It is quite common that a party hoping to enforce a patent will discover that some important prior art was not cited during prosecution, either because the inventor did not know of the reference or because it was not considered important at that time. However, it is becoming increasingly common to request the Patent Office to take a second look at the patent before the assignee tries to enforce it against infringers. