37 C.F.R. Subpart H—Inter Partes Reexamination of Patents That Issued From an Original Application Filed in the United States on or After November 29, 1999
Title 37 - Patents, Trademarks, and Copyrights
Source: 65 FR 76777, Dec. 7, 2000, unless otherwise noted.
Citations by the patent owner in accordance with §1.933 and by an inter partes reexamination third party requester under §1.915 or §1.948 will be entered in the inter partes reexamination file. The entry in the patent file of other citations submitted after the date of an order for reexamination pursuant to §1.931 by persons other than the patent owner, or the third party requester under either §1.915 or §1.948, will be delayed until the inter partes reexamination proceeding has been terminated. See §1.502 for processing of prior art citations in patent and reexamination files during an ex parte reexamination proceeding filed under §1.510.
Title 37: Patents, Trademarks, and Copyrights
PART 1—RULES OF PRACTICE IN PATENT CASES
Subpart H—
Prior Art Citations
§ 1.902 Processing of prior art citations during an
Requirements for Inter Partes Reexamination Proceedings
§ 1.903 Service of papers on parties in inter partes reexamination.
The patent owner and the third party requester will be sent copies of Office actions issued during the inter partes reexamination proceeding. After filing of a request for inter partes reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on every other party in the reexamination proceeding in the manner provided in §1.248. Any document must reflect service or the document may be refused consideration by the Office. The failure of the patent owner or the third party requester to serve documents may result in their being refused consideration.
§ 1.904 Notice of inter partes reexamination in Official Gazette.
A notice of the filing of an inter partes reexamination request will be published in the Official Gazette. The notice published in the Official Gazette under §1.11(c) will be considered to be constructive notice of the inter partes reexamination proceeding and inter partes reexamination will proceed.
§ 1.905 Submission of papers by the public in inter partes reexamination.
Unless specifically provided for, no submissions on behalf of any third parties other than third party requesters as defined in 35 U.S.C. 100(e) will be considered unless such submissions are in accordance with §1.915 or entered in the patent file prior to the date of the order for reexamination pursuant to §1.931. Submissions by third parties, other than third party requesters, filed after the date of the order for reexamination pursuant to §1.931, must meet the requirements of §1.501 and will be treated in accordance with §1.902. Submissions which do not meet the requirements of §1.501 will be returned.
§ 1.906 Scope of reexamination in inter partes reexamination proceeding.
(a) Claims in an inter partes reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112.
(b) Claims in an inter partes reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent.
(c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in an inter partes reexamination proceeding. If such issues are raised by the patent owner or the third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may desire to consider the advisability of filing a reissue application to have such issues considered and resolved.
§ 1.907 Inter partes reexamination prohibited.
(a) Once an order to reexamine has been issued under §1.931, neither the third party requester, nor its privies, may file a subsequent request for inter partes reexamination of the patent until an inter partes reexamination certificate is issued under §1.997, unless authorized by the Director.
(b) Once a final decision has been entered against a party in a civil action arising in whole or in part under 28 U.S.C. 1338 that the party has not sustained its burden of proving invalidity of any patent claim-in-suit, then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claim on the basis of issues which that party, or its privies, raised or could have raised in such civil action, and an inter partes reexamination requested by that party, or its privies, on the basis of such issues may not thereafter be maintained by the Office.
(c) If a final decision in an inter partes reexamination proceeding instituted by a third party requester is favorable to patentability of any original, proposed amended, or new claims of the patent, then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claims on the basis of issues which that party, or its privies, raised or could have raised in such inter partes reexamination proceeding.
§ 1.913 Persons eligible to file request for inter partes reexamination.
Except as provided for in §1.907, any person other than the patent owner or its privies may, at any time during the period of enforceability of a patent which issued from an original application filed in the United States on or after November 29, 1999, file a request for inter partes reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under §1.501.
[68 FR 71007, Dec. 22, 2003]
§ 1.915 Content of request for inter partes reexamination.
(a) The request must be accompanied by the fee for requesting inter partes reexamination set forth in §1.20(c)(2).
(b) A request for inter partes reexamination must include the following parts:
(1) An identification of the patent by patent number and every claim for which reexamination is requested.
