When is the decision to merge or stay concurrent proceedings made?
The decision to merge or stay concurrent reissue application and ex parte reexamination proceedings is not made immediately. According to the MPEP: A decision whether or not to merge the reissue application examination and the ex parte reexamination proceeding, or to stay one of the two proceedings, will not be made prior to the mailing…
Read MoreCan a third party requester petition to merge a reexamination proceeding with a reissue application?
A third party requester does not have the right to petition for the merger of a reexamination proceeding with a reissue application. The MPEP clearly states: The third party requester does not have a right to file a petition under 37 CFR 1.182 to merge a reexamination proceeding and a reissue application examination, since a…
Read MoreWhat happens if a reissue patent is granted during a pending reexamination proceeding?
When a reissue patent is granted during a pending reexamination proceeding, the reexamination will be based on the claims of the reissue patent. The MPEP states: If a reissue patent issues on the patent under reexamination after reexamination is ordered, the next action from the examiner in the reexamination should point out that further proceedings…
Read MoreWhat 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…
Read MoreWhat factors are considered in deciding whether to merge proceedings or stay one of them?
The decision to merge proceedings or stay one of them is made on a case-by-case basis, considering various factors. The MPEP states: The decision on whether to merge the proceedings or stay a proceeding will be made on a case-by-case basis based upon the status of the various proceedings. Key considerations include: The status of…
Read MoreHow are merged reissue application and reexamination proceedings conducted?
When a reissue application and a reexamination proceeding are merged, the examination follows specific guidelines. The MPEP states: Where merger is ordered, the patent owner is required to maintain identical amendments in the reissue application and the reexamination file for purposes of the merged proceeding. Key aspects of the merged proceeding include: Amendments are submitted…
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