United States Patent and Trademark Office OG Notices: 01 March 2005

                    Notice of Changes in Requirement for a
                Substantial New Question of Patentability for a
                       Second or Subsequent Request for
                            Reexamination While an
                    Earlier Filed Reexamination is Pending

A. Summary: The United States Patent and Trademark Office (Office)
revised section 2240 of the Manual of Patent Examining
Procedure (MPEP) in May of 2004 to set forth a new policy when a second
or subsequent request for reexamination is filed while an "earlier
filed reexamination" is pending, and the second or
subsequent request cites only prior art (hereinafter "old art")
which raised a substantial new question of patentability (SNQ) in the
pending reexamination proceeding. See MPEP 2240 (8th ed. 2001)(Rev. 2,
May 2004). Under the new policy, the second or subsequent request for
reexamination will be ordered only if that old prior art raises a
substantial new question of patentability which is different than that
raised in the pending reexamination proceeding. If the old prior art
cited (in the second or subsequent request) raises only the same issues
that were raised to initiate the pending reexamination proceeding, the
second or subsequent request will be denied.
   It is to be noted that reliance on prior art cited in the pending
reexamination (old art) does not preclude the existence of a SNQ that
is based exclusively on that old art. Determinations on whether a SNQ
exists in such an instance shall be based upon a fact-specific inquiry
done on a case-by-case basis. For example, a SNQ may be based solely on
old art where the old art is being presented/viewed in a new light, or
in a different way, as compared with its use in the earlier concluded
examination(s), in view of a material new argument or interpretation
presented in the request. The presentation/viewing of old art in a new
light, or in a different way, is discussed in Ex parte Chicago
Rawhide, 223 USPQ 351 (Bd. Pat. App. & Inter. 1984).

B. Background: A request for ex parte reexamination of a patent pursuant
to 35 U.S.C. 302, and a request for inter partes reexamination of a patent
pursuant to 35 U.S.C. 311, must raise a substantial new question of
patentability (SNQ) in order for a reexamination of the patent to be
initiated. More than one reexamination request may be filed for the
same patent, and a second or subsequent reexamination request for
reexamination of a patent, where a first reexamination proceeding is
pending, has historically been granted based on the same prior art that
raised the SNQ in a pending first reexamination proceeding.
   It has been the Office's experience, however, that both patent owners
and third party requesters have used a second or subsequent
reexamination request (based on the same substantial new question of
patentability initially raised or existing in the pending reexamination
proceeding) to prolong the reexamination proceeding, and in some
instances, to turn it essentially into an inter partes
proceeding. These actions by patent owners and third party requesters
have resulted in multiple reexaminations taking years to conclude, thus
making it extremely difficult for the Office to conclude reexamination
proceedings with "special dispatch" as required by statute (35
U.S.C. 305 for ex parte reexamination, 35 U.S.C. 314
inter partes reexamination). For example, under the prior
practice, a patent owner whose claims are rejected in a pending
reexamination proceeding could repeatedly file multiple ex
parte reexamination requests based on the same substantial new
question of patentability raised, or existing, in the pending
reexamination proceeding. By doing so, the patent owner could keep the
reexamination proceeding pending indefinitely, to delay the issue of a
reexamination certificate canceling the claims of the patent being
reexamined. Additionally, a third party requester could file a second
or subsequent reexamination request, while a first reexamination
proceeding is pending, based on the same substantial new question of
patentability raised, or existing, in the first reexamination
proceeding, in order to address any responses to Office actions made by
the patent owner. This use of a second or subsequent reexamination
request has permitted third party requesters to, in effect, obtain an
inter partes type of reexamination process in an ex
parte reexamination proceeding.
   Moreover, concerns regarding lengthy ex parte reexamination
pendency resulting from multiple reexamination request filings were
raised by witnesses at the Office's Round Table on the Equities of
Inter Partes Reexamination Proceedings held February 17, 2004.

C. Implementation of New Policy: Responsive to these
concerns, the Office revised its policy to be as is now set forth in
the current (May 2004) revision of MPEP 2240, that is: the SNQ
for a second or subsequent request for reexamination must be new and
different than any SNQ that was raised, or existed, during any prior
pending or concluded reexamination proceeding for the patent. This
revised policy is consistent with the statutory mandate of special
dispatch and the intent of the ex parte reexamination
statute (an ex parte reexamination proceeding is not an
inter partes type of reexamination process). Further, 35
U.S.C. 303(a) states that "[w]ithin three months following the
filing of a request for reexamination under the provisions of section
302 of this title, the Director will determine whether a substantial
new question of patentability affecting any claim of the patent
concerned is raised by the request." It is reasonable to interpret
this provision as requiring each request for reexamination to raise its
own substantial new question of patentability as compared not only to
the original prosecution (in the application for the patent) and any
earlier, concluded reexamination proceedings, but to pending
reexamination proceedings as well. To accompany the revision of MPEP
2240, MPEP 2640, which was newly added to the MPEP in May of 2004 to
address inter partes reexamination proceedings, was drafted to implement
this revision of policy for inter partes reexamination proceedings.

D. Transition Procedure: It is noted that, as a
consequence of the changes made to MPEP 2240, a patent owner will
now be prevented from obtaining entry of an amendment and/or evidence
not entered after final rejection in an ex parte
reexamination proceeding by filing another request for reexamination
based on the same substantial question of patentability raised/existing
in the pending reexamination proceeding. In order to provide relief to
the patent owner, the Office plans to propose a revision to the patent
rules to provide for the filing of a request for continued
reexamination (RCR) which would be similar to the request for continued
examination (RCE) practice for applications. If the RCR practice is
implemented, the patent owner, by filing an RCR, could obtain continued
prosecution on the merits in the reexamination proceeding, including
entry of an amendment and/or evidence that was denied entry after a
final rejection in an ex parte reexamination proceeding or
after an action closing prosecution in an inter partes
reexamination proceeding.
   Until these new rules become effective, however, patent owners are
advised to use either: (1) the petition procedure under 37 CFR 1.181
to seek review of a denial of entry of an amendment submitted after
final rejection in an ex parte reexamination proceeding or
after an action closing prosecution in an inter partes
reexamination proceeding; or (2) the petition procedure under 37 CFR
1.182 to seek relief that is not currently provided by an existing
rule, but that would be provided when a new request for continued
reexamination (RCR) practice is in effect.

E. Inquiries: Inquiries regarding this matter may be
directed to Kenneth M. Schor, Senior Legal Advisor, Office of Patent
Legal Administration at telephone: (571) 272-7710.

                                                            JOSEPH J. ROLLA
                                                    Deputy Commissioner for
                                                 Patent Examination Policy