How does the USPTO handle multiple reexamination requests for the same patent?
The USPTO has specific procedures for handling multiple reexamination requests for the same patent. The MPEP provides guidance on this situation:
“If a second or subsequent request for reexamination is filed (by any party permitted to do so) while a first reexamination is pending, the presence of a substantial new question of patentability depends on the art (patents and printed publications) cited by the second or subsequent request.”
For inter partes reexamination requests filed prior to September 16, 2011, the MPEP outlines the following scenarios:
- An ordered inter partes reexamination is pending, and an ex parte reexamination request is subsequently filed.
- An ordered inter partes reexamination is pending, and an inter partes reexamination request is subsequently filed.
- An ordered ex parte reexamination is pending, and an inter partes reexamination request is subsequently filed.
In these cases, the USPTO applies the following principle:
“If the subsequent request includes the art which raised a substantial new question in the earlier pending reexamination, then reexamination should be ordered only if the art cited raises a substantial new question of patentability which is different from that raised in the earlier pending reexamination.”
This approach ensures that reexaminations are not redundant and that each request brings new issues to be considered.
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