–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.
[1] See In re Onda, 229 USPQ 235 (Comm’r Pat. 1985). The decision as to whether the reissue application examination and the reexamination proceeding are to be merged, or which of the two (if any) is to be stayed, is made in the Office of Patent Legal Administration (OPLA).
[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.