(2) A citation of the patents and printed publications which are presented to provide a substantial new question of patentability.
(3) A statement pointing out each substantial new question of patentability based on the cited patents and printed publications, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested.
(4) A copy of every patent or printed publication relied upon or referred to in paragraphs (b)(1) through (3) of this section, accompanied by an English language translation of all the necessary and pertinent parts of any non-English language document.
(5) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.
(6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address provided for in §1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy of the request must be supplied to the Office.
(7) A certification by the third party requester that the estoppel provisions of §1.907 do not prohibit the inter partes reexamination.
(8) A statement identifying the real party in interest to the extent necessary for a subsequent person filing an inter partes reexamination request to determine whether that person is a privy.
(c) If an inter partes request is filed by an attorney or agent identifying another party on whose behalf the request is being filed, the attorney or agent must have a power of attorney from that party or be acting in a representative capacity pursuant to §1.34(a).
(d) If the inter partes request does not include the fee for requesting inter partes reexamination required by paragraph (a) of this section and meet all the requirements of paragraph (b) of this section, then the person identified as requesting inter partes reexamination will be so notified and will generally be given an opportunity to complete the request within a specified time. Failure to comply with the notice will result in the inter partes reexamination request not being granted a filing date, and will result in placement of the request in the patent file as a citation if it complies with the requirements of §1.501.
[65 FR 76777, Dec. 7, 2000, as amended at 71 FR 9262, Feb. 23, 2006; 71 FR 44223, Aug. 4, 2006]
§ 1.919 Filing date of request for inter partes reexamination.
(a) The filing date of a request for inter partes reexamination is the date on which the request satisfies all the requirements for the request set forth in §1.915.
(b) If the request is not granted a filing date, the request will be placed in the patent file as a citation of prior art if it complies with the requirements of §1.501.
[65 FR 76777, Dec. 7, 2000, as amended at 71 FR 9262, Feb. 23, 2006]
§ 1.923 Examiner's determination on the request for inter partes reexamination.
Within three months following the filing date of a request for inter partes reexamination under §1.919, the examiner will consider the request and determine whether or not a substantial new question of patentability affecting any claim of the patent is raised by the request and the prior art citation. The examiner's determination will be based on the claims in effect at the time of the determination, will become a part of the official file of the patent, and will be mailed to the patent owner at the address as provided for in §1.33(c) and to the third party requester. If the examiner determines that no substantial new question of patentability is present, the examiner shall refuse the request and shall not order inter partes reexamination.
§ 1.925 Partial refund if request for inter partes reexamination is not ordered.
Where inter partes reexamination is not ordered, a refund of a portion of the fee for requesting inter partes reexamination will be made to the requester in accordance with §1.26(c).
§ 1.927 Petition to review refusal to order inter partes reexamination.
The third party requester may seek review by a petition to the Director under§1.181 within one month of the mailing date of the examiner's determination refusing to order inter partes reexamination. Any such petition must comply with §1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.
Inter Partes Reexamination of Patents
§ 1.931 Order for inter partes reexamination.
(a) If a substantial new question of patentability is found, the determination will include an order for inter partes reexamination of the patent for resolution of the question.
(b) If the order for inter partes reexamination resulted from a petition pursuant to §1.927, the inter partes reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under §1.923.
Information Disclosure in Inter Partes Reexamination
§ 1.933 Patent owner duty of disclosure in inter partes reexamination proceedings.
(a) Each individual associated with the patent owner in an inter partes reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability in a reexamination proceeding as set forth in §1.555(a) and (b). The duty to disclose all information known to be material to patentability in an inter partes reexamination proceeding is deemed to be satisfied by filing a paper in compliance with the requirements set forth in §1.555(a) and (b).
(b) The responsibility for compliance with this section rests upon the individuals designated in paragraph (a) of this section, and no evaluation will be made by the Office in the reexamination proceeding as to compliance with this section. If questions of compliance with this section are raised by the patent owner or the third party requester during a reexamination proceeding, they will be noted as unresolved questions in accordance with §1.906(c).
