When can prosecution be reopened after a Board decision in inter partes reexamination?

Reopening prosecution after a Board decision in inter partes reexamination is a rare occurrence. According to MPEP 2682:

Proceedings which have been decided by the Board will not be reopened or reconsidered by the primary examiner, unless the provisions of 37 CFR 41.77 apply, or the written consent of the Director of the USPTO is obtained for the consideration of matters not already adjudicated, where sufficient cause has been shown.

Reopening prosecution typically requires one of the following:

• The case falls under the provisions of 37 CFR 41.77 (e.g., after a new ground of rejection by the Board)
• Written consent from the Director of the USPTO for matters not already adjudicated
• Written consent from the CRU Director in cases where the examiner concludes that a decision as to patentability made in the RAN should be changed after a remand from the Board

The decision to reopen prosecution is made to ensure that parties adversely affected by a change in the examiner’s position have an opportunity to respond.

To learn more:

• reopening prosecution
• Board decision
• inter partes reexamination
• USPTO Director consent
• CRU Director consent