What 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 happens when a reexamination proceeding is merged with a reissue proceeding?
When a reexamination proceeding is merged with a reissue proceeding, MPEP 2694 outlines the following process: The proceeding is concluded under 37 CFR 1.997(e). A reissue patent is granted instead of issuing an individual reexamination certificate. The reissue patent serves as the certificate for the reexamination proceeding. The merged proceeding is processed according to MPEP…
Read MoreHow is a reexamination proceeding concluded when merged with a reissue proceeding?
When a reexamination proceeding is merged with a reissue proceeding, it can be concluded under 37 CFR 1.570(e). According to MPEP 2294, the process involves: Granting a reissue patent instead of issuing an individual reexamination certificate Processing the merged proceeding as set forth in MPEP § 1455 and MPEP § 1456 The MPEP states: “The…
Read MoreWhat happens if an inter partes reexamination is merged with an ex parte reexamination?
When an inter partes reexamination is merged with an ex parte reexamination, the merged proceeding is conducted according to inter partes reexamination procedures. The MPEP states: “If an inter partes reexamination is merged with an ex parte reexamination, the merged proceeding will be conducted as an inter partes reexamination with the participation of the ex…
Read MoreHow is a reexamination proceeding concluded when merged with an inter partes reexamination?
When an ex parte reexamination proceeding is merged with an inter partes reexamination, it can be concluded under 37 CFR 1.997(b). According to MPEP 2294, the process involves: Issuing a single reexamination certificate Processing the merged proceeding as set forth in MPEP § 2690 and MPEP § 2694 The MPEP states: “The proceeding may be…
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 reexamination proceedings?
In merged reexamination proceedings, the USPTO simplifies the fee structure. According to MPEP 2686.01: “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 fee, appeal fee, brief fee, oral hearing fee), only a single fee need be paid.”…
Read MoreWhat are the fee requirements in merged reexamination proceedings?
In merged reexamination proceedings, where multiple reexamination files are combined, the fee requirements are simplified. The MPEP states: When a fee is required in a merged proceeding, only a single fee is needed, even though multiple copies of the submissions (one for each file) are required. This means that parties involved in merged proceedings don’t…
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 More