[Federal Register Volume 84, Number 77 (Monday, April 22, 2019)]
[Notices]
[Pages 16654-16658]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-08022]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2019-0008]


Notice Regarding Options for Amendments by Patent Owner Through 
Reissue or Reexamination During a Pending AIA Trial Proceeding (April 
2019)

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (``USPTO'' or 
``Office'') provides notice of information regarding existing Office 
practice as it pertains to reissue and reexamination procedures for 
amending claims available to patent owner during the pendency of a 
trial proceeding under the America Invents Act (``AIA'') involving the 
same patent. On October 29, 2018, the Office published a notice 
requesting comments on proposed modifications to current motion to 
amend (``MTA'') practice and procedures in AIA trial proceedings. In

[[Page 16655]]

response to that notice, the Office received a number of comments and 
questions requesting clarification regarding existing reissue and 
reexamination procedures at the Office available while an AIA trial 
proceeding, including any appeal, involving the same patent is pending. 
In response to those comments and questions, this notice provides a 
summary of current practice regarding reissue and reexamination options 
in which patent owners may amend claims before and after the Patent 
Trial and Appeal Board (``PTAB'' or ``Board'') issues a final written 
decision in an AIA trial proceeding. This notice also provides summary 
information about factors the Office currently considers when 
determining whether to stay or suspend a reissue proceeding, or stay a 
reexamination, that involves a patent involved in an AIA proceeding, 
and also when and whether to lift such a stay or suspension.

FOR FURTHER INFORMATION CONTACT: Rae Lynn P. Guest, Lead Administrative 
Patent Judge by telephone at (571) 272-9797 or Stephen Stein, Managing 
Quality Assurance Specialist, Central Reexamination Unit at (571) 272-
1544.

SUPPLEMENTARY INFORMATION: 

I. Background

    On October 29, 2018, the Office published a request for comments 
(``RFC'') on a proposed procedure for motions to amend filed in inter 
partes reviews, post-grant reviews, and covered business method patent 
reviews (collectively AIA trials) before the PTAB. See Request for 
Comments on MTA Practice and Procedures in Trial Proceedings Under the 
America Invents Act Before the Patent Trial and Appeal Board, 83 FR 
54319 (Oct. 29, 2018) (hereinafter RFC or MTA RFC). The Office received 
49 comments in response to this RFC as of December 21, 2018 (the 
closing date for comments). See Comments on Motion to Amend Practice 
and Procedures in AIA Trials, U.S. Patent & Trademark Office, https://go.usa.gov/xEXS2 (comments received by December 21, 2018, in response 
to the RFC) (last visited Feb. 8, 2019) (hereinafter PTAB RFC Comments 
website). On March 15, 2019, the Office published a notice of a pilot 
program for MTA practice and procedures in AIA trial proceedings before 
the Board. See Notice Regarding a New Pilot Program Concerning Motion 
to Amend Practice and Procedures in Trial Proceedings under the America 
Invents Act before the Patent Trial and Appeal Board, 84 FR 9497 (March 
15, 2019). In addition to the comments addressed in the MTA program 
notice, the Office received a number of comments and questions relating 
to reissue or reexamination as an alternative vehicle for claim 
amendments. The comments included requests for clarification regarding 
existing reissue and reexamination procedures at the Office.
    In response to those comments and questions, this notice provides a 
summary of various pertinent practices regarding existing Office 
procedures that apply to reissue and reexamination, including after a 
petitioner files an AIA petition challenging claims of the same patent, 
after the Board institutes a trial, and after the Board issues a final 
written decision. This notice also provides summary information about 
factors the Office currently considers when determining whether to stay 
or suspend a reissue proceeding, or stay a reexamination proceeding, 
that involves a patent at issue in an AIA proceeding, and when and 
whether to lift such a stay or suspension.
    This notice is only meant to summarize existing practice, and not 
to amend, supersede, or otherwise alter it. This notice should not be 
cited in papers submitted to the Office. Instead, applicants, parties, 
and the public should consult relevant statutes, regulations, case law, 
and the Office's Manual of Patent Examining Procedure (MPEP) for a full 
assessment of the issues, and for sources of citations in papers 
submitted to the Office.

