Unlike in ex parte reexamination, a third party requester may participate at every stage of the proceedings. A third party requester (TPR) may once file written comments on any response by the patent owner to an Office action. 35 USC 314(b)(3). All proposed grounds of rejection raised by the TPR, and all TPR comments must be specifically addressed by the examiner. The TPR may appeal any proposed ground of rejection not adopted by the examiner as a final decision favorable to patentability to the Board of Patent Appeals and Interferences (BPAI) under 35 USC 134, and to the Federal Circuit under 35 USC §§ 141-144. 35 USC 315(b)(1). The TPR may be a party to nay patent owner appeal of a rejection to the BPAI under 35 USC 134, and to the Federal Circuit under 35 USC §§ 141-144. 35 USC 315(b)(2). A TPR cannot file an inter partes reexamination request: (1) while a first inter partes reexamination is ongoing -35 USC 317(a); (2) where a final decision has been entered against the TPR in a civil action, the TPR cannot request or maintain an inter partes reexamination based on the same issues-35 USC 317(b); (3) where a final decision has been entered against the TPR in an inter partes reexamination that is favorable to the patent owner, the TPR cannot request or maintain an inter partes reexamination based on the same issues-35 USC 317(b); and (4) for a any patent that issued from an original application filed in the U.S. before November 29, 1999-Section 4608 of P.L. 106-113. Estoppel attaches against any TPR in a later civil action if the TPR loses: as to reasserting grounds of invalidity against challenged patent claims-35 USC 315(c) or as to challenging facts established in the reexamination proceedings-Section 4607 of P.L. 106-113.
Continue Reading An Inter Partes Reexamination Primer (Part 1 of 2)