Can a patent owner or third party requester petition to vacate an order granting reexamination?
Generally, neither the patent owner nor the third party requester can petition to vacate an order granting reexamination based on the substantive determination of a substantial new question of patentability (SNQ) or reasonable likelihood of prevailing (RLP).
As stated in MPEP 2646:
“A substantive determination by the Director of the Office to institute reexamination pursuant to a finding that the prior art patents or printed publications raise a substantial new question of patentability is not subject to review by petition or otherwise.”
However, a petition under 37 CFR 1.181 may be filed to vacate a reexamination order in rare circumstances where no discretion to grant a request for reexamination exists. These include situations where:
- The reexamination order is not based on prior art patents or printed publications
- Reexamination is prohibited under 37 CFR 1.907
- All claims of the patent were held invalid by a final court decision
- Reexamination was ordered for the wrong patent
- Reexamination was ordered based on a duplicate request
Such petitions are rare and will only be granted if the Office acted in “brazen defiance” of its statutory authority in granting the reexamination order.
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