Office Actions and Responses (Before the Examiner) in Inter Partes Reexamination
§ 1.935 Initial Office action usually accompanies order for inter partes reexamination.
The order for inter partes reexamination will usually be accompanied by the initial Office action on the merits of the reexamination.
§ 1.937 Conduct of inter partes reexamination.
(a) All inter partes reexamination proceedings, including any appeals to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office, unless the Director makes a determination that there is good cause for suspending the reexamination proceeding.
(b) The inter partes reexamination proceeding will be conducted in accordance with §§1.104 through 1.116, the sections governing the application examination process, and will result in the issuance of an inter partes reexamination certificate under §1.997, except as otherwise provided.
(c) All communications between the Office and the parties to the inter partes reexamination which are directed to the merits of the proceeding must be in writing and filed with the Office for entry into the record of the proceeding.
§ 1.939 Unauthorized papers in inter partes reexamination.
(a) If an unauthorized paper is filed by any party at any time during the inter partes reexamination proceeding it will not be considered and may be returned.
(b) Unless otherwise authorized, no paper shall be filed prior to the initial Office action on the merits of the inter partes reexamination.
§ 1.941 Amendments by patent owner in inter partes reexamination.
Amendments by patent owner in inter partes reexamination proceedings are made by filing a paper in compliance with §§1.530(d)–(k) and 1.943.
§ 1.943 Requirements of responses, written comments, and briefs in inter partes reexamination.
(a) The form of responses, written comments, briefs, appendices, and other papers must be in accordance with the requirements of §1.52.
(b) Responses by the patent owner and written comments by the third party requester shall not exceed 50 pages in length, excluding amendments, appendices of claims, and reference materials such as prior art references.
(c) Appellant's briefs filed by the patent owner and the third party requester shall not exceed thirty pages or 14,000 words in length, excluding appendices of claims and reference materials such as prior art references. All other briefs filed by any party shall not exceed fifteen pages in length or 7,000 words. If the page limit for any brief is exceeded, a certificate is required stating the number of words contained in the brief.
§ 1.945 Response to Office action by patent owner in inter partes reexamination.
The patent owner will be given at least thirty days to file a response to any Office action on the merits of the inter partes reexamination.
§ 1.947 Comments by third party requester to patent owner's response in inter partes reexamination.
Each time the patent owner files a response to an Office action on the merits pursuant to §1.945, a third party requester may once file written comments within a period of 30 days from the date of service of the patent owner's response. These comments shall be limited to issues raised by the Office action or the patent owner's response. The time for submitting comments by the third party requester may not be extended. For the purpose of filing the written comments by the third party requester, the comments will be considered as having been received in the Office as of the date of deposit specified in the certificate under §1.8.
§ 1.948 Limitations on submission of prior art by third party requester following the order for inter partes reexamination.
(a) After the inter partes reexamination order, the third party requester may only cite additional prior art as defined under §1.501 if it is filed as part of a comments submission under §1.947 or §1.951(b) and is limited to prior art:
(1) which is necessary to rebut a finding of fact by the examiner;
(2) which is necessary to rebut a response of the patent owner; or
(3) which for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination proceeding. Prior art submitted under paragraph (a)(3) of this section must be accompanied by a statement as to when the prior art first became known or available to the third party requester and must include a discussion of the pertinency of each reference to the patentability of at least one claim.
(b) [Reserved]
§ 1.949 Examiner's Office action closing prosecution in inter partes reexamination.
Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution. The Office action shall set forth all rejections and determinations not to make a proposed rejection, and the grounds therefor. An Office action will not usually close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.
§ 1.951 Options after Office action closing prosecution in inter partes reexamination.
(a) After an Office action closing prosecution in an inter partes reexamination, the patent owner may once file comments limited to the issues raised in the Office action closing prosecution. The comments can include a proposed amendment to the claims, which amendment will be subject to the criteria of §1.116 as to whether or not it shall be admitted. The comments must be filed within the time set for response in the Office action closing prosecution.
(b) When the patent owner does file comments, a third party requester may once file comments responsive to the patent owner's comments within 30 days from the date of service of patent owner's comments on the third party requester.
§ 1.953 Examiner's Right of Appeal Notice in inter partes reexamination.
