The U. S. Patent and Trademark Office (USPTO) now instructs examiners that an ex parte reexamination based on a subsequent concurrent reexamination request which relies on the same prior art as an on going ex parte reexamination should be ordered
"… only if the prior art raises a substantial new question of patentability which is different than that raised in the preceding reexamination. If the prior art raises the same substantial new question of patentability as that raised in the pending reexamination proceedings, the second of subsequent request should be denied." MPEP 2240, 8th Ed., Rev. 2, May 2004, italic emphasis added.
The new position of the USPTO is a major shift in ex parte reexamination practice, in which a previous second concurrent reexamination request based on the same prior art was assured to result in a reexamination order. The previous version of MPEP 2240, explained "If the requester includes in the second or subsequent request prior art which raised a substantial new question in the pending reexamination, reexamination should generally be ordered. This is because the prior art which raised a substantial new question of patentability resulting in an order for reexamination continues to raise a substantial new question of patentability until the pending reexamination is concluded." MPEP 2240, 8th Ed., Rev. 1, Feb. 2003.
Under the prior guidelines, second concurrent ex parte reexaminations were often used by third party requesters as a mechanism to respond to statements by the patent owner during the ex parte reexamination proceedings. By requiring a third party requester to raise a different substantial new question of patentability than previously raised, the change in the USPTO policy may make it difficult for third party requesters in ex parte reexamination to respond to statements by the patent owner.
The USPTO does not explain the reasons behind the policy shift. The USPTO even appears to have defended the policy of allowing "piggyback" reexaminations in responding to comments to rulemaking in December 2003 (pertaining largely to inter partes reexamination rules), explaining that the examiner will simply merge the second proceeding with the first and prepare an office action at the most advanced point possible when the same prior art is relied upon. Fed. Reg. Vol. 68, No. 245, 70996, 71003. Since inter partes reexamination is now available for patents that originated from an application filed after November 29, 1999, the USPTO may be attempting to encourage third party requesters to use inter partes reexaminations over ex parte reexaminations.
Practice Note
A third party requester should carefully consider using an inter partes reexamination proceeding, if available, rather than an ex parte proceeding, particularly when it is anticipated that responding to statements made by the patent owner during the reexamination may be desired. This circumstance may arise, for example, when the reexamination request relies on an obviousness rejection and the patent owner may be able to establish secondary considerations of non-obviousness.
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