II. Options for Amendments Through Reissue or Reexamination

    The Office will consider a reissue application or a request for 
reexamination any time before, but not after, either: (1) The Office 
issues a certificate that cancels all claims of a patent, e.g., a trial 
certificate in an AIA trial proceeding, or (2) the U.S. Court of 
Appeals for the Federal Circuit (``Federal Circuit'') issues a mandate 
in relation to a decision that finds all claims of a patent are invalid 
or unpatentable. The Office will not issue a trial certificate relating 
to a patent at issue in an AIA proceeding until after either: (i) The 
deadline for the filing of a notice of appeal to the Federal Circuit 
under 35 U.S.C. 142 has passed (i.e., 63 days after the date of a final 
written decision or, if a request is timely filed, 63 days after the 
date of a decision on a request for rehearing relating to the final 
written decision) (37 CFR 90.3); or (ii) all decisions or 
determinations in relation to an appeal to the Federal Circuit 
regarding the patent are finally resolved.
    Thus, patent owners may avail themselves of a reissue application 
or a request for reexamination before, during, or after an AIA trial 
proceeding results in a final written decision, as long as the 
application or request is timely filed as discussed above (i.e., before 
the Office issues a certificate that cancels all relevant claims, or 
before the Federal Circuit issues a relevant mandate, as 
applicable).\1\ For example, a patent owner may file a reissue 
application or a request for reexamination within 63 days of a final 
written decision regarding the patent at issue. Actions taken by the 
Office in response to such an application or request will depend on the 
timing of the filing and other relevant facts and issues, as explained 
in further detail below.
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    \1\ If a certificate issues cancelling all of the claims of the 
patent, see MPEP 1449.01 for guidance on further prosecution of a 
reissue application, or MPEP 2286 (IV) for guidance on further 
prosecution of a reexamination proceeding.
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Reissue

    Under the current statutory scheme, a patent owner may file a 
reissue application to amend claims before, during, or after an AIA 
trial proceeding concludes with a final written decision, as discussed 
above. In particular, although 35 U.S.C. 251 requires an ``error,'' 
both the Office and the Federal Circuit have recognized that the error 
requirement is satisfied by the patent owner's failure to previously 
present narrower claims. See In re Tanaka, 640 F.3d 1246, 1251 (Fed. 
Cir. 2011); MPEP 1402(I). In other words, no admissions as to the 
patentability of original claims are required in a reissue application, 
and the oath accompanying a reissue application may include a statement 
about the error requirement related to the original patent's failure to 
earlier present narrower claims.\2\ A reissue then proceeds through 
examination in much the same way as an application for a patent under 
original examination. 35 U.S.C. 251(c).
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    \2\ See MPEP 1414(II) for guidance on the specificity in 
identification of the error that must be provided in the reissue 
declaration.
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    As stated in 37 CFR 1.178(a), an ``application for reissue of a 
patent shall constitute an offer to surrender that patent, and the 
surrender shall take effect upon reissue of the patent.'' A patent 
owner may abandon a reissue application at any time before reissue of 
the patent, for example, after obtaining a favorable result in a final 
written decision in an AIA proceeding or on appeal. Before reissuance 
of a patent, the original patent is not surrendered and remains in 
effect.\3\ As discussed

[[Page 16656]]

above, a reissue application must be filed before the issuance of a 
trial certificate that cancels all claims of a patent in an AIA trial 
proceeding or before the Federal Circuit issues a mandate in relation 
to a decision that determines or affirms that all claims of a patent 
are invalid or unpatentable. See MPEP 1449.01.
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    \3\ Cf. MPEP 1460 (``In the situation where multiple reissue 
applications are filed, the original patent is surrendered when at 
least one reissued patent has been granted and there are no pending 
applications for reissue of the original patent.''); 35 U.S.C. 
251(b); 37 CFR 1.177; MPEP 1451.
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    A reissue proceeding involves expedited prosecution. Under 37 CFR 
1.176, ``[a]pplications for reissue will be acted on by the examiner in 
advance of other applications,'' and, as stated in MPEP 708.01, 
``[r]eissue applications, particularly those involved in stayed 
litigation, should be given priority.'' Further, under MPEP 1442, 
reissue applications have ``special status'' and ``will be taken up for 
action ahead of other `special' applications.'' The Office may stay 
examination of a reissue application, however, pending a final written 
decision in an AIA trial proceeding addressing the same patent, as 
discussed in more detail below.
    Office procedures provide for third party notice (by announcement 
of the reissue application in the Official Gazette, see MPEP 1430) and 
a (limited) opportunity for a third party to be heard (by filing a 
protest, see MPEP 1441.01). In addition, any 35 U.S.C. 315(b) bar 
triggered by service of a complaint alleging infringement of the 
original patent may not apply to the reissued patent. See Eizo Corp. v. 
Barco N.V., Case IPR2014-00358, Paper 21 at 7-8 (PTAB July 14, 2015); 
cf. Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1336-37 
(Fed. Cir. 2018) (rejecting petitioners' effort to deem a reexamined 
patent a ``new patent'' for the purposes of 35 U.S.C. 315(b), noting 
that ```[u]nlike reissue, reexamination does not result in the 
surrender of the original patent and the issuance of a new patent''') 
(quoting Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 
1341-42 (Fed. Cir. 2012)).