(a) Upon considering the comments of the patent owner and the third party requester subsequent to the Office action closing prosecution in an inter partes reexamination, or upon expiration of the time for submitting such comments, the examiner shall issue a Right of Appeal Notice, unless the examiner reopens prosecution and issues another Office action on the merits.
(b) Expedited Right of Appeal Notice: At any time after the patent owner's response to the initial Office action on the merits in an inter partes reexamination, the patent owner and all third party requesters may stipulate that the issues are appropriate for a final action, which would include a final rejection and/or a final determination favorable to patentability, and may request the issuance of a Right of Appeal Notice. The request must have the concurrence of the patent owner and all third party requesters present in the proceeding and must identify all the appealable issues and the positions of the patent owner and all third party requesters on those issues. If the examiner determines that no other issues are present or should be raised, a Right of Appeal Notice limited to the identified issues shall be issued. Any appeal by the parties shall be conducted in accordance with §§1.959–1.983.
(c) The Right of Appeal Notice shall be a final action, which comprises a final rejection setting forth each ground of rejection and/or final decision favorable to patentability including each determination not to make a proposed rejection, an identification of the status of each claim, and the reasons for decisions favorable to patentability and/or the grounds of rejection for each claim. No amendment can be made in response to the Right of Appeal Notice. The Right of Appeal Notice shall set a one-month time period for either party to appeal. If no notice of appeal is filed, the inter partes reexamination proceeding will be terminated, and the Director will proceed to issue a certificate under §1.997 in accordance with the Right of Appeal Notice.
Interviews Prohibited in Inter Partes Reexamination
§ 1.955 Interviews prohibited in inter partes reexamination proceedings.
There will be no interviews in an inter partes reexamination proceeding which discuss the merits of the proceeding.
Extensions of Time, Termination of Proceedings, and Petitions To Revive in Inter Partes Reexamination
§ 1.956 Patent owner extensions of time in inter partes reexamination.
The time for taking any action by a patent owner in an inter partes reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. Any request for such extension must be accompanied by the petition fee set forth in §1.17(g). See §1.304(a) for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit.
[69 FR 56546, Sept. 21, 2004]
§ 1.957 Failure to file a timely, appropriate or complete response or comment in inter partes reexamination.
(a) If the third party requester files an untimely or inappropriate comment, notice of appeal or brief in an inter partes reexamination, the paper will be refused consideration.
(b) If no claims are found patentable, and the patent owner fails to file a timely and appropriate response in an inter partes reexamination proceeding, the reexamination proceeding will be terminated and the Director will proceed to issue a certificate under §1.997 in accordance with the last action of the Office.
(c) If claims are found patentable and the patent owner fails to file a timely and appropriate response to any Office action in an inter partes reexamination proceeding, further prosecution will be limited to the claims found patentable at the time of the failure to respond, and to any claims added thereafter which do not expand the scope of the claims which were found patentable at that time.
(d) When action by the patent owner is a bona fide attempt to respond and to advance the prosecution and is substantially a complete response to the Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, an opportunity to explain and supply the omission may be given.
§ 1.958 Petition to revive terminated inter partes reexamination or claims terminated for lack of patent owner response.
(a) If a response by the patent owner is not timely filed in the Office, the delay in filing such response may be excused if it is shown to the satisfaction of the Director that the delay was unavoidable. A grantable petition to accept an unavoidably delayed response must be filed in compliance with §1.137(a).
(b) Any response by the patent owner not timely filed in the Office may be accepted if the delay was unintentional. A grantable petition to accept an unintentionally delayed response must be filed in compliance with §1.137(b).
Appeal to the Board of Patent Appeals and Interferences in Inter Partes Reexamination
§ 1.959 Appeal in inter partes reexamination.
Appeals to the Board of Patent Appeals and Interferences under 35 U.S.C. 134(c) are conducted according to part 41 of this title.
[69 FR 50002, Aug. 12, 2004]
§§ 1.961-1.977 [Reserved]
§ 1.979 Return of Jurisdiction from the Board of Patent Appeals and Interferences; termination of proceedings.
