What are the responsibilities of parties regarding litigation in inter partes reexamination?

In inter partes reexamination proceedings, both the patent owner and the third-party requester have responsibilities regarding litigation. The MPEP states:

The patent owner is reminded of the continuing responsibility under 37 CFR 1.985(a), to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent 9,999,999 throughout the course of this reexamination proceeding. The third party requester is also reminded of the ability to similarly apprise the Office of any such activity or proceeding throughout the course of this reexamination proceeding.

Key points:

• Patent owners must inform the USPTO of any ongoing litigation or proceedings involving the patent under reexamination
• Third-party requesters may also inform the USPTO of such activities
• This responsibility continues throughout the reexamination proceeding
• The purpose is to ensure the USPTO is aware of all relevant information that may affect the reexamination

For more details on these responsibilities, refer to MPEP § 2686 and 2686.04.

To learn more:

• inter partes reexamination
• litigation responsibility
• patent owner
• third-party requester
• concurrent proceedings