By Kevin B. Laurence and Matthew C. Phillips of Stoel Rives LLP
Matt Phillips and Kevin Laurence are partners at Stoel Rives LLP. They teach the multi-day course "Patent Reexamination and Reissue Practice" for Patent Resources Group. Discussion regarding this article is welcome at the LinkedIn group "Patent Reexamination Practice."
It is not uncommon for the same patent to be the subject of multiple reexaminations, or at least multiple reexamination requests. The reexaminations may or may not overlap temporally. If overlapping, the proceedings may continue independently or may be merged together. This article discusses how the PTO handles multiple requests for reexamination of the same patent. In a subsequent article, we will discuss the merger or suspension of copending proceedings at the PTO.
WHO MAY FILE A SUBSEQUENT REQUEST FOR REEXAMINATION
A third party who was not the requester in an earlier reexamination can always file a subsequent request for reexamination, whether ex parte or inter partes. When the subsequent requester is the same party that requested an earlier pending ex parte reexamination, the requester can file a subsequent request for reexamination, whether ex parte or inter partes. If, however, the earlier reexamination is inter partes, then the requester may file a subsequent request for an ex parte reexamination, but generally not for inter partes reexamination.1
EACH REQUEST MUST RAISE A SUBSTANTIAL NEW QUESTION OF PATENTABILITY
To be granted, a request for either ex parte reexamination or inter partes reexamination must be based on prior a...