Ex Parte Reexamination

    A patent owner also may seek to amend its claims by filing a 
request for ex parte reexamination before, during, or after an AIA 
trial proceeding concludes with a final written decision, as discussed 
above. Reexamination presents considerations, however, not present with 
regard to reissue applications. Of particular note, under 35 U.S.C. 
303, the Director is required to determine whether a request for 
reexamination raises ``a substantial new question [SNQ] of 
patentability affecting any claim of the patent concerned.''
    An SNQ is not raised if the ``question of patentability has already 
been . . . decided in an earlier concluded examination or review of the 
patent by the Office'' (MPEP 2242(I)). Thus, an SNQ for reexamination 
cannot be a question raised in a ground already decided in a final 
written decision. In re Swanson, 540 F.3d 1368, 1377 (Fed. Cir. 2008) 
(quoting H.R. Rep. No. 96-1307(I), at 6466 (1980)) (the SNQ requirement 
bars ``reconsideration of any argument already decided by the office, 
whether during the original examination or an earlier reexamination''); 
accord id. at 1380. Thus, after the Board issues a final written 
decision on the patent in an AIA proceeding, an SNQ in a later-filed 
request for reexamination on that patent must differ from any question 
raised in a ground addressed in a final written decision.
    In addition, current Office interpretation requires that the 
``substantial new question of patentability [is] established for the 
existing claims in the patent in order to grant reexamination'' (MPEP 
2242(I)) and that the reexamination ``request should be decided on the 
wording of the patent claims in effect at that time (without any 
proposed amendments)'' (MPEP 2221). Thus, an SNQ cannot be established 
based on new questions raised in relation to amended or new claims 
proposed during reexamination. See also 35 U.S.C. 303 (requiring the 
SNQ affect ``any claim of the patent''). Once an SNQ has been 
established for the original claims in a reexamination proceeding, 
however, an SNQ is not required for examination of amended or new 
claims.
    On the other hand, prior to the issuance of a final written 
decision, an SNQ may be established based on a question raised in a 
ground presented in an AIA petition. See MPEP 2242(I).\4\ If the 
Central Reexamination Unit (CRU) grants a reexamination request, 
however, the Office may stay the reexamination pending a final written 
decision in an AIA trial proceeding addressing the same patent, as 
discussed in more detail below.
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    \4\ MPEP 2242(I) provides (emphasis in original and added):
    If the prior art patents and printed publications raise a 
substantial question of patentability of at least one claim of the 
patent, then a substantial new question of patentability as to the 
claim is present, unless the same question of patentability has 
already been: . . . (B) decided in an earlier concluded examination 
or review of the patent by the Office. . . .
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    In contrast to reissue, a reexamination results in the issuance of 
a certificate in the original patent, rather than the issuance of a new 
patent. Therefore, the 35 U.S.C. 315(b) bar triggered by service of a 
complaint alleging infringement of the original patent applies to a 
reexamined patent, even if the reexamination involves amended claims. 
See Click-To-Call Techs., 899 F.3d at 1336-37 (rejecting petitioners' 
effort to deem a reexamined patent a ``new patent'' for the purposes of 
35 U.S.C. 315(b)); BioDelivery Sciences Int'l, Inc. v. MonoSol Rx, LLC, 
Case IPR2013-00315, Paper 31 at 3-5 (PTAB Nov. 13, 2013).
    Also in contrast to a reissue proceeding, which may address all 
statutory requirements relating to patentability (i.e., 35 U.S.C. 101, 
102, 103, 112), a reexamination proceeding generally addresses only 
issues relating to 35 U.S.C. 102 and 103, and 35 U.S.C. 112 under 
limited circumstances (i.e., only as raised by newly added subject 
matter in an amendment). In addition, a reexamination proceeding must 
be based on prior art consisting of patents and printed publications 
(35 U.S.C. 301, 302). For example, a reexamination proceeding does not 
address issues involving public use or sale.

