How are second or subsequent reexamination requests handled during a pending reexamination?
When a second or subsequent request for ex parte reexamination is filed under 35 U.S.C. 302 while a first ex parte reexamination is pending, the USPTO considers whether the new request raises a different substantial new question of patentability. The MPEP states:
“If the requester includes in the second or subsequent request prior art which raised a substantial new question in the pending reexamination, reexamination should be ordered only if the prior art cited raises a substantial new question of patentability which is different from that raised in the pending reexamination proceeding.“
If the new request raises the same substantial new question of patentability as the pending reexamination, it will be denied. The decision is based on the claims in effect at the time of the determination (37 CFR 1.515(a)).
In cases where a different substantial new question of patentability is raised for some claims but not others, the request may be granted in part. The second or subsequent requester must independently provide a substantial new question of patentability different from that raised in the pending reexamination for the claims in effect at the time of the determination.
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