We are fast approaching the ten month milestone (June 24) since the filing of the current reexam. I was reading the MPEP again this morning. Please read through the following and especially pay attention to what I underlined at the bottom. Does it mean that if the examiner has done nothing by August 24 (one year from filing) the OPLA may approve a decision?

2286 Ex Parte Reeexamination and Litigation Proceedings [R-7]

37 CFR 1.565 Concurrent office proceedings which include an ex parte 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.

35 U.S.C. 302 permits a request for ex parte reexamination to be filed "at any time." Requests for ex parte reexamination are frequently filed where the patent for which reexamination is requested is involved in concurrent litigation. The guidelines set forth below will generally govern Office handling of ex parte reexamination requests where there is concurrent litigation in the Federal courts.

I. COURT->ORDERED/< SANCTIONED REEXAMINATION PROCEEDING, LITIGATION STAYED FOR REEXAMINATION, OR EXTENDED PENDENCY OF REEXAMINATION PROCEEDING CONCURRENT WITH LITIGATION

*>Where a< request for ex parte reexamination * indicates (A) that it is filed as a result of >an order by a court or< an agreement by parties to litigation which agreement is sanctioned by a court, or (B) that litigation is stayed for the filing of a reexamination request >, the request< will be taken up by the examiner for decision 6 weeks after the request was filed >, and all aspects of the proceeding will be expedited to the extent possible<. See MPEP § 2241. If reexamination is ordered, the examination following the statement by the patent owner under 37 CFR 1.530 and the reply by the requester under 37 CFR 1.535 will be expedited to the extent possible. Office actions in these reexamination proceedings will normally set a 1-month shortened statutory period for response rather than the 2 months usually set in reexamination proceedings. See MPEP § 2263. **>Response periods< may be extended only upon a >strong< showing of sufficient cause. See MPEP § 2265. >Action on such a proceeding will generally take precedence to any other action taken by the examiner.< See generally In re Vamco Machine and Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed. Cir. 1985); Gould v. Control Laser Corp., 705 F.2d 1340, 217 USPQ 985 (Fed. Cir. 1983); Loffland Bros. Co. v. Mid-Western Energy Corp., 225 USPQ 886 (W.D. Okla. 1985); The Toro Co. v. L.R. Nelson Corp., 223 USPQ 636 (C.D. Ill. 1984); Digital Magnetic Systems, Inc. v. Ansley, 213 USPQ 290 (W.D. Okla. 1982); Raytek, Inc. v. Solfan Systems Inc., 211 USPQ 405 (N.D. Cal. 1981); and Dresser Industries, Inc. v. Ford Motor Co., 211 USPQ 1114 (N.D. Texas 1981).

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. It is to be noted that the statutory requirement for "special dispatch" in reexamination often becomes important, and sometimes critical, in coordinating the concurrent litigation and reexamination proceedings.