Considerations for When a Parallel Office Proceeding Will Be Stayed or 
Suspended

    This notice provides additional information as to how the Office 
may handle the imposition of a stay or the lifting of a stay in a 
reissue or reexamination proceeding (``parallel Office proceeding'') in 
view of a co-pending AIA proceeding involving the same patent. Any 
parallel Office proceeding, however, will be evaluated based on its 
particular facts and circumstances.
    The Director has authority to determine the approach with regard to 
a possible stay of a reissue or ex parte reexamination proceeding. 35 
U.S.C. 315(d), 325(d). The Director has previously authorized the Board 
to enter an order to effect a stay, transfer, consolidation, or 
termination of parallel Office proceedings involving the same patent 
during the pendency of an AIA trial proceeding. 37 CFR 42.3(a), 
42.122(a), 42.222(a). Under that authority, the Board ordinarily will 
stay a parallel Office proceeding where good cause exists. Good cause 
for staying a case may exist if, for example, an on-going AIA 
proceeding, which is subject to statutory deadlines, is addressing the 
same or overlapping claims of a patent at issue in a parallel Office 
proceeding.
    Parties to an AIA trial proceeding may request authorization to 
file motions to stay or motions to lift stays at any time

[[Page 16657]]

during the pendency of the AIA proceeding. The Board typically will 
consider motions to stay a concurrent Office proceeding (or may impose 
a stay sua sponte) any time after institution of an AIA trial 
proceeding and before the filing of a notice of appeal or the deadline 
for filing a notice of an appeal to the Federal Circuit under 35 U.S.C. 
142 has passed (i.e., 63 days after the date of a final written 
decision or, if a request is timely filed, 63 days after the date of a 
decision on a request for rehearing relating to the final written 
decision). See 37 CFR 42.3(a), 42.122(a), 42.222(a), 90.3.
    In deciding whether to grant a stay of a parallel proceeding 
involving the same patent within the Office, the Office (typically the 
Board) may consider a number of factors, including, but not limited to:
     Whether the claims challenged in the AIA proceeding are 
the same as or depend directly or indirectly from claims at issue in 
the concurrent parallel Office proceeding;
     Whether the same grounds of unpatentability or the same 
prior art are at issue in both proceedings;
     Whether the concurrent parallel Office proceeding will 
duplicate efforts within the Office;
     Whether the concurrent parallel Office proceeding could 
result in inconsistent results between proceedings (e.g., whether 
substantially similar issues are presented in the concurrent parallel 
Office proceeding);
     Whether amending the claim scope in one proceeding would 
affect the claim scope in another proceeding;
     The respective timeline and stage of each proceeding;
     The statutory deadlines of the respective proceedings;
     Whether a decision in one proceeding would likely simplify 
issues in the concurrent parallel Office proceeding or render it moot.

