The initial response time for the patent owner to have responded has passed. We should be looking for either a non final office action or a notice of intent to issue a reexamination certificate (NIRC). If there is a non final office action and due to the pending litigation, it seems that the response time may be shortened by any of several persons (see 2263).

Corrections welcome.

From MPEP 2262

Current procedure permits the examiner, in the exercise of his or her professional judgment to indi­cate that a discussion with the patent owner’s repre­sentative may result in agreement whereby the reexamination proceeding may be placed in condition for issuing a Notice of Intent to Issue a Reexamina­tion Certificate (NIRC) and that the examiner will telephone the patent owner’s representative within about 2 weeks. Under this practice the patent owner’s representative can be adequately prepared to conduct such a discussion. Any resulting amendment may be made either by the patent owner’s attorney or agent, or by the examiner in an examiner’s amendment. It should be recognized that when extensive amend­ments are necessary, it would be preferable if the amendments were filed by the patent owner’s attorney or agent of record since this will provide the file wrapper with a better record because the amendments would include the patent owner’s arguments for pat­entability as required by 37 CFR 1.111.<

2263Time for Response [R-5]

A shortened statutory period of 2 months will be set for response to Office actions in reexaminations, except *>as follows. Where< the reexamination results from a court order or litigation is stayed for purposes of reexamination, ** the shortened statutory period will be set at 1 month. >In addition, if (A) there is litigation concurrent with an ex parte reexamination proceeding and (B) the reexamination proceeding has been pending for more than one year, the Director or Deputy Director of the Office of Patent Legal Admin­istration (OPLA), Director of the Central Reexamina­tion Unit (CRU), Director of the Technology Center (TC) in which the reexamination is being conducted, or a Senior Legal Advisor of the OPLA, may approve Office actions in such reexamination proceeding set­ting a one-month or thirty days, whichever is longer, shortened statutory period for response rather than the two months usually set in reexamination proceedings. A statement at the end of the Office action – “One month or thirty days, whichever is longer, shortened statutory period approved,” followed by the signature of one of these officials, will designate such approval.< See MPEP § 2286. Note, however, that this 1-month policy does NOT apply to the 2-month period for the filing of a statement under 37 CFR 1.530, which 2-month period is set by 35 U.S.C. 304.

Where a reexamination proceeding has been stayed because of a copending reissue application, and the reissue application is abandoned, all actions in the reexamination after the stay has been removed will set a 1-month shortened statutory period unless a longer period for response is clearly warranted by nature of the examiner’s action; see MPEP § 2285.