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.
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.