MPEP § 2286.01 — Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review (Annotated Rules)
§2286.01 Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review
This page consolidates and annotates all enforceable requirements under MPEP § 2286.01, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review
This section addresses Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review. Primary authority: 35 U.S.C. 315(d) and 35 U.S.C. 325(d). Contains: 2 requirements, 1 permission, and 1 other statement.
Key Rules
Post-Grant Proceedings Under AIA
The Leahy-Smith America Invents Act amended 35 U.S.C. 315(d) and added 35 U.S.C. 325(d) to provide that, during the pendency of an inter partes review, post grant review or covered business method review ("PTAB Review Proceeding"), if another proceeding (e.g., an ex parte reexamination proceeding) or matter involving the patent is before the Office, the Director may determine the manner in which the PTAB Review Proceeding and the other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of such matter or proceeding. If an examiner becomes aware of a PTAB Review Proceeding for the same patent that is being reexamined, the ex parte reexamination proceeding must be referred to the examiner’s SPRS. The SPRS will coordinate with the PTAB before taking any action on the reexamination proceeding.
The Leahy-Smith America Invents Act amended 35 U.S.C. 315(d) and added 35 U.S.C. 325(d) to provide that, during the pendency of an inter partes review, post grant review or covered business method review ("PTAB Review Proceeding"), if another proceeding (e.g., an ex parte reexamination proceeding) or matter involving the patent is before the Office, the Director may determine the manner in which the PTAB Review Proceeding and the other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of such matter or proceeding. If an examiner becomes aware of a PTAB Review Proceeding for the same patent that is being reexamined, the ex parte reexamination proceeding must be referred to the examiner’s SPRS. The SPRS will coordinate with the PTAB before taking any action on the reexamination proceeding.
Covered Business Method Review (CBM)
The Leahy-Smith America Invents Act amended 35 U.S.C. 315(d) and added 35 U.S.C. 325(d) to provide that, during the pendency of an inter partes review, post grant review or covered business method review ("PTAB Review Proceeding"), if another proceeding (e.g., an ex parte reexamination proceeding) or matter involving the patent is before the Office, the Director may determine the manner in which the PTAB Review Proceeding and the other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of such matter or proceeding. If an examiner becomes aware of a PTAB Review Proceeding for the same patent that is being reexamined, the ex parte reexamination proceeding must be referred to the examiner’s SPRS. The SPRS will coordinate with the PTAB before taking any action on the reexamination proceeding.
Appeals in Reexamination
The existence of a PTAB Review Proceeding does not change the fact that any reexamination request must, by statute, be decided (a grant or a denial) within three months of its filing date.
Citations
| Primary topic | Citation |
|---|---|
| Covered Business Method Review (CBM) Post-Grant Proceedings Under AIA | 35 U.S.C. § 315(d) |
| Covered Business Method Review (CBM) Post-Grant Proceedings Under AIA | 35 U.S.C. § 325(d) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2286.01 — Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review
Source: USPTO2286.01 Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review [R-07.2015]
The Leahy-Smith America Invents Act amended 35 U.S.C. 315(d) and added 35 U.S.C. 325(d) to provide that, during the pendency of an inter partes review, post grant review or covered business method review (“PTAB Review Proceeding”), if another proceeding (e.g., an ex parte reexamination proceeding) or matter involving the patent is before the Office, the Director may determine the manner in which the PTAB Review Proceeding and the other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of such matter or proceeding. If an examiner becomes aware of a PTAB Review Proceeding for the same patent that is being reexamined, the ex parte reexamination proceeding must be referred to the examiner’s SPRS. The SPRS will coordinate with the PTAB before taking any action on the reexamination proceeding.
The existence of a PTAB Review Proceeding does not change the fact that any reexamination request must, by statute, be decided (a grant or a denial) within three months of its filing date.