REISSUE AND REEXAMINATION
UNDER THE U.S. PATENT LAW
by
John R. Inge and Alan J. Kasper
for
KPAA /AIPLA Seminar
May 10, 1999
Seoul, Korea
The statutory basis for reissue practice is found in 35 U.S.C. § 251:
§ 251. Reissue of defective patents
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Commissioner shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclose in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
The Commissioner may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.
No reissue patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
Not all errors which may be contained in an issued patent are correctable by reissue. Only the types of errors within the scope of those mentioned in § 251 can be corrected by this route. Although some court decisions have indicated that the reissue statute, being of a remedial equitable nature, should be liberally construed, the U.S. Patent and Trademark Office (PTO) has required strict adherence to the literal wording of the statute with respect to the types of errors that are correctable by reissue.
The most common reason for seeking reissue is to amend the original patent to either narrow or broaden the claims. Such amendments can be effected by amending the wording of existing claims, as well as deleting claims and adding new claims.
A number of situations may impel the patentee to make such claim amendments: The patentee may uncover prior art after the original patent issues that would invalidate certain claims. Otherwise, the relationship between a prior art reference applied during prosecution and the claimed invention may have been misunderstood so that the claims are too narrow. A mistake or ambiguity in claim wording may be uncovered that would make the claims difficult to enforce in court. An element may be missing from a claim. It may be discovered that a claim reads on an excessive number of inoperative embodiments. A competitor may have entered the market and it is desired to tailor the claims to more clearly cover the competitor’s activities. The inventor or the attorney may have failed to appreciate the true scope of the invention. These are all valid reasons for seeking reissue.
Sometimes a recently issued patent is noticed that contains claims directed to the same patentable invention as in one’s own patent, and an interference is desired. For over a hundred years, filing a reissue application for the purposes of provoking an interference has been an acceptable practice.
Although amending the claims of an issued patent is the most common reason for seeking reissue, there are nevertheless still other important reasons why a patentee might file a reissue application. These include: (a) an inaccuracy discovered in the disclosure; (b) failure to claim foreign priority or a mistake in the claim to foreign priority; (c) failure to file a certified copy of the priority document where foreign priority was claimed; (d) failure to claim the benefit of the filing date of an earlier filed U.S. application or a mistake in such claim; and (e) a mistake in inventorship.
In general, errors that could not be corrected during the pendency of the original application underlying the patent cannot be corrected by reissue. These include an application having a completely defective specification, e.g., a specification that does not enable one of ordinary skill in the art how to make and use the invention, or an application in connection with which fraud or inequitable conduct was committed. Failure to disclose the best mode can be fatal if the original failure to disclose was intentional, i.e., the applicant intended to conceal the best mode from the PTO and competitors. Also, failure to disclose and claim statutory subject matter as defined by 35 U.S.C. § 101 cannot be cured by reissue.
Although an attorney’s mistake in not understanding the full scope of the invention is acceptable, a mistake in not filing a divisional application directed to nonelected claims has been held as not correctable by reissue.
It was once (prior to 1982) possible to file a “no-defect” reissue application to attempt to get the PTO to confirm that a patent actually contains no defects. Thus, a patentee would sometimes file a reissue application to have the PTO confirm patentability of the claims over a newly discovered reference. With the advent of reexamination procedure, such “no-defect” reissue applications were eliminated.
Similarly, substituting claims of essentially the same scope as in the original patent, although of somewhat different wording, is not the type of error correctable by reissue.
Thus, a reissue application must seek to remedy an actual error, and not for any other purpose.
The claims of the reissue application must be directed to the same invention disclosed in the original patent. Reference thus can be made to both the original specification and claims. Although the claims of the reissue application need not be directed to precisely the same subject matter as the claims in the original patent, the claims should be directed to the same general invention; there should be some indication in the original patent specification that the patentee considered the subject matter claimed in the reissue his or her invention.
However, there is no requirement that the invention(s) claimed in the reissue must be in the same statutory class (i.e., apparatus, process, composition of matter) as in the original patent, and a reissue application containing claims directed to a different statutory class than the original patent is not necessarily broadening.
Consistent with the dictates of 35 U.S.C. § 132, Section 251 expressly provides that the reissue application can contain no new matter. Thus, although a reissue specification might be supplemented to improve the clarity of the original, correct obvious errors, or to conform the specification and drawings to one another, the same prohibition against an introduction of new matter, as applied to original applications, operates in the case of reissues. New matter problems sometimes arise in attempting to correct an original patent by the addition of an omitted step or feature.
