MPEP 2686.02
Copending Reexamination and Interference Proceedings

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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2686.02    Copending Reexamination and Interference Proceedings [R-11.2013]

37 C.F.R. 1.993 Suspension of concurrent interference and inter partes reexamination proceeding.

If a patent in the process of inter partes reexamination is or becomes involved in an interference or trial before the Patent Trial and Appeal Board, the Director may suspend the inter partes reexamination, interference, or trial. The Director will not consider a request to suspend an interference or trial unless a motion under § 41.121(a)(3) of this title to suspend the interference or trial has been presented to, and denied by, an administrative patent judge and the request is filed within ten (10) days of a decision by an administrative patent judge denying the motion for suspension or such other time as the administrative patent judge may set.

37 C.F.R. 41.8 Mandatory notices.

  • (a) In an appeal brief (§§ 41.37, 41.67, or 41.68 ) or at the initiation of a contested case (§ 41.101 ), and within 20 days of any change during the proceeding, a party must identify:
    • (1) Its real party-in-interest, and
    • (2) Each judicial or administrative proceeding that could affect, or be affected by, the Board proceeding.
  • (b) For contested cases, a party seeking judicial review of a Board proceeding must file a notice with the Board of the judicial review within 20 days of the filing of the complaint or the notice of appeal. The notice to the Board must include a copy of the complaint or notice of appeal. See also §§ 1.301 to1.304 of this title.

37 C.F.R. 41.102 Completion of examination.

Before a contested case is initiated, except as the Board may otherwise authorize, for each involved application and patent:

  • (a) Examination or reexamination must be completed, and
  • (b) There must be at least one claim that:
    • (1) Is patentable but for a judgment in the contested case, and
    • (2) Would be involved in the contested case.

37 C.F.R. 41.103 Jurisdiction over involved files.

The Board acquires jurisdiction over any involved file when the Board initiates a contested case. Other proceedings for the involved file within the Office are suspended except as the Board may order.

A patent being reexamined in an inter partes reexamination proceeding may be involved in an interference proceeding with at least one application, where the patent and the application are claiming the same patentable invention, and at least one of the application’s claims to that invention are patentable to the applicant. See MPEP Chapter 2300.

The general policy of the Office is that a reexamination proceeding will not be delayed, or stayed, because of an interference or the possibility of an interference. The reason for this policy is the requirement of 35 U.S.C. 314(c) that all reexamination proceedings be conducted with "special dispatch" within the Office.

In general, the Office will follow the practice of making the required and necessary decisions in the inter partes reexamination proceeding and, at the same time, going forward with the interference to the extent desirable. (See Shaked v. Taniguchi, 21 USPQ2d 1289 (Bd. Pat. App. & Inter. 1991), where it was pointed out that neither the reexamination nor the interference will ordinarily be stayed where both proceedings are before the Office.) It is to be noted that 37 CFR 41.103 provides the Board with the flexibility to tailor a specific solution to occurrences where reexamination and interference proceedings for the same patent are copending, as such occurrences may arise. Decisions in the interference will take into consideration the status of the reexamination proceeding and what is occurring therein. The decision as to what actions are taken in the interference will, in general, be taken in accordance with normal interference practice.

Although a patent being reexamined via a reexamination proceeding may become involved in an interference proceeding, the reexamination proceeding itself can never be involved in an interference proceeding. See 35 U.S.C. 135(a) which states that "[w]henever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared". The reexamination proceeding is neither an application nor a patent.

I.    ATTEMPTING TO PROVOKE AN INTERFERENCE WITH A PATENT INVOLVED IN A REEXAMINATION PROCEEDING

See MPEP § 2284 for a discussion of the situation where an amendment seeking to provoke an interference with a patent involved in a reexamination proceeding is filed in a pending application. The practice and procedure in this area as to inter partes reexamination proceedings parallels that of ex parte reexamination proceedings.

II.    MOTION TO SUSPEND INTERFERENCE UNDER 37 CFR 41.121(a)(3) PENDING THE OUTCOME OF A REEXAMINATION PROCEEDING

A miscellaneous motion under 37 CFR 41.121(a)(3) to suspend an interference pending the outcome of a reexamination proceeding may be made at any time during the interference by any party thereto. See 37 CFR 41.123(b) for the proper procedure. The motion must be presented to the Administrative Patent Judge (APJ) who will decide the motion based on the particular fact situation. However, suspension is not favored. Normally, no consideration will be given such a motion unless and until a reexamination order is issued, nor will suspension of the interference normally be permitted until after any motions have been disposed of in the interference proceeding. If the motion under 37 CFR 41.121(a)(3) is denied by the APJ, a request to stay the interference may be made to the Director of the USPTO under 37 CFR 1.993. A request to stay an interference under 37 CFR 1.993 will be decided by the Chief Administrative Patent Judge of the Board.

III.    REQUEST FOR REEXAMINATION FILED DURING INTERFERENCE

In view of the provisions of 37 CFR 1.913, "[a]ny person may, at any time during the period of enforceability of a patent" file a request for inter partes reexamination. Under 37 CFR 41.8(a), the patent owner must notify the Board that a request for reexamination was filed within twenty days of receiving notice of the request having been filed. Such requests for reexamination will be processed in the normal manner. No delay, or stay, of the reexamination will occur where the third party requester is not a party to the interference, or where the requester is a party to the interference but does not timely petition for a stay or delay. If the examiner orders reexamination pursuant to 37 CFR 1.931 and subsequently, in the reexamination proceeding, rejects a patent claim corresponding to a count in the interference, the attention of the Board shall be called to the rejection.

IV.    PETITION TO STAY REEXAMINATION PROCEEDING BECAUSE OF INTERFERENCE

Any petition to stay an inter partes reexamination proceeding, because of an interference, which is filed prior to the first Office action in the reexamination proceeding will not be considered, and will be returned to the party submitting the petition, or it will be expunged, if the petition has been scanned into the Office's IFW system prior to its discovery. See 37 CFR 1.939 and MPEP § 2625. The decision returning or expunging such a premature petition will be made of record in the reexamination file. A petition to stay the reexamination proceeding because of the interference may be filed by the patent owner after the first Office action in the reexamination proceeding. If a party to the interference, other than the patent owner, is also a requester of the reexamination, that party may also petition to stay the reexamination proceeding after the first Office action. If the party to the interference other than patent owner is not the reexamination requester, any petition by that party is improper under 37 CFR 1.905 and will not be considered. Any such improper petitions will be returned to the party submitting the same. Premature petitions to stay the reexamination proceedings, i.e., those filed prior to the first Office action in the reexamination proceeding, will be returned by a Legal Advisor of the Office of Patent Legal Administration (OPLA) as premature. Petitions to stay filed subsequent to the date of the first Office action in the reexamination proceeding will be referred to OPLA for decision by a Senior Legal Advisor of that Office. All decisions on the merits of petitions to stay a reexamination proceeding because of an interference will be made in OPLA.

V.    ACTION IN INTERFERENCE FOLLOWING REEXAMINATION

If one or more claims of a patent which is involved in an interference are canceled or amended by the issuance and publication of a reexamination certificate, the Board must be promptly notified.

Upon issuance and publication of the reexamination certificate, the patent owner must notify the Board of such issuance.