Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review
Ninth Edition of the MPEP, Revision 10.2019, Last Revised in June 2020
2286.01 Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review [R-07.2015]
The Leahy-Smith America Invents Act amended 35 U.S.C. 315(d) and added 35 U.S.C. 325(d) to provide that, during the pendency of an inter partes review, post grant review or covered business method review ("PTAB Review Proceeding"), if another proceeding (e.g., an ex parte reexamination proceeding) or matter involving the patent is before the Office, the Director may determine the manner in which the PTAB Review Proceeding and the other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of such matter or proceeding. If an examiner becomes aware of a PTAB Review Proceeding for the same patent that is being reexamined, the ex parte reexamination proceeding must be referred to the examiner’s SPRS. The SPRS will coordinate with the PTAB before taking any action on the reexamination proceeding.
The existence of a PTAB Review Proceeding does not change the fact that any reexamination request must, by statute, be decided (a grant or a denial) within three months of its filing date.