If claims were deliberately canceled or amended during original prosecution in response to a prior art rejection, the “recapture rule” prevents the patentee from reasserting such claims in a reissue application, even if the original cancellation was effected as a result of a mistaken understanding of the prior art. Claims of an essentially similar scope cannot be resurrected by way of reissue, nor can claims broader than claims canceled during original prosecution be added. The courts have held that since the patentee had an opportunity to challenge the original rejection by way of amendment, appeal, etc., during earlier prosecution, and since cancellation of such claims was a deliberate act, the patentee is estopped from reasserting similar claims in a reissue application.
Specifically, (1) if the reissue claim is as broad as or broader than the canceled or amended claim in all aspects, the recapture rule bars the claim; (2) if the reissue claim is narrower in all aspects, the recapture rule does not apply (but other rejections are possible); (3) if the reissue claim is broader in some aspects but narrower in others, then: (a) if the reissue claim is as broad as or broader in an aspect germane to a prior art rejection but narrower in another aspect completely unrelated to the rejection, the recapture rule bars the claim; (b) if the reissue claim is narrower in an aspect germane to a prior art rejection and broader in an aspect unrelated to the prior art rejection, the recapture rule does not bar the claim (but again other rejections are possible).
A broadening reissue must be filed within two years of the issue date of the original patent. A broadened claim must be filed within the two year period, and if a broader claim is first filed in the reissue application after the two year period has expired, the requirement will not be satisfied. A claim which is broader in any aspect than any original claim, although perhaps narrower in other aspects, is a broadened claim for purposes of the reissue statute. As long as a reissue application containing at least one broadened claim is placed on file within the two-year period so as to put the public on notice of the intent to broaden, it is permissible to add further broadened claims later during prosecution beyond the two-year limit. If a disclaimer has been filed prior to a reissue application canceling claims broader than the claims remaining in the patent, whether claims sought to be added by reissue are broadened or not is measured by the scope of the remaining claims, not those canceled by disclaimer.
Absent other equitable considerations, there is no diligence requirement beyond the statutory two-year period for filing a broadening reissue. Similarly, it has been held that, in the absence of equitable considerations, delay or lack of diligence is not applicable in the case of a narrowing reissue.
Although not a specific requirement of the reissue statute, it should be noted that there is a one-year limit from the issue date of a patent for an opponent to copy claims from the patent for the purpose of provoking an interference. Therefore, if the opponent’s claims are broader, there may be two limiting periods running.
Reissue application files are open to inspection and copying by the general public. The filing of a reissue application is listed in the Official Gazette together with identifying data.
Members of the public are also permitted to, and often do, file protests against pending reissue applications. The procedure for filing a protest and the required content of a protest is specified by 37 C.F.R. § 1.291. In general, the protest must include:
(1) a listing of all patents, publications or other information relied upon;
(2) a concise explanation of the relevance of each listed item;
(3) a copy of each listed patent or publication or other item of information in written form or at least the pertinent portions thereof; and
(4) an English language translation of all the necessary and pertinent parts of any non-English language patent, publication or other item of information in written form relied upon.
The protest must either be served upon the reissue applicant, or else filed with the PTO in duplicate (the PTO will send it to the applicant). The PTO will not communicate further with the protester, except to acknowledge receipt of the protest. However, the PTO may require the reissue applicant to respond to specific issues or questions raised in the protest. The protester though may file further protests against the same reissue application so long as such additional protests raise new issues which could not have been earlier presented.
The entire specification and claims of the original patent must be included, with matter to be omitted by reissue enclosed in square brackets and additions underlined. Amendments to the specification are to be made by submission of a copy of each rewritten paragraph with the appropriate markings, except that complete paragraphs may be deleted by an appropriate statement without presenting the text of the deleted paragraph.
Claims should not be renumbered, and the number of added claims should follow the highest numbered patent claim. The original drawings can be carried over so long as there are no changes. Each claim amendment when originally submitted must be accompanied by an explanation of the support in the disclosure of the patent for the amendment (i.e., support for any insertions and deletions). Failure to submit an explanation of support in an amendment submitted prior to final rejection will generally result in a notification that the reply is incomplete.
