37 C.F.R. § 1.565

Concurrent office proceedings which include an ex parte reexamination proceeding

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(a) In an ex parte reexamination proceeding before the Office, the patent owner must inform the Office of any prior or concurrent proceedings in which the patent is or was involved such as interferences, reissues, ex parte reexaminations, inter partes reexaminations, or litigation and the results of such proceedings. See § 1.985 for notification of prior or concurrent proceedings in an inter partes reexamination proceeding.

(b) If a patent in the process of ex parte reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the reexamination. See § 1.987 for inter partes reexamination proceedings.

(c) If ex parte reexamination is ordered while a prior ex parte reexamination proceeding is pending and prosecution in the prior ex parte reexamination proceeding has not been terminated, the ex parte reexamination proceedings will usually be merged and result in the issuance and publication of a single certificate under § 1.570. For merger of inter partes reexamination proceedings, see § 1.989(a). For merger of ex parte reexamination and inter partes reexamination proceedings, see § 1.989(b).

(d) If a reissue application and an ex parte reexamination proceeding on which an order pursuant to § 1.525 has been mailed are pending concurrently on a patent, a decision will usually be made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an ex parte reexamination proceeding is ordered, the merged examination will be conducted in accordance with §§ 1.171 through 1.179, and the patent owner will be required to place and maintain the same claims in the reissue application and the ex parte reexamination proceeding during the pendency of the merged proceeding. The examiner's actions and responses by the patent owner in a merged proceeding will apply to both the reissue application and the ex parte reexamination proceeding and will be physically entered into both files. Any ex parte reexamination proceeding merged with a reissue application shall be concluded by the grant of the reissued patent. For merger of a reissue application and an inter partes reexamination, see § 1.991.

(e) If a patent in the process of ex parte reexamination is or becomes involved in an interference, the Director may suspend the reexamination or the interference. The Director will not consider a request to suspend an interference unless a motion (§ 41.121(a)(3) of this title) to suspend the interference 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. For concurrent inter partes reexamination and interference of a patent, see § 1.993.

[65 FR 76776, Dec. 7, 2000, as amended at 69 FR 50001, Aug. 12, 2004; 72 FR 18905, Apr. 16, 2007]

Notes of Decisions

Cited in 8 cases, 1981–2013 · leading case: Ethicon, Inc. v. Donald J. Quigg, Commissioner of Patents & Trademarks and the United States Patent & Trademark Office

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Ethicon, Inc. v. Donald J. Quigg, Commissioner of Patents & Trademarks and the United States Patent & Trademark Office (1988) cafc · cites it 4× “” In early September 1987, USSC filed with the PTO a “Petition to Stay Reexamination Proceeding Pursuant to 37 C.F.R. § 1.565 and MPEP § 2286” of the ’591 patent “in deference to an ongoing trial being conducted” in Connecticut.”

Canady v. Erbe Elektromedizin GmbH (2002) dcd · cites it 4× “On June 17, 2002, the PTO merged the second and third accepted requests under 37 C.F.R. § 1.565 . Defs.’ Status Report dated June 17, 2002 (including the PTO’s decision to merge, dated June 17, 2002).”

Richardson-Vicks Inc. v. The Upjohn Company, Defendant/cross-Appellant, and McNeil Inc. And Johnson & Johnson (1997) cafc “Subsequently the two reexaminations were merged into a single reexamination proceeding pursuant to 37 C.F.R. § 1.565 (e). A reexamination certificate was ultimately issued on October 20, 1992.”

Patlex Corporation v. Gerald J. Mossinghoff, Etc. (1985) cafc “See also 37 C.F.R. 1.565(b). Even if PTO discretion to stay reexamination were authorized it could not affect Gould’s situation.”

Premier International Associates LLC v. Hewlett-Packard Co. (2008) txed “989 (allowing merger of multiple inter partes reexaminations); 37 C.F.R. § 1.565 (c) (allowing merger of multiple ex parte reexaminations)).”

Dresser Industries, Inc. v. Ford Motor Co. (1981) txnd “565(b), 37 C.F.R. § 1.565 (b), gives the Commissioner authority to stay reexamination for a postfiled reissue application.”

E.I. DuPont De Nemours & Co. v. Phillips Petroleum Co. (1989) ded “In September of 1987, the patentee petitioned the Patent Office to stay its proceedings, pursuant to 37 C.F.R. 1.565 and § 2286 of The Manual of Patent Examining Procedure (“MPEP”), 9 and in deference to the infringement litigation awaiting a decision.”

Artemi Ltd. v. Safe-Strap Co. (2013) njd “See 37 C.F.R. § 1.565 (d). . Safe-Strap argues, without any citation to authority, that bad faith can be inferred from the delay alone.”

— 37 C.F.R. § 1.565(b) — 2 cases

Ethicon, Inc. v. Donald J. Quigg, Commissioner of Patents & Trademarks and the United States Patent & Trademark Office (1988) cafc “” In early September 1987, USSC filed with the PTO a “Petition to Stay Reexamination Proceeding Pursuant to 37 C.F.R. § 1.565 and MPEP § 2286” of the ’591 patent “in deference to an ongoing trial being conducted” in Connecticut.”

Patlex Corporation v. Gerald J. Mossinghoff, Etc. (1985) cafc “See also 37 C.F.R. 1.565(b). Even if PTO discretion to stay reexamination were authorized it could not affect Gould’s situation.”

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