See, e.g., CBS Interactive Inc. v. Helferich Patent Licensing, LLC., 
Case IPR2013-00033, Paper 15 (PTAB Nov. 6, 2012) (order to stay a 
concurrent reexamination); Stride Rite Children's Group, LLC v. Shoes 
By Firebug LLC, Case IPR2017-01810, Paper 23 (PTAB Jul. 12, 2018) 
(order to stay a concurrent reissue). See also, e.g., Arctic Cat, Inc. 
v. Polaris Indus., Inc., Case IPR2015-01781, Paper 78 (PTAB Sept. 25, 
2018) (denying stay because of meaningful distinctions between issues 
raised in a reexamination and an IPR); Acrux DDS Pty, Ltd. v. Kaken 
Pharma. Co. Ltd., Case IPR2017-00190, Paper 11 (PTAB Mar. 1, 2017) 
(denying stay requested prior to trial institution); Mastercard Int'l 
Inc. v. D'Agostino, Case IPR2014-00543, Paper 14 (PTAB October 2, 2014) 
(denying stay because a Notice of Intent to Issue a Reexamination 
Certification already had been entered in the co-pending 
reexamination); cf. Ultratec, Inc. v. Sorenson Comm'ns, Inc., No. 13-
cv-346-bbc, 2013 WL 6044407, at *2-3 (W.D. Wisc. Nov. 14, 2013) 
(assessing some of the same factors in determining whether to stay 
district court litigation in light of pending inter partes review 
petitions).
    The Board also may deny institution under 35 U.S.C. 325(d) of a 
requested AIA trial proceeding if a parallel Office proceeding, for 
example, is in a more advanced stage and involves overlapping issues 
with the proposed AIA trial proceeding.
    The Patents Organization (which are the offices under the 
Commissioner for Patents, hereinafter ``Patents'') also may decide to 
suspend proceedings in a parallel reissue application either sua sponte 
or on request of the applicant under 37 CFR 1.103. See also MPEP 
1442.02. Patents typically will consider similar factors to those 
discussed above but will weigh them in view of relevant facts and 
circumstances at the time suspension is being considered.
    For example, action in a reissue application typically will be 
suspended (either sua sponte or if requested by petition) when there is 
concurrent litigation or a pending trial before the PTAB. MPEP 1442.02. 
However, the Office may or may not suspend a reissue application, using 
its discretion based upon the facts of the situation, for example if it 
is evident to the CRU examiner, or the applicant indicates, that ``the 
. . . trial before the PTAB has been terminated''; ``there are no 
significant overlapping issues between the application and the 
litigation or pending trial before the PTAB''; or ``it is applicant's 
desire that the application be examined at that time.'' Id.

Considerations for Lifting a Stay of Parallel Office Proceedings

    In deciding whether to lift a stay of a parallel proceeding 
involving the same patent within the Office, the Board may consider a 
number of factors, including, but not limited to:
     Whether factors considered when ordering the stay (i.e., 
factors indicating good cause) have changed from when the stay was 
ordered;
     Whether the patent owner has requested adverse judgment or 
canceled all claims at issue in the AIA trial proceeding;
     Whether the patent owner is requesting rehearing or 
appealing the final written decision in the AIA trial proceeding to the 
Federal Circuit;
     Whether the patent owner agrees to abide by the estoppel 
provisions set forth in 37 CFR 42.73(d)(3) (i.e., not obtain a claim 
patentably indistinct from a claim cancelled or found unpatentable 
during an AIA trial proceeding); and
     Whether lifting the stay would be in the interests of the 
efficient administration of the Office and integrity of the patent 
system (cf. 35 U.S.C. 316(b)).

See, e.g., Sienna Biopharmaceuticals, Inc. v. William Marsh Rice Univ., 
Case IPR2017-00045, Paper 54 (PTAB Jun. 4, 2018) (lifting a stay of an 
ex parte reexamination); see also, e.g., Unified Patents Inc. v. 
Heslop, Case IPR2016-01464, Paper 14 (PTAB Feb. 23, 2017) (denying 
request to lift stay where similar, if not identical, issues in the 
inter partes review would needlessly duplicate efforts within the 
Office); CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case 
IPR2013-00033, Paper 19 (PTAB Dec. 20, 2012) (denying request to lift 
stay due to overlapping issues and the conduct of parallel proceedings 
would burden the Office and the parties). Patents may consider similar 
factors when determining whether to lift a suspension of a reissue 
proceeding.
    When ordering the stay of a parallel Office proceeding, the Board 
generally indicates that the stay will remain in place ``pending the 
termination or completion of the instant proceeding.'' Thus, absent a 
motion to lift the stay, a stay typically will remain in place until at 
least after the deadline for the filing of a notice of an appeal to the 
Federal Circuit under 35 U.S.C. 142 has passed. The issuance of a trial 
certificate signifies the completion of a trial proceeding and the end 
of the Board's jurisdiction, and thus automatically lifts a stay 
entered with the language above.
    If a patent owner files a motion to lift a stay of a parallel 
Office proceeding after the Board issues a final written decision (and 
after any requests for rehearing are resolved, if applicable), the 
Board typically will lift the stay, absent reasons not to do so, e.g., 
in view of factors as discussed above. For example, the Board typically 
will lift the stay of a parallel Office proceeding if the patent owner 
proposes amendments in that proceeding in a meaningful way not 
previously considered by the Office. Meaningful amendments may include 
those that narrow the scope of claims considered in an AIA proceeding 
or otherwise attempt to resolve issues identified in the final written 
decision.