37 C.F.R. § 1.175 sets forth detailed requirements for the reissue oath (or declaration) in addition to the requirements for an oath in an ordinary application specified in § 1.63.
Subsection 1.175(a)(1) requires a statement that the “applicant believes the original patent to be wholly or partly inoperative or invalid,” and must specify the reasons why, i.e., by reason of a defective specification or drawing, or by reason of claiming more or less than the patentee had the right to claim. The patentee is also required to specifically state at least one error being relied upon as the basis for the reissue.
There is further required by subsection 1.175(a)(2) a general statement that all errors being corrected in the reissue application arose without any deceptive intention on the part of the applicant.
Finally, subsection 1.175(b)(1) requires for any further errors corrected during prosecution of the reissue application but not covered by the original reissue oath or declaration that there be submitted a supplemental oath or declaration prior to allowance of the application.
The reissue oath can be signed either by all inventors, or by the assignee of the entire interest in the patent if the application does not seek to enlarge the scope of the claims of the original patent.
Although it is not necessary to submit the original Letters Patent with the reissue application, the reissue application must be accompanied by at least an offer to surrender the original upon allowance of the reissue. If the original Letters Patent is no longer accessible or has been lost, an oath or declaration to that effect will be accepted.
The reissue application must also be accompanied by an assent of all assignees of an undivided interest in the patent. All assignees consenting to the reissue must establish their ownership interest in the patent by filing in the reissue application a submission in accordance with the provisions of 37 C.F.R. § 3.73(b).
5. Duty of Disclosure
The reissue applicant is required to comply with the duty of disclosure, as in ordinary examination of utility patent applications under 37 CFR § 1.56.
Reissue applications are examined in the same manner as ordinary applications, including examination of the entire application. That is, even portions of the application which have not been changed are subjected to complete examination. The presumption of validity of 35 U.S.C. § 282 does not apply to PTO proceedings in a reissue application. Reissue applications are acted on “in advance of other applications, but not sooner than two months after announcement of the filing of the reissue application has appeared in the Official Gazette.”There is a special format for amendments to claims in reissue applications, which is intended to facilitate the printing of the reissue patent with changes to the claims clearly evident.
The effect of a reissue patent is set forth in 35 U.S.C. § 252:
§ 252. Effect of Reissue
The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.
No reissued patent shall abridge or affect the right of any person or his successors in business who made, purchased, or used prior to the grant of a reissue anything patented by the reissued patent, to continue the use of, or to sell to others to be used or sold, the specific thing so made, purchased, or used, unless the making, using, or selling of such thing infringes a valid claim of the reissued patent which was in the original patent. The court before which such matter is in question may provide for the continued manufacture, use, or sale of the thing made, purchased, or used as specified, or for the manufacture, use, or sale of which substantial preparation was made before the grant of the reissue, and it may also provide for the continued practice of any process patented by the reissue, practiced, or for the practice of which substantial preparation was made, prior to the grant of the reissue, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.
The first paragraph of § 252 contains two provisions. First, the claims of the reissued patent, including those added or amended by reissue, shall have the same effect as if they were all in the original patent, so far as causes of action arising after the date of reissue are concerned. Second, the reissue shall have no effect on causes of action in existence as of the date of reissue for claims of the reissued patent which are identical to the claims of the original patent.
With respect to the first provision, if a competitor starts manufacture at a time subsequent to the reissue date, all the claims in the reissued patent shall have the same effect as if they were in the original patent. As to the second, if a competitor were infringing any of the claims of the original patent prior to reissue, and these claims are carried over into the reissued patent, there is no effect on the cause of action against that competitor. In other words, damages still can be collected starting from as early as the original patent’s issue date.
The effect of the second paragraph of § 252 is a bit more complicated than that of the first paragraph. The second paragraph relates to “intervening rights” which may be granted to one who, although infringing the reissue patent, did not infringe any valid claim of the original patent, that is, one whose infringement arises only due to the reissue.
The provisions of the second paragraph may apply in the case of a broadened reissue to one whose product was only brought within the scope of the patent by the broadened claims. They also may apply to one who knew of the existence of the original patent but who knew of a good defense to any charge of infringement under the original claims, for example, a reference which anticipates all of the claims of the original patent. The provisions apply as well to one who made “substantial preparations” prior to the grant of the reissue. In such cases, a court can grant the defendant in an infringement suit brought under the reissue patent certain rights to continue use, manufacture or sale under the reissue patent, so long as there has been actual reliance on the scope of the original claims.
