Re-examination is a process in which any person can request a patent re-examined to ensure that the claimed subject matter is patentable. For re-examination, there must be a substantial new question of patentability. In contrast to the opposition system, the re-examination is not time-bound, and it can be requested anytime during the life of the patent enforceability.

The main goal of the re-examination is similar to other revocation proceedings carried out on the administrative stage by the PTO, such as post-furnish opposition or invalidation. The re-examination offers a relatively brief and less expensive opportunity for litigation to reconsider the validity of a granted patent in view of new prior art or on different grounds, as provided within the applicable law to valid a patent inadvertently issued. (you may refer to it here).

Who can request a re-examination of a granted design patent?

Any person may submit a request for ex-parte re-examination under 35 USC 302:

Anyone can request a re-examination of an issued patent by notifying the PTO that a prior art or written publication raises a solid question on the patentability of at least one claim of the issued patent. The person or entity should submit a request for an ex parte re-examination through the Office under § 1.501, unless barred by 35 USC 315(e)(1) or 35 USC 325(e)(1). The fee shall accompany the request for re-examination set in § 1.20(c)(1). 

Further, the only “person” who is barred from submitting a request for ex parte re-examination of a patent according to 35 USC 302 is barred from doing so by the estoppel provisions of AIA 35 USC 315(e)(1) or 35 USC 325(e)(1) based on IPR and PGR, respectively, as soon as the estoppel attaches. The patentee can ask for re-examination, which will be restricted to an ex parte consideration of prior arts or published publications. (you may refer to it here).

The requesting party often has a choice when preparing the request: They can choose to participate in an inter partes re-examination proceeding, which gives them the right to file papers throughout the process, including any appeals; or they can choose to remain above the fray in an ex parte proceeding, where they are generally relegated to observer status after requesting re-examination. 

Which is the appropriate forum for the process?

USPTO is an appropriate forum for the process of re-examination of granted design patents.

  • The ex parte re-examination is carried out in front of a panel of three experienced examiners within a specialised unit of the USPTO, the Central Reexamination Unit (CRU); 
  • The procedure of a new ex parte examination is effectively concluded with the submission of an initial statement by the patentee, which in principle prevents the submission of subsequent evidence and amendments; 
  • Requests for a continuation of the examination (CER) are not available in ex parte retake procedures; and 
  • Extending the time limit for replying to USPTO notification is not permitted by law in ex parte inspections, as in regular inspections, but requires evidence of an important reason.

How is the re-examination conducted?

Re-examination proceedings under 35 USC 305: After submitting the statement and reply furnished under section 304 have expired, re-examination might be carried out according to the processes established for a preliminary examination of the provisions of sections 132 and 133. The patentee might be permitted to propose any modification to the issued patent and a new claim or claims to differentiate the invention as claimed from the published art stated under section 301 or in response to a decision adverse to the patentability criteria of a claimed patent. No proposed amended or new claim broadened the scope of a patent claim might be accepted in re-examination proceedings.

The re-examination proceedings are conducted as mentioned below.

  • All ex parte re-examination proceedings, such as any appeals to the PTAB, may be carried out with special dispatch in the Office. After issuing the ex-parte re-examination order and the expiration of the time for filing any responses, the examination may be carried out according to § 1.104 via 1.116. It will result in the issuance of ex parte re-examination certificates under § 1.570.
  • In an ex parte re-examination proceeding, the patentee may be given at least thirty days to reply to any office action. In response to any rejection, such response can also consist of statements and/or proposed amendments or new claims to present the patent in a condition in which all claims might be patentable if amended as proposed.
  • As mentioned, the time taken for any action by a patentee in an ex parte re-examination proceeding can be prolonged.
  1. Any request for an extension must specify the duration of the extension and be accompanied by the petition fee according to § 1.17 (g). 
  2. Extension request in a third party requested ex parte re-examination must be filed on or earlier than the day on which action by the patentee is due, and the mere submitting of such a request for extension will not impact the extension. Extension request in a third party requested ex parte re-examination will no longer be granted without sufficient cause or for more than a reasonable time. 
  3. Any request for an extension in a patentee requested or officer ordered ex parte re-examination for up to 2 months from the term set in the office action must be filed no later than months from the expiration of the term specified in the office action.
  4. The reply or action needs to be filed in any event before the expiration of the extended duration. However, in no situation may a response or action be filed later than the maximum term set by statute.
  • Suppose the patentee fails to provide a timely and adequate response to an office action or a written statement for a hearing required under Section 1.560 (b). In that case, the ex parte re-examination prosecution will cease, and the officer will proceed to issue a certificate of the conclusion of the re-examination procedure according to § 1.570. 
  • Suppose the patentee reply is not submitted to the Office on time. In such a case, the request may be made in Section 1.137 to reactivate a re-examination process terminated if the delay in reply was unintentional. 
  • After a request for ex parte re-examination has been submitted by a third party, all documents submitted by the patent owner or third party in the re-examination procedure must be served on the other party in the manner provided under Section 1.248.
  • The applicant for a re-examination will receive copies of the Office shares issued during the ex parte re-examination process. The document must reflect the service, or the document may be rejected under such consideration by the PTO. 
  • The active participation of the ex parte re-examination requester ends with the statement according to § 1.535, and no further submissions for the re-examination applicant will be recognised or considered. 
  • Third-party filings filed after the date of the order for ex parte re-examination under Section 1.525 must meet the requirements and will be handled under Section 1.501 (a). 
  • A request in an ex parte re-examination process must be accompanied by the fee set out in Section 1.20 (c) (6), except requests under paragraph (c) of this Section for extension of the response time holder, requests after Paragraph (e) of this Section, accepting a late reply from a patentee, applications under Section 1.78 to accept an involuntarily delayed entitlement to benefits, and applications under Section 1.530 (l) for correction of authorship in an examination procedure.

Once ex parte re-examination is ordered according to 35 USC 304 and the instances for filing any reply to the order have expired, no similarly lively participation with the aid of using a 3rd party celebration re-examination requester is allowed, and no third party submissions can be acknowledged or considered except they are according with 37 CFR 1.510. 

The exam can be performed according to 37 CFR 1.104, 1.105, 1.110-1.113, and 1.116 (35 USC 132 and 133). It could result in the issuance of re-examination certificates below 37 CFR 1.570. The intending shall be performed with special dispatch within the Office pursuant to 35 USC 305. A complete seek will now no longer routinely be made with the aid of using the examiner. The 0.33 party re-examination requester can be sent copies of Office actions, and the patentee should serve responses at the requester. The examiner can consider citations submitted in the patent report before issuing an order for re-examination for the duration of the re-examination. Re-examination will continue even supposing the copy of the order despatched to the patentee is back undelivered.

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.