37 CFR § 1.991 — Merger of concurrent reissue application andinter partesreexamination proceeding. — MPEP Index – BlueIron IP
37 CFR § 1.991 Merger of concurrent reissue application andinter partesreexamination proceeding.
This page consolidates MPEP guidance interpreting 37 CFR § 1.991, including 3 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
37 CFR 1.991 provides a regulatory framework for managing and potentially merging concurrent reissue applications and inter partes reexamination proceedings for the same patent.
What this section covers
- Regulatory framework for handling concurrent patent review proceedings under USPTO guidelines.
- Administrative process for managing overlapping reissue and reexamination proceedings.
Key obligations
- Ensure proper coordination when a reissue application and reexamination proceeding are pending simultaneously.
- Follow USPTO guidelines for merging or managing concurrent patent review processes.
Practice notes
- Carefully track and manage multiple concurrent patent proceedings to avoid procedural complications.
- Consult USPTO regulations to understand the specific requirements for merging patent review processes.
Official MPEP § 1.991 — Merger of concurrent reissue application andinter partesreexamination proceeding.
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.991 Merger of concurrent reissue application and inter partes reexamination proceeding.
If a reissue application and an inter partes reexamination proceeding on which an order pursuant to § 1.931 has been mailed are pending concurrently on a patent, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an inter partes reexamination proceeding is ordered, the merged proceeding will be conducted in accordance with §§ 1.171 through 1.179 , and the patent owner will be required to place and maintain the same claims in the reissue application and the inter partes reexamination proceeding during the pendency of the merged proceeding. In a merged proceeding the third party requester may participate to the extent provided under §§ 1.902 through 1.997 and 41.60 through 41.81 , except that such participation shall be limited to issues within the scope of inter partes reexamination. The examiner’s actions and any responses by the patent owner or third party requester in a merged proceeding will apply to both the reissue application and the inter partes reexamination proceeding and be physically entered into both files. Any inter partes reexamination proceeding merged with a reissue application shall be concluded by the grant of the reissued patent.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]