The first sentence of the second paragraph of § 252 grants essentially a royalty-free license for the continued use or sale of something made, purchased, sold or used prior to the grant of the reissue, but this license does not extend to the continued manufacture of the thing.
The second sentence of the second paragraph of § 252 allows the court to also grant intervening rights for the continued manufacture of the thing patented, but such rights are not without limit, however, and the exact extent of the rights granted is to be determined as a matter of equity. That is, the scope of intervening rights to continue to manufacture the thing patented by the reissue (but not by a valid claim of the original patent) is decided on a case-by-case basis.
The statutory basis for reexamination practice is found in 35 U.S.C. § 302, which reads as follows:
Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301 of this title. The request must be in writing and must be accompanied by payment of a reexamination fee established by the Commissioner of Patents pursuant to the provisions of section 41 of this title. The request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested. Unless the requesting person is the owner of the patent, the Commissioner promptly will send a copy of the request to the owner of record of the patent.
The requirements and procedure for filing a request for reexamination are governed primarily by 37 C.F.R. § 1.510. The various parts of this rule are analyzed below:
37 C.F.R. § 1.510(a)
(a) Any person may, at any time during the period of enforceability of a patent, file a request for reexamination by the Patent and Trademark Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501. The request must be accompanied by the fee for requesting reexamination set in § 1.20(c).
Any person can file a request for reexamination of any claim of any enforceable U.S. patent. Such “any” person can include a juridical person such as a corporation or a governmental body. The Commissioner of Patents and Trademarks can also initiate reexamination on his or her own initiative under 37 C.F.R. § 1.520, although only under special situations, for example, where the PTO has issued a frivolous patent subjecting the Office to adverse publicity.
The types of “persons” who might initiate reexamination include the patent owner (especially prior to initiating suit or attempting to license the patent), adverse parties during litigation, potential infringers, potential licensees, and adverse parties in an interference.
Participation by the inventor is not required in an application which has been assigned.
A request for reexamination is timely if filed at any time during the period of enforceability of a patent. The period of enforceability includes the statutory 20 years from the filing date of the underlying application (or the 17 year period from the date of issue in certain cases), plus the six-year period after the end of the term during which infringement litigation may be instituted to collect back damages.
The required content of a request for reexamination are set forth in 37 C.F.R. § 1.510(b).
37 C.F.R. § 1.510(b)
(b) Any request for reexamination must include the following parts:
(1) a statement pointing out each substantial new question of patentability based on prior patents and printed publications
The request must clearly specify what the new questions of patentability are. For example, a competitor could point out that claims 1, 3 and 4 are anticipated by a certain new reference. A patent owner might point out that a newly uncovered reference is closer to the claimed invention than the prior art applied during prosecution, for example, the new reference discloses a feature not present in the prior art earlier considered, but that the claims remain patentable over the reference. The request should point out why the alleged new questions of patentability are different from those raised during earlier prosecution.
a. Substantial New Question of Patentability
The “substantial new question of patentability” generally must be one that arises under 35 U.S.C. § 102(a), (b), (d) or (e), or 35 U.S.C. § 103. Questions of patentability based on other grounds should not be raised. For example, it is not proper to raise questions of patentability under 35 U.S.C. § 112 for lack of an enabling disclosure, fraud, or for failure to disclose the best mode for practicing the invention. Questions of inventorship also will not be considered during reexamination. However, a question of double patenting is a proper subject for reexamination.
Following the decision of the Federal Circuit in In re Portola Packaging, supra., the USPTO issued Guidelines for Reexaminationwhich stated that
“if prior art was previously relied upon to reject a claim in a prior related PTO proceeding, the PTO will not order or conduct reexamination based only on such prior art, regardless of whether that prior art is to be relied upon to reject the same or different claims in reexamination. If prior art was not relied upon to reject a claim, but was cited in the record of a prior PTO proceeding, and its relevance to the patentability of any claim was actually discussed on the record, the PTO will not order or conduct reexamination based only on such prior art. In contrast, the PTO may order and conduct reexamination based on prior art that was cited but whose relevance to patentability of the claim was not discussed.
Exceptions are contemplated, as where other evidence shows that the examiner did not appreciate the issues raised on reexamination, or where only part of an entire document or text was considered and other parts are pertinent.
