Can a third party requester petition to merge a reissue application and an inter partes reexamination proceeding?
No, a third party requester does not have the right to file a petition to merge a reissue application and an inter partes reexamination proceeding. 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…
Read MoreWho makes the decision to merge or stay concurrent reissue and reexamination proceedings?
The decision to merge a reissue application examination and an inter partes reexamination proceeding, or to stay one of them, is made by the Office of Patent Legal Administration (OPLA). As stated in the MPEP: “The decision as to whether the reissue application examination and the reexamination proceeding are to be merged, or which of…
Read MoreAre interviews permitted in merged reissue and inter partes reexamination proceedings?
No, interviews discussing the merits of the case are not permitted in merged reissue and inter partes reexamination proceedings. The MPEP states: “Pursuant to 37 CFR 1.955, an interview which discusses the merits of a proceeding is not permitted in an inter partes reexamination proceeding. Thus, in a merged proceeding of an inter partes reexamination…
Read MoreHow are fees handled in merged reissue and reexamination proceedings?
In merged reissue and reexamination proceedings, only a single fee needs to be paid for actions that would normally require a fee in each separate proceeding. The MPEP clarifies: “Where the proceedings have been merged and a paper is filed which requires payment of a fee (e.g., excess claims fee, extension of time fee, petition…
Read MoreCan an examiner make an examiner’s amendment in a merged reissue/inter partes reexamination proceeding?
An examiner can make an examiner’s amendment in a merged reissue/inter partes reexamination proceeding, but only in very limited circumstances. The MPEP states: “The only times that an examiner’s amendment can be made in conjunction with a Notice of Allowability are where the patent owner authorization need not be obtained.” These limited circumstances include: Formal…
Read MoreWhat happens when a reissue application and an inter partes reexamination proceeding are pending concurrently for the same patent?
When a reissue application and an inter partes reexamination proceeding are pending concurrently on the same patent, the general policy of the USPTO is that they will not be conducted separately at the same time. As stated in the MPEP: “The general policy of the Office is that the examination of a reissue application and…
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