452) and modify the response period/extension of time practice for reissue applications involved in a concurrent litigation (See MPEP §1442.03).
Moreover, although amendments to claims in reexamination can only be narrowing amendments, if the patent for which reissue is two years or less old, a broadened reissue application can be filed. In this way, use of patent reissue together with merged reexamination proceedings may provide useful procedural and tactical advantages to a patent owner.
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