The guidelines relate to new requests for reexamination and then pending reexamination proceedings. An ongoing proceeding must have outstanding rejections that are based on previously considered art withdrawn and the proceeding possibly terminated.
c. Supplemental Information
Affidavits or declarations explaining the contents of the cited prior art or the effective date of a reference may be received.
Admissions made by the patentee, either in the patent itself or during prior prosecution, may be considered during reexamination. However, the admission must stand on its own and not require information supplementing or further defining the admission. The patent owner may submit an admission, no matter where made, while a third-party requester can only rely on an admission made by the patentee on the record.
d. The All Claim Rule
If ordered, reexamination will be conducted of all claims of the patent, not just specific claims identified in the request.
(2) an identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. If appropriate the party requesting reexamination may also point out how claims distinguish over cited prior art.
The request should apply the cited prior art to every claim for which reexamination is requested, either pointing out how the claims are distinguished over the prior art or why the claims are invalid in view of the prior art.
(3) a copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication.
A copy of every reference relied upon must be submitted. The PTO prefers that copies of the prior art cited during earlier prosecution also be included.
It must be noted that the request for reexamination must be based only on patents or printed publications. Evidence of prior sale, for example, cannot be considered during reexamination.
(4) the entire specification (including claims) and drawings of the patent for which reexamination is requested must be furnished in the form of cut-up copies of the original patent with only a single column form on one side of a separate paper. A copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent must also be included.
A copy of the entire patent in cut-up, single column form must also be submitted, together with a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent.
(5) a certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as 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 must be supplied to the Office.
If filed by one other than the patentee, the entire request, including the cited references must be served on the patent owner. If service is not possible, a duplicate copy must be filed with the PTO.
(c) If the request does not include the fee for requesting reexamination or all the parts required by paragraph (b) of this section, the person identified as requesting reexamination will be so notified and given an opportunity to complete the request within a specified time. If the fee for requesting reexamination has been paid but the defect in the request is not corrected within the specified time, the determination whether or not to institute reexamination will be made on the request as it then exists. If the fee for requesting reexamination has not been paid, no determination will be made and the request will be placed in the patent file as a citation if it complies with the requirements of § 1.501(a).
The fee for requesting reexamination must be paid and all parts of paragraph (b) satisfied; otherwise, the requester will be given an opportunity to correct the problem. Until all formalities are complied with, the request will merely be placed in the patent file and no examination of the claims will be conducted. If the fee has been paid but other requirements not met, the determination as to whether to grant the request and commence reexamination will be made on the request as it then stands.
(d) The filing date of the request is: (1) the date on which the request including the entire fee for requesting reexamination is received in the Patent and Trademark Office; or (2) the date on which the last portion of the fee for requesting reexamination is received.
(e) A request filed by the patent owner may include a proposed amendment in accordance with § 1.121(f).
If, for example, some of the claims of the patent are believed by the patent owner to be unpatentable over the prior art, a proposed amendment may be filed with the request. If though the examiner determines that no substantial new question of patentability exists, the amendment will not be entered. The decision as to whether or not to grant reexamination though will be made without reference to the proposed amendment, i.e., the decision will be made only with reference to the original claims of the patent.
(f) If a 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).
Although the request need not identify the requester, if a requesting party is identified and that party is represented by an attorney or agent, an appropriate power of attorney should be filed. The PTO will not, however, delay the processing of the request if no power of attorney has been filed.
After the filing of a request for reexamination and until reexamination is ordered, no papers other than citations of patents or printed publications under 37 C.F.R. § 1.501, another complete request for reexamination, or a notification of concurrent proceedings can be filed. Under 37 C.F.R. § 1.11(c), all requests for reexamination are announced in the Official Gazette. The announcement will include identifying data such as the patent number, title, class and subclass, names of the inventor and patent owner, and the examining group. Thereafter, the reexamination file is open for public inspection and copying. However, this does not mean that members of the public are free to participate in the reexamination procedure.
35 U.S.C. § 303 and 37 C.F.R. § 1.515 require that the Commissioner render a decision as to whether a substantial new question of patentability has been raised by a request within three months following the filing of a complete request. The Commissioner’s decision that no substantial new question of patentability has been raised is final and nonappealable. However, the requester can file a petition to the Commissioner under 37 C.F.R. § 1.181 within one month of a negative decision requesting reconsideration. If the decision is negative, a portion of the reexamination fee may be refunded.
