2636 Assignment of Reexamination [R-07.2015]
I. EXAMINER ASSIGNMENT OF THE REEXAMINATION PROCEEDING
Except for reexamination requests for design patents, reexamination requests are assigned to the Central Reexamination Unit (CRU) art unit which examines the technology (Chemical, Electrical, Mechanical, etc.) in which the patent to be reexamined is currently classified as an original. In that art unit, the Supervisory Patent Reexamination Specialist (SPRS) assigns the reexamination request to a primary examiner, other than the examiner that originally examined the patent (see "Examiner Assignment Policy" below), who is most familiar with the claimed subject matter of the patent. In an extremely rare situation, where a proceeding is still in a Technology Center (TC) rather than the CRU, the reexamination may be assigned to an assistant examiner if no knowledgeable primary examiner is available. In such an instance a primary examiner must sign all actions, conference all actions with a SPRS or TC Quality Assurance Specialist (QAS) and another examiner, and take responsibility for all actions taken.
A. Examiner Assignment Policy
It is the policy of the Office that the CRU SPRS will assign the reexamination request to an examiner different from the examiner(s) who examined the patent application. Thus, under normal circumstances, the reexamination request will not be assigned to a primary examiner or assistant examiner who was involved in any part of the examination of the patent for which reexamination is requested (e.g., by preparing/signing an action), or was so involved in the examination of the parent of the patent. This would preclude assignment of the request to an examiner who was a conferee in an appeal conference or panel review conference in an earlier concluded examination of the patent (e.g., the application for patent, a reissue, or a prior concluded reexamination proceeding). The conferee is considered to have participated in preparing the Office action which is preceded by the conference.
Exceptions to this general policy include cases where the original examiner is the only examiner with adequate knowledge of the relevant technology to examine the case. In the unusual case where there is a need to assign the request to the original examiner, the assignment must be approved by the CRU Director, and the fact that such approval was given by the CRU Director must be stated (by the examiner) in the decision on the request for reexamination.
It should be noted that while an examiner who examined an earlier concluded reexamination proceeding is generally excluded from assignment of a newly filed reexamination, if the earlier reexamination is still ongoing, the same examiner generally will be assigned the new reexamination.
Copending reissue and reexamination proceeding:
- (1) When a reissue application is pending for a patent, and a reexamination request is filed for the same patent, the reexamination request is generally assigned to an examiner who did not examine the original patent application. If the reexamination request is granted and the reissue and reexamination proceedings are merged (see MPEP § 2686.03), the merged proceeding will be handled by an examiner other than the examiner who examined the original patent application. In that instance, if the examiner who examined the patent application is handling the reissue application, the reissue application would be transferred (reassigned) from that examiner.
- (2) When a reexamination proceeding is pending for a patent, and a reissue application is filed for the same patent:
- (a) Where reexamination has already been ordered (granted) in the reexamination proceeding, the Office of Patent Legal Administration (OPLA) should be notified, as promptly as possible, that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the notification to OPLA (see MPEP § 2686.03). If the reissue and reexamination proceedings are merged, the reissue will generally be assigned to the examiner who would ordinarily handle the reissue application. However, if that examiner was involved in any part of the examination of the patent for which reexamination is requested (e.g., by preparing or signing an action), or was so involved in the examination of the parent application of the patent, a different examiner will be assigned. If the reissue and reexamination proceedings are not merged by OPLA, the decision will provide guidance as to assignment of the reissue proceeding as necessary.
- (b) If reexamination has not yet been ordered (granted) in the reexamination proceeding, a SPRS will ensure that the reissue application is not assigned nor acted on, and the decision on the reexamination request will be made. If reexamination is denied, the reexamination proceeding will be concluded pursuant to MPEP § 2694, and the reissue application assigned in accordance with MPEP § 1440. If reexamination is granted, a first Office action will not accompany the order granting reexamination. The signed order should be (after review by the CRU SPRS) promptly forwarded for mailing. At the same time, OPLA should be notified that the proceedings are ready for consideration of merger. If any of the reexamination file, the reissue application, and the patent file are paper files, they should be hand delivered to OPLA at the time of the notification to OPLA (see MPEP § 2686.03). If the reissue and reexamination proceedings are merged by OPLA, the reissue application will generally be assigned to the examiner who ordinarily handles the reissue application. However, if that examiner was involved in any part of the examination of the patent for which reexamination is requested (e.g., by preparing/signing the action), or was so involved in examination of the parent application of the patent, a different examiner will be assigned. If the reissue and reexamination proceedings are not merged by OPLA, the decision will provide guidance as to assignment of the reissue proceeding as necessary.
B. Consequences of Inadvertent Assignment to an "Original Examiner"
Should a reexamination be inadvertently assigned to an "original examiner" (in a situation where the TC or CRU Director’s approval is not stated in the decision on the request), the patent owner or the third party requester who objects must promptly file a paper alerting (notifying) the Office of this fact. Any paper alerting (notifying) the Office to the assignment to an "original examiner" must be filed within two months of the first Office action or other Office communication indicating the examiner assignment, or reassignment will not be considered. Reassignment of the reexamination to a different examiner will be addressed on a case-by-case basis. In no event will the assignment to the original examiner, by itself, be grounds for vacating any Office decision(s) or action(s) and "restarting" the reexamination.
A situation may arise where a party timely (i.e., within the two months noted above) files a paper alerting (notifying) the Office to the assignment of a reexamination to the "original examiner," but that paper does not have a right of entry under the rules (e.g., where an order granting reexamination was issued by the "original examiner" but a first action on the merits did not accompany the order, the patent owner timely files a paper alerting the Office of the fact that the "original examiner" has been assigned the reexamination proceeding. Pursuant to 37 CFR 1.939(b), that paper does not have a right of entry since a first Office action on the merits has not yet been issued.) In such situations, the Office may waive the rules to the extent that the paper directed to the examiner assignment will be entered and considered.