Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon
Ninth Edition of the MPEP, Revision 10.2019, Last Revised in June 2020
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2686 Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon [R-07.2015]
37 C.F.R. 1.985 Notification of prior or concurrent proceedings in inter partes reexamination.
- (a) In any inter partes reexamination proceeding, the patent owner shall call the attention of the Office to any prior or concurrent proceedings in which the patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings.
- (b) Notwithstanding any provision of the rules, any person at any time may file a paper in an inter partes reexamination proceeding notifying the Office of a prior or concurrent proceeding in which the same patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings. Such paper must be limited to merely providing notice of the other proceeding without discussion of issues of the current inter partes reexamination proceeding.
It is important for the Office to be aware of any prior or concurrent proceedings in which a patent undergoing inter partes reexamination is or was involved, and any results of such proceedings. In accordance with 37 CFR 1.985, the patent owner is required to provide the Office with information regarding the existence of any such proceedings, and the results thereof, if known. This requirement includes supplemental examination proceedings and reviews before the Patent Trial and Appeal Board in addition to the examples provided in 37 CFR 1.985(a) reproduced above. Ordinarily, while an inter partes reexamination proceeding is pending, third party submissions filed after the date of the order are not entered into the reexamination file or the patent file, unless the third party is a third party reexamination requester. However, in order to ensure a complete file, with updated status information regarding prior or concurrent proceedings regarding the patent under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file, copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in the court from litigations or other proceedings involving the patent. Such decisions include final court decisions (even if the decision is still appealable), decisions to vacate, decisions to remand, and decisions as to the merits of the patent claims. Non-merit decisions on motions such as for a new venue, a new trial/discovery date, or sanctions will not be entered into the patent file, and will be expunged from the patent file by closing the appropriate paper if they were entered before discovery of their nature. Further, papers filed in the court from litigations or other proceedings involving the patent will not be entered into the record (and will be expunged if already entered) if they provide a party’s arguments, such as a memorandum in support of summary judgment. If the argument has an entry right in the reexamination proceeding, it must be submitted via the vehicle (provision(s) of the rules) that provides for that entry right. It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding number and its status. Any submission that is not permitted entry will be returned, expunged, or discarded, at the sole discretion of the Office.
It is to be noted that if the Office, in its sole discretion, deems the volume of the papers filed from litigations or other proceedings to be too extensive/lengthy, the Office may return, expunge or discard, at its sole discretion, all or part of the submission. In such an instance, a party may limit the submission in accordance with what is deemed relevant, and resubmit the papers. Persons making such submissions must limit the submissions to the notification, and must not include further arguments or information. Where a submission is not limited to bare notice of the prior or concurrent proceedings (in which a patent undergoing reexamination is or was involved), the submission will be returned, expunged or discarded by the Office. It is to be understood that highlighting of certain text by underlining, fluorescent marker, etc., goes beyond bare notice of the prior or concurrent proceedings. Any proper submission pursuant to 37 CFR 1.985 will be promptly entered into the record of the reexamination file, and will be considered by the examiner as to its content, when the proceeding comes up for action on the merits. Thus, for example, if the patent owner properly files in a reexamination proceeding, pursuant to 37 CFR 1.985, an enterable paper from the discovery stage of litigation of the patent being reexamined, the paper would be entered into the reexamination file and considered by the examiner, the next time the proceeding comes up for action on the merits. See MPEP § 2686.04 for Office investigation for prior or concurrent litigation.