–Procedural Alchemy–

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.[1]

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 be made as promptly as possible after receipt of the notification by OPLA.

The USPTO,may in certain situations, issue a certificate at the termination of the prosecution of an inter partes reexamination proceeding.  This is done even if a co-pending reissue application or another reexamination request has already been filed.

I.    Should a Broadening Reissue be Stayed or Continue Separately?

The decision on whether to merge the reissue application examination and inter partes reexamination proceeding, or stay one of them, will be made on a case-by-case basis.  The decision to merge, or not to merge, is within the sole discretion of the USPTO to facilitate/carry out the orderly operation of the USPTO in addressing these proceedings.  The status of the reissue application and the inter partes reexamination proceeding will be taken into account in the decision as to whether merger will be ordered, or one of the two proceedings stayed.  Where there is “good cause” to stay the inter partes reexamination proceeding, the Director may do so pursuant to 35 U.S.C. 314(c). As explained next, it may be in the best interest of the Office to permit the examination of a broadened reissue separately from the inter partes reexamination proceeding.

The following scenario is based on the facts arising in Reissue Patent Application No. 11/831,664 and Inter Partes Reexamination Control No. 95/001,042.

Suppose within two years after patent issuance, the patent owner files a broadening reissue application.  Thereafter, a third party files a request for inter partes reexamination of the patent.  An order granting the request for reexamination is then mailed without an accompanying Office Action.

Since the third party requester, absent filing a protest under 37 CFR 1.291, cannot fully participate in the ex parte broadened reissue application examination handled in the TC, the Office has taken the position in Reexamination Control No. 95/001,041 that merger is not desirable.  This is because participation by the third party with respect to broadening issues would be improper, and segregation of narrowing and broadening issues would prove burdensome, if not impossible.  But does it make sense to allow these proceeding to continue on separate paths?

In Reexamination Control No. 95/001,041, the USPTO permitted the broadened reissue application and inter partes reexamination proceedings to be conducted at the same time.  However, the USPTO required that the prosecution of the broadened reissue be limited to broadened claims and all non-broadened claims be withdrawn from consideration in the reissue application and prosecuted in the inter partes reexamination proceedings.  This will permit the broadened reissue examination to proceed, since the error was the patent owner claimed less than he was entitled to claim.

Should the reissue application be placed in condition for allowance, except for the claims held in abeyance, prior to the termination of the inter partes reexamination proceeding, the patent owner must either: (a) request suspension of the reissue application prosecution or (b) cancel the claims held in abeyance and pay the issue fee.  In the latter case, the patent owner would file a continuation reissue with the patented claims held in abeyance prior to payment of the issue fee in the parent broadened reissue application.  Absent this step, the claims in reexamination would be surrendered.

However, in filing a continuation reissue for the claims in reexamination, the patent owner would  still be required to show a further error, made without deceptive intent, as a basis for filing the continuation reissue application.  This may necessitate amendment of at least one original patent claim.  The examination of the continuation reissue application would then be merged with the inter partes reexamination proceeding.

On the other hand, because surrender of the original patent occurs upon issuance of the reissued patent under 35 U.S.C. 252, the USPTO should choose to suspend action in the broadened reissue application upon allowance of all the broadened reissue application claims. This would prevent the anomalous situation, where the non-broadened claims in the inter partes reexamination are shown as bracketed claims[2] in the broadened reissued patent, and the patent in an ongoing inter partes reexamination is seemingly surrendered by operation of the literal language of the first paragraph of 35 U.S.C. 252.

Of course, the USPTO takes the position that where a continuing reissue application has been filed, consistent with Ex parte Bayles, 176 O.G. 749, the surrender of the original patent does not occur, until prosecution of all continuing reissue applications have concluded.  Thus, it is more likely that the USPTO may let the allowable broadened reissue patent issue.  Yet, the problem with this approach is that, if a reviewing court were to overturn Bayless and determine that the original patent was surrendered upon issuance of the reissued patent, then the inter partes reexamination proceedings would have to be terminated as well, since there would be no original patent left to reexamine even where a continuation reissue was timely filed.  In view of a possible challenge to the vitality of Bayles, or in the case where a further correctable error is difficult to identify, the Patent Owner may be wise to petition for suspension of the reissue application to avoid such a development.

So, what about narrowing reissues?

We will leave that for another day, but in general, if timely filed relative to an active reexamination, merger is generally favored.  But there are mechanisms to aid the Office in thinking otherwise, more about that next week.

[2] According to MPEP § 1455, canceled patent claims are enclosed in brackets in the reissued patent.  Where a continuation reissue application is filed, the parent reissue application claims that are carried over to the continuation reissue application are to be enclosed in brackets to avoid statutory double patenting.  See 37 CFR 1.177(b) and MPEP § 1451.

4^th 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)

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.

However, whether to merge such proceedings or to suspend action on one of them is a decision that is made by the USPTO sua sponte based on the relative timing of the filings of the reissue application and the reexamination requests, the stage of the respective proceedings, whether a continuation or RCE of the reissue application has been filed, whether the reexamination proceeding is ex parte or inter partes, and whether the patent owner will consent to a stay of the examination of the reissue application pending the outcome of the reexamination proceeding.  Normally, the USPTO favors merger to prevent inconsistency in the handling of the proceedings, if conducted separately.

A merger order issued by the USPTO in merged proceedings sets forth the conditions for how the merged proceedings will be conducted.  If the merged proceedings involve inter partes reexamination, the third party’s participation will be limited to the issues applicable to reexamination.  This permits the patent owner to have other issues such as those applicable to broadened reissue claims dealt with on an ex parte basis.  Moreover, the merged proceedings may be assigned to an examiner in the Technology Center handling the reissue application rather than to examiners in the Central Reexamination Unit (CRU).  This could be advantageous to the patent owner, especially when considering the fate of the patents subjected to inter partes reexamination by the CRU where for completed inter partes reexamination proceedings only 6% have survived with all claims confirmed.  Currently, the Office appears to disfavor merger of inter partes reexamination proceedings and may instead choose to stay the reissue application proceeding in favor of such reexamination proceedings.

However, there are also significant disadvantages to the rules of reissue examination practice.  Patent reissue permits the correction of defects relating to subject matter eligibility, utility, written description, enablement, and clarity of the original claims.  During reexamination, these same defects may only be considered in claims which are amended or added by the reexamination, and not in the originally patented claims. See MPEP §2258.  Thus, a patentee should seriously consider filing a reissue application where the issued patent, for example,  issued prior to In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008), as a significant risk of invalidation may exist for certain method claims if litigated.

Additionally, in reexamination, it is Office practice to examine only those claims specifically identified in the reexamination request.  On the other hand, patent reissue will typically include a comprehensive examination of all claims. 37 C.F.R. §1.176 (See MPEP §1440)

Merger provides interesting opportunities for patent owners and third party requesters alike, (via serial patent reexamination requests).  However, the question of whether or not concurrent USPTO proceedings should be initiated in any given case, requires a close analysis of the facts.

Further information regarding the advantages and disadvantages of merger will be presented at the Patent Law Institute Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2010.