[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]
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