What happens if a patent owner files a request for continued examination (RCE) in a merged proceeding?

When a patent owner files a request for continued examination (RCE) in a merged reissue and reexamination proceeding, it has significant consequences. The MPEP states:

If applicant/patent owner files a request for continued examination (RCE) of the reissue application under 37 CFR 1.114 (which may be filed on or after May 29, 2000 for an application filed on or after June 8, 1995), then the merger will be automatically dissolved (severed), and the reissue application will then be suspended.

Important points to note:

• The merger is automatically dissolved upon filing an RCE
• The reissue application is suspended
• RCE practice is not available in reexamination proceedings
• Any response in the reexamination must be made without relying on RCE practice
• Failure to timely respond in the reexamination could result in termination under 37 CFR 1.550(d)

Patent owners should carefully consider the implications before filing an RCE in a merged proceeding.

To learn more:

• request for continued examination
• RCE
• merged proceedings
• dissolution