Once the NIRC has been mailed, the reexamination proceeding is forwarded for publication of the reexamination certificate. Thus, when the patent owner provides a submission of patents and printed publications or other information described in 37 CFR 1.98(a) after the NIRC has been mailed, the proceeding has entered the publication process for printing the reexamination certificate. To automatically delay prosecution by pulling the proceeding from that process when such a submission has been filed, without more, would be contrary to the Office’s statutory mandate for “special dispatch”, as set forth in 35 U.S.C. 305.

These requirements are similar to the requirements to withdraw an application from issue as set forth in 37 CFR 1.313(c)(1). The printing cycle for an application occurs after the payment of the issue fee (there is no issue fee in reexamination), and thus, in order to withdraw an application from issue after payment of the issue fee, the requirements of 37 CFR 1.313(c) must be met. Based on the statutory requirement for “special dispatch,” the requirements for withdrawal of a reexamination proceeding from issue, i.e., its printing cycle, after NIRC are at least as burdensome as those set forth in 37 CFR 1.313(b) and (c). Accordingly, where a submission of patents and printed publications or other information described in 37 CFR 1.98(a) is made after NIRC, the patent owner must provide an unequivocal statement as to why the art submitted makes at least one claim unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. This is in addition to the above-discussed factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier (see item (A) above).

For this reason, the submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier, (B) an unequivocal statement that one or more claims are unpatentable, and (C) an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. This must be provided via a petition under 37 CFR 1.182 (with the petition fee) for entry and consideration of the information submitted after NIRC. These requirements are necessary to provide a basis for interrupting the proceeding after NIRC, in order for the Office to comply with its statutory mandate for “special dispatch”.

For this reason, the submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier, (B) an unequivocal statement that one or more claims are unpatentable, and (C) an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. This must be provided via a petition under 37 CFR 1.182 (with the petition fee) for entry and consideration of the information submitted after NIRC. These requirements are necessary to provide a basis for interrupting the proceeding after NIRC, in order for the Office to comply with its statutory mandate for “special dispatch”.

These requirements are similar to the requirements to withdraw an application from issue as set forth in 37 CFR 1.313(c)(1). The printing cycle for an application occurs after the payment of the issue fee (there is no issue fee in reexamination), and thus, in order to withdraw an application from issue after payment of the issue fee, the requirements of 37 CFR 1.313(c) must be met. Based on the statutory requirement for “special dispatch,” the requirements for withdrawal of a reexamination proceeding from issue, i.e., its printing cycle, after NIRC are at least as burdensome as those set forth in 37 CFR 1.313(b) and (c). Accordingly, where a submission of patents and printed publications or other information described in 37 CFR 1.98(a) is made after NIRC, the patent owner must provide an unequivocal statement as to why the art submitted makes at least one claim unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. This is in addition to the above-discussed factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier (see item (A) above).

These requirements are similar to the requirements to withdraw an application from issue as set forth in 37 CFR 1.313(c)(1). The printing cycle for an application occurs after the payment of the issue fee (there is no issue fee in reexamination), and thus, in order to withdraw an application from issue after payment of the issue fee, the requirements of 37 CFR 1.313(c) must be met. Based on the statutory requirement for “special dispatch,” the requirements for withdrawal of a reexamination proceeding from issue, i.e., its printing cycle, after NIRC are at least as burdensome as those set forth in 37 CFR 1.313(b) and (c). Accordingly, where a submission of patents and printed publications or other information described in 37 CFR 1.98(a) is made after NIRC, the patent owner must provide an unequivocal statement as to why the art submitted makes at least one claim unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. This is in addition to the above-discussed factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier (see item (A) above).

The exception to the requirement for reference copies in 37 CFR 1.98(d)(1) does not apply to reexamination proceedings since a reexamination proceeding does not receive 35 U.S.C. 120 benefit from the patent.

Once the NIRC has been mailed, the reexamination proceeding is forwarded for publication of the reexamination certificate. Thus, when the patent owner provides a submission of patents and printed publications or other information described in 37 CFR 1.98(a) after the NIRC has been mailed, the proceeding has entered the publication process for printing the reexamination certificate. To automatically delay prosecution by pulling the proceeding from that process when such a submission has been filed, without more, would be contrary to the Office’s statutory mandate for “special dispatch”, as set forth in 35 U.S.C. 305.

No consideration will be given to a third party requester submission of patents and printed publications, or other information, that is filed in the reexamination proceeding unless it is part of the request for reexamination or the requester’s reply under 37 CFR 1.535. See 37 CFR 1.540.