Neither the statute nor the rules specifically defines what is meant by “a substantial new question of patentability.” The PTO has taken the position that a prior art patent or printed publication raises a substantial new question of patentability where there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable. It is only necessary that a substantial new question be raised with respect to a single claim for reexamination to be granted.
Once a decision has been made to grant reexamination, the patent owner is given a period of not less than two months to file a statement regarding the substantial new question of patentability, which may include an amendment to the original claims or new claims. However, the patent owner is not under any obligation to file a patent owner’s statement, and examination will continue in the ordinary manner if no such statement is filed.
If reexamination was requested by a party other than the patentee, and if the patent owner files a patent owner’s statement in response to the order granting reexamination, the requester is allowed to file a reply to the patent owner’s statement within two months. The reply though is not limited to the issues raised in the patent owner’s statement, and may include citation of additional prior art patents or printed publications, and it may raise any issue appropriate for reexamination. A third-party requester’s participation in the reexamination procedure ends with the filing of the reply.
If the patent owner files no statement, a third-party requester is permitted no further participation in the reexamination procedure. Therefore, to prevent a third-party requester from having a further opportunity to participate, patent owners seldom file a patent owner’s statement when reexamination is requested by a third party.
After the filing of the patent owner’s statement and third-party requester’s reply (if any), examination is conducted in essentially the same manner as in an ordinary application. An initial office action will issue, to which the patent owner can reply by filing claim amendments and arguing the patentability of the claims over the prior art. However, unlike ordinary examination, the scope of the claims cannot be broadened at any time by reexamination. However, as to claim amendments made during reexamination, a change of words does not always mean change of scope, and that the question of whether the claims have been materially or substantially enlarged must be determined upon the claim as a whole. The entry of “new matter” is also prohibited.
An affidavit or declaration (under Rule 131) in reexamination may not be used to swear behind a United States patent claiming the same invention. That is, the issue of priority cannot be determined by reexamination, but only by an interference.
In general, prosecution is similar to that for a reissue application, with the following exceptions:
Under 35 U.S.C. § 305, all reexamination proceedings, including any appeal, “will be conducted with special dispatch within the Office.” To this effect, a patent owner can be given a period as short as 30 days to respond to any office action. Moreover, automatic extensions under 37 C.F.R. § 1.136 are not available; a request for an extension must be specifically requested and are granted only for “sufficient cause.”
A patent owner dissatisfied with the reexamination result in the PTO can file an appeal to the Federal Circuit.
The same duty to disclose relevant information as in ordinary examination applies.
At the conclusion of a reexamination proceeding, the Commissioner will issue a certificate “setting forth the results of the reexamination proceeding and the content of the patent following the reexamination proceeding.” This certificate will issue in every case in which reexamination is ordered. The patent owner cannot “abandon” the reexamination proceeding.
If the reexamination proceeding terminates with all claims canceled. If this occurs, “no further Office proceedings will be conducted with regard to that patent or any reissue application, or reexamination requests relating thereto.”
The patent owner is required to call to the attention of the PTO any prior or concurrent proceeding in which the patent is or was involved, such as interferences, reissues, reexaminations, or litigation, and inform the PTO of the current status or conclusions.
If reexamination is ordered prior to the conclusion of an earlier-ordered reexamination, “the reexamination proceedings will be consolidated and result in the issuance of a single certificate under § 1.570.”
However, there are some exceptions. For example, if a second request is filed at a time such that the first reexamination certificate will issue within three months from the filing date of the second request, the certificate would actually issue in the first proceeding before there has to be decision whether to grant reexamination in the second proceeding.
If a patent in the process of reexamination is involved in an interference, the Commissioner may stay either the reexamination proceeding or the interference. To request a stay in an interference, a motion must be filed under 37 C.F.R. § 1.635.
The general policy of the PTO is that reexamination will not be delayed or stayed because of an interference because of the generally long period of time required to complete an interference and the statutory requirement that all reexamination proceedings be conducted with “special dispatch”. Decisions in the interference will take into consideration the status of the reexamination.
If a reissue application and a reexamination proceeding are concurrently pending, the two generally are to be merged. The reason is to permit as rapid as possible resolution in both proceedings, and to avoid possibly inconsistent or conflicting positions being taken in the two proceedings.
The same provisions for intervening rights are provided as in the case of reissue.