Piggyback Ex Parte Reexaminations Are Clipped by The USPTO

Mondaq Business Briefing, September, 2004

The U. S. Patent and Trademark Office (USPTO) now instructs examiners that an ex parte reexamination based on a subsequent concurrent reexamination request which relies on the same prior art as an on going ex parte reexamination should be ordered

"... only if the prior art raises a substantial new question of patentability which is different than that raised in the preceding reexamination. If the prior art raises the same substantial new question of patentability as that raised in the pending reexamination proceedings, the second of subsequent request should be denied." MPEP 2240, 8th Ed., Rev. 2, May 2004, italic emphasis added.

The new position of the USPTO is a major shift in ex parte reexamination practice, in which a previous second concurrent...