By Kevin B. Laurence and Matthew C. Phillips of Stoel Rives LLP
Kevin Laurence and Matt Phillips 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.”
Merger can be an important strategic tool during reexamination. This article discusses the PTO's process for deciding whether to merge multiple copending reexamination proceedings for the same patent or to suspend one of the proceedings. The article also describes the key unique procedures employed in merged reexamination proceedings.
Wait for Sua Sponte Decision or File Petition?
The PTO often makes the merger decision sua sponte and advises that it is not necessary to petition for merger.1 The copending proceedings are automatically brought to the attention of the PTO as a result of the requirement that parties involved in a reexamination proceeding inform the PTO about the existence of another PTO proceeding, such as a pending reexamination, by way of a Notice of Concurrent Proceedings.2 Such a notice should be filed with the request for the subsequent reexamination.
Instead of waiting for the PTO to sua sponte merge reexamination proceedings, however, the patent owner or the requester may file a petition under 37 C.F.R. за1.182 to merge multiple reexamination proceedings. Filing a petition provides an opportunity to present issues from the petitioner's perspective and to select the timing of the PTO's ...