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Additional Considerations for Lifting a Suspension of a Reissue 
Proceeding

    Non-exhaustive factors considered by the Office when determining 
whether the Board will lift a stay, or Patents will lift a suspension, 
of a parallel reissue application are discussed above. Further 
information specific to reissue proceedings are provided below.
    After a final written decision issues in an AIA proceeding (and 
after any requests for rehearing are resolved, if applicable), if 
requested by the patent owner, Patents may lift a suspension of or 
otherwise decide to proceed with, i.e., not suspend, a related reissue 
proceeding while an appeal to the Federal Circuit regarding the final 
written decision is pending. For example, Patents may lift a suspension 
if the reissue application attempts to (1) resolve issues with the 
original or proposed substitute claims identified in the final written 
decision (e.g., amends the claims in a meaningful way not previously 
considered by the Office, also taking into account estoppel provisions 
set forth in 37 CFR 42.73(d)(3)), if applicable; or (2) correct an 
unrelated issue with the patent (e.g., correction of a priority claim, 
inventorship, or a drawing). Otherwise, Patents generally will not lift 
a suspension or proceed with prosecution of a reissue application after 
the Board issues a final written decision and while a Federal Circuit 
appeal of that decision is ongoing.
    If a Federal Circuit appeal of a final written decision in an AIA 
trial remains ongoing when allowable subject matter is identified in 
the reissue application, the Office typically will not pass that 
application to allowance until the Federal Circuit appeal concludes. In 
that situation, after an appeal to the Federal Circuit concludes, a 
patent owner may confer with the examiner and decide how to proceed 
with the reissue application (e.g., proceed to issuance, file a request 
for continued examination (``RCE'') for further amendments/prosecution, 
or abandon the reissue application). The examiner also may need to 
reevaluate the status of allowable subject matter in view of a decision 
by the Federal Circuit.
    As long as patent owner files the reissue application in a timely 
manner as discussed above, and raises issues different than those 
already considered in the AIA proceeding (e.g., amendments meaningfully 
different than those in a previously presented motion to amend), the 
Office typically will consider the reissue application (subject to 
possible considerations for suspension discussed above).

Additional Considerations for Lifting a Stay of an Ex Parte 
Reexamination

    Non-exhaustive factors considered by the Board when determining 
whether to lift a stay of a parallel reexamination are discussed 
earlier. As noted previously, under certain circumstances, the Office 
will proceed with a reexamination after the Board issues a final 
written decision relating to the same patent.
    Unlike reissue applications, patent owners do not have the option 
to abandon ex parte reexamination applications. Once started, 
reexaminations proceed with special dispatch to completion. See 35 
U.S.C. 305. Thus, after the Office determines that it is appropriate to 
lift a stay, or that a stay is not appropriate, a reexamination 
typically will continue to completion, notwithstanding a Federal 
Circuit appeal of a final written decision on the same patent.
    If the Office identifies allowable subject matter in a 
reexamination proceeding, or after conclusion of a reexamination 
determining that some or all claims of a patent are unpatentable, the 
Office typically will issue a notice of intent to issue a reexamination 
certificate (``NIRC'') and reexamination certificate even if a Federal 
Circuit appeal remains ongoing, unless the patent owner timely files a 
notice of appeal in the ex parte reexamination proceeding. A patent 
owner who is dissatisfied with an examiner's decision to reject claims 
in an ex parte reexamination proceeding may appeal the final rejection 
of any claim to the Board by filing a notice of appeal within the 
required time. See MPEP 2273, 2687; 35 U.S.C. 134. In order to ensure 
that the reexamination certificate does not cancel original patent 
claims that are separately on appeal at the Federal Circuit, the patent 
owner must timely file an appeal in the reexamination proceeding of any 
final rejection of those original claims.

    Dated: April 16, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2019-08022 Filed 4-19-19; 8:45 am]
 BILLING CODE 3510-16-P