Reexamination Interview : US PTO Litigation Alert™

What to Know about Petitions for an Interview in Patent Reexamination

Misa Bretschneider | October 3, 2012

First, ex parte reexamination.  Interviews between a patent owner and the examiner on the merits of the proceeding are permitted.  After an interview, a patent owner must provide an interview summary as required by 37 CFR 1.560(b). Under that provision, a patent owner must complete and separately file a written statement on the substance of the interview (and not simply an interview agenda).  This statement must be filed within one month from the date of the interview.

Failing to file a timely statement will result in a termination of the reexamination (37 CFR 1.550(d)) (see Star Scientific, 90/009,372 & 90/009,375).  A patent owner can file a petition to revive the reexamination proceedings for unavoidable or unintentional delay, but this is not optimal because such petitions are sometimes denied and the petitioner might again fail to comply with the procedural requirements of the petition for revival.

What about inter partes reexamination?  Interviews are not permitted in inter partes proceeding (37 CFR 1.955).  Even so, a patent owner can file a petition under 37 CFR 1.183 to waive or suspend 37 CFR 1.955 to permit an interview in the reexamination. Most often, a patent owner files the petition after a requester has withdrawn from the inter partes proceeding (typically when the parties have settled in a parallel litigation).  When a requester has not officially withdrawn from the proceedings, it appears that the petition is rarely granted due to concerns over the substantive rights of the requester.

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