MPEP 2600: Inter Partes Reexamination

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How is Inter Partes Reexammination Different from Ex Partes Reexamination

Different in 7 ways:
1. applicable only to patents issuing from apps filed on or after 11/29/99
2. if requestq is granted, first OA is mailed with the order granting request
3. if request is denied, partial refund
4. no interviews are permitted during inter parts reexam
5. 3rd party requestor may respond to patent owner's reply to each OA
6. 3rd party requestor may appeal to the Board or participate in patent owner's appeal Board
7. a party who has previously requested an inter partes reexam in which a final decision favorable to the patentability of a claim is estopped from later Court action on the basis of issues raised or issues that could have been raised in the inter partes reexam

Who may not request Inter Partes Reexamination?

1. the patent owner
2. party who previously lost in a court action on a validity challenge to the patent on the basis of issues raised or issues that could have been raised
3. a party who has previously requested an inter partes reexam which has been granted and is still pending
4. a party who has previously requested an inter partes reexam in which a final decision favorable to the patentability of a claim was made on the basis of issues raised (or could have been) on previous request

Request for, and Service of, Inter Partes Reexamination

Essentially the same as ex parte reexam except includes rule 1.20(c)(2) fee of $8,800--no small entity; certification that R907 estoppel does not apply, and must identify the real party who is making request

3rd Party Requestor Participation in Inter Partes Reexamination

1.3rd party requestor may file wriiten comments, once, to patent owner's reply to each OA
2. Must be filed within 30 days of receiveing service of patent owner's reply to OA
3. no EOT
4. written comment (50 max) must be limited to issues raised in OA & reply
5.citations of additional prior art are limited to those necessart to respond to patent owner's reply and issues raised by examiner in OA

Strict 9 Step Appeal Procedure

1.appeal brief - due two months from notice of appeal
2.respondent's brief- due one month from service of appeal brief
3.examiner's answer: no new grounds fro rejection (or reopen pros)
4. rebuttul brief- due one month from examiner's answer
5.request fro oral hearing-due 2 months from examiner's answer
6 oral arguement-20 mins for examiner and 30 mins for each partyt
7. decision by Board
8. petition for rehearing due one month from initial decision
9. appeal to federal circuit by patent owner

Does patent owner need to disclose any other proceedings to examiner

YES
like ex parte reexam

What happens if there are multiple reexams?

y may be merged or one proceeding suspended until the other concludes; if inter partes merged with ex parte reexam, inter partes rules govern, but ex part requestor get no additional rights, and one reexam certificate will issue

Reexamination Interference

Commissioner is empowered to suspend one proceeding until the other is concluded

Reexamination-Reissue

may be merged or one proceeding suspended until the other concluded; if merged with reissue, inter partes rules govern, but requestor can participate; identical papers filed and same claims must be pending in both files, and reissue patent also serves as the reexam certificate

Reexamination-Litigation

Commissioner has discretion whether to suspend in view of litigation; patent owner may seek stay of court action until reexam is terminated

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