(a) Jurisdiction over an inter partes reexamination proceeding passes to the examiner after a decision by the Board of Patent Appeals and Interferences upon transmittal of the file to the examiner, subject to each appellant's right of appeal or other review, for such further action as the condition of the inter partes reexamination proceeding may require, to carry into effect the decision of the Board of Patent Appeals and Interferences.
(b) Upon judgment in the appeal before the Board of Patent Appeals and Interferences, if no further appeal has been taken (§1.983), the inter partes reexamination proceeding will be terminated and the Director will issue a certificate under §1.997 terminating the proceeding. If an appeal to the U.S. Court of Appeals for the Federal Circuit has been filed, that appeal is considered terminated when the mandate is issued by the Court.
[69 FR 50002, Aug. 12, 2004]
§ 1.981 Reopening after a final decision of the Board of Patent Appeals and Interferences.
When a decision by the Board of Patent Appeals and Interferences on appeal has become final for judicial review, prosecution of the inter partes reexamination proceeding will not be reopened or reconsidered by the primary examiner except under the provisions of §41.77 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
[69 FR 50002, Aug. 12, 2004]
Appeal to the United States Court of Appeals for the Federal Circuit in Inter Partes Reexamination
§ 1.983 Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination.
(a) The patent owner or third party requester in an inter partes reexamination proceeding who is a party to an appeal to the Board of Patent Appeals and Interferences and who is dissatisfied with the decision of the Board of Patent Appeals and Interferences may, subject to §1.979(e), appeal to the U.S. Court of Appeals for the Federal Circuit and may be a party to any appeal thereto taken from a reexamination decision of the Board of Patent Appeals and Interferences.
(b) The appellant must take the following steps in such an appeal:
(1) In the U.S. Patent and Trademark Office, timely file a written notice of appeal directed to the Director in accordance with §§1.302 and 1.304;
(2) In the U.S. Court of Appeals for the Federal Circuit, file a copy of the notice of appeal and pay the fee, as provided for in the rules of the U.S. Court of Appeals for the Federal Circuit; and
(3) Serve a copy of the notice of appeal on every other party in the reexamination proceeding in the manner provided in §1.248.
(c) If the patent owner has filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, the third party requester may cross appeal to the U.S. Court of Appeals for the Federal Circuit if also dissatisfied with the decision of the Board of Patent Appeals and Interferences.
(d) If the third party requester has filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, the patent owner may cross appeal to the U.S. Court of Appeals for the Federal Circuit if also dissatisfied with the decision of the Board of Patent Appeals and Interferences.
(e) A party electing to participate in an appellant's appeal must, within fourteen days of service of the appellant's notice of appeal under paragraph (b) of this section, or notice of cross appeal under paragraphs (c) or (d) of this section, take the following steps:
(1) In the U.S. Patent and Trademark Office, timely file a written notice directed to the Director electing to participate in the appellant's appeal to the U.S. Court of Appeals for the Federal Circuit by mail to, or hand service on, the General Counsel as provided in §104.2;
(2) In the U.S. Court of Appeals for the Federal Circuit, file a copy of the notice electing to participate in accordance with the rules of the U.S. Court of Appeals for the Federal Circuit; and
(3) Serve a copy of the notice electing to participate on every other party in the reexamination proceeding in the manner provided in §1.248.
(f) Notwithstanding any provision of the rules, in any reexamination proceeding commenced prior to November 2, 2002, the third party requester is precluded from appealing and cross appealing any decision of the Board of Patent Appeals and Interferences to the U.S. Court of Appeals for the Federal Circuit, and the third party requester is precluded from participating in any appeal taken by the patent owner to the U.S. Court of Appeals for the Federal Circuit.
[68 FR 71008, Dec. 22, 2003]
Concurrent Proceedings Involving Same Patent in Inter Partes Reexamination
§ 1.985 Notification of prior or concurrent proceedings in inter partes reexamination.
(a) In any inter partes reexamination proceeding, the patent owner shall call the attention of the Office to any prior or concurrent proceedings in which the patent is or was involved, including but not limited to interference, reissue, reexamination, or litigation and the results of such proceedings.
