What is the patent owner’s responsibility regarding prior or concurrent proceedings in ex parte reexamination?
In an ex parte reexamination proceeding, the patent owner has a continuing responsibility to inform the USPTO about any prior or concurrent proceedings involving the patent under reexamination. This responsibility is outlined in 37 CFR 1.565(a), which states:
“In an ex parte reexamination proceeding before the Office, the patent owner must inform the Office of any prior or concurrent proceedings in which the patent is or was involved such as interferences, reissues, ex parte reexaminations, inter partes reexaminations, or litigation and the results of such proceedings.”
This requirement includes informing the Office about supplemental examination proceedings and reviews before the Patent Trial and Appeal Board, in addition to the examples provided in the regulation.
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