Terms and Concepts
Mergers of Proceedings
Multiple ex parte reexaminations on the same patent will generally be merged (37 C.F.R. § 1.565). However, the decision is at the sole discretion of the Office of Patent Legal Administration (OPLA), which will take into account its statutory mandate of “special dispatch” (MPEP § 2283).
Merger of Co-Pending Reexaminations
If one of the multiple co-pending reexamination requests is inter partes, then the merger decision proceeds under the inter partes rules [37 C.F.R. § 1.989]. According to the MPEP, merger decisions are made by OPLA. After multiple reexaminations have been ordered, the CRU will deliver the multiple orders to the OPLA, and OPLA will determine whether and how the reexamination should be merged. OPLA will thereafter issue a merger order that will govern the merged proceedings. The merged proceedings will then proceed under the inter partes rules, except that the third party requester will maintain its rights under the ex parte rules–e.g., the third party requester would maintain its right to respond to any patent owner’s statement [37 C.F.R. § 1.989]. No ex parte rights appear to remain with the patent owner and the right to interview any ex parte issues appears to be foreclosed as a general rule. If a party feels its ex parte rights have been unfairly terminated by a merger, then it may consider a Rule 181 petition to preserve ex parte rights.
Merger of Co-Pending Reissue Applications and Reexaminations
The authors are aware of multiple situations where a patent owner has, upon being subjected to a reexamination request, proceeded to file a reissue application. It is also not unusual for a patent owner to file a reissue application in advance of a lawsuit to clear up any errors or to put a claim set in better condition for litigation. If the reissue application is filed within the two years of the issue date of the patent, a broadening reissue is available [35 U.S.C. § 251]. While a patent owner may not broaden claims during reexamination, a broadening reissue application may preserve that right.
Where a reissue application and a reexamination are co-pending, the PTO may merge the proceedings or suspend one of the two proceedings [37 C.F.R. § 1.565(d) for reissue merger with ex parte reexamination and 37 C.F.R. § 1.991 for reissue merger with inter partes reexamination]. It is the general policy of the PTO that the two proceedings will not be allowed to proceed simultaneously without merger or suspension of one or the other [MPEP § 2686.03]. The reason for the policy is to permit timely resolution of both the reissue and the reexamination, and to prevent inconsistent and possibly conflicting amendments. Therefore, even if the parties do not make a specific petition for merger or suspension, the PTO will take action sua sponte to prevent parallel proceedings. Because of the statutory mandate to treat reexaminations with “special dispatch,” (35 U.S.C. §§ 305, 314(c)), the PTO should not suspend the reexamination unless there were exceptional circumstances. This is especially true due to the potential for extending prosecution of reissue applications through continuation applications or requests for continued examination.
As with the merger of multiple reexamination requests, the determination to merge or suspend is made by the OPLA, and the decision is made on a case-by-case basis.
Factors for the OPLA to consider when deciding on the merger of multiple reexamination requests include:
- timing (whether reissue was filed first)
- the statutory mandate to treat reexaminations with “special dispatch”
- the fact that the reissue could continue indefinitely via continuation applications
- whether the patent owner consented to a stay of the reissue application.
A merger order will typically lay out the ground rules for the merged proceeding to proceed simultaneously. Importantly, jurisdiction of a merged proceeding stays with the CRU, not with the Technology Center reissue examiner.
Where the merger is with an inter partes reexamination, the OPLA’s merger order strictly limits the third party requestor’s participation to those issues unique to the reexamination. For example, third party requestors will be strictly prohibited from commenting on the reissue claims or other issues unique to reissue, such as recapture. Further, the merged proceeding will not allow for interviews or extensions of time (except for good cause). Finally, in merged proceedings, the reexamination is terminated upon the issuance of a reexamination certificate.