(b) Notwithstanding any provision of the rules, any person at any time may file a paper in an inter partes reexamination proceeding notifying the Office of a prior or concurrent proceedings in which the same patent is or was involved, including but not limited to interference, reissue, reexamination, or litigation and the results of such proceedings. Such paper must be limited to merely providing notice of the other proceeding without discussion of issues of the current inter partes reexamination proceeding. Any paper not so limited will be returned to the sender.
§ 1.987 Suspension of inter partes reexamination proceeding due to litigation.
If a patent in the process of inter partes reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the inter partes reexamination proceeding.
§ 1.989 Merger of concurrent reexamination proceedings.
(a) If any reexamination is ordered while a prior inter partes reexamination proceeding is pending for the same patent and prosecution in the prior inter partes reexamination proceeding has not been terminated, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger is ordered, the merged examination will normally result in the issuance of a single reexamination certificate under §1.997.
(b) An inter partes reexamination proceeding filed under §1.913 which is merged with an ex parte reexamination proceeding filed under §1.510 will result in the merged proceeding being governed by §§1.902 through 1.997, except that the rights of any third party requester of the ex parte reexamination shall be governed by §§1.510 through 1.560.
§ 1.991 Merger of concurrent reissue application and inter partes reexamination proceeding.
If a reissue application and an inter partes reexamination proceeding on which an order pursuant to §1.931 has been mailed are pending concurrently on a patent, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an inter partes reexamination proceeding is ordered, the merged proceeding will be conducted in accordance with §§1.171 through 1.179, and the patent owner will be required to place and maintain the same claims in the reissue application and the inter partes reexamination proceeding during the pendency of the merged proceeding. In a merged proceeding the third party requester may participate to the extent provided under §§1.902 through 1.997, except that such participation shall be limited to issues within the scope of inter partes reexamination. The examiner's actions and any responses by the patent owner or third party requester in a merged proceeding will apply to both the reissue application and the inter partes reexamination proceeding and be physically entered into both files. Any inter partes reexamination proceeding merged with a reissue application shall be terminated by the grant of the reissued patent.
§ 1.993 Suspension of concurrent interference and inter partes reexamination proceeding.
If a patent in the process of inter partes reexamination is or becomes involved in an interference, the Director may suspend the inter partes reexamination or the interference. The Director will not consider a request to suspend an interference unless a motion under §41.121(a)(3) of this title to suspend the interference has been presented to, and denied by, an administrative patent judge and the request is filed within ten (10) days of a decision by an administrative patent judge denying the motion for suspension or such other time as the administrative patent judge may set.
[69 FR 50002, Aug. 12, 2004]
§ 1.995 Third party requester's participation rights preserved in merged proceeding.
When a third party requester is involved in one or more proceedings, including an inter partes reexamination proceeding, the merger of such proceedings will be accomplished so as to preserve the third party requester's right to participate to the extent specifically provided for in these regulations. In merged proceedings involving different requesters, any paper filed by one party in the merged proceeding shall be served on all other parties of the merged proceeding.
Reexamination Certificate in Inter Partes Reexamination
§ 1.997 Issuance of inter partes reexamination certificate.
(a) Upon the conclusion of an inter partes reexamination proceeding, the Director will issue a certificate in accordance with 35 U.S.C. 316 setting forth the results of the inter partes reexamination proceeding and the content of the patent following the inter partes reexamination proceeding.
(b) A certificate will be issued in each patent in which an inter partes reexamination proceeding has been ordered under §1.931. Any statutory disclaimer filed by the patent owner will be made part of the certificate.
(c) The certificate will be sent to the patent owner at the address as provided for in §1.33(c). A copy of the certificate will also be sent to the third party requester of the inter partes reexamination proceeding.
(d) If a certificate has been issued which cancels all of the claims of the patent, no further Office proceedings will be conducted with that patent or any reissue applications or any reexamination requests relating thereto.
(e) If the inter partes reexamination proceeding is terminated by the grant of a reissued patent as provided in §1.991, the reissued patent will constitute the reexamination certificate required by this section and 35 U.S.C. 316.
(f) A notice of the issuance of each certificate under this section will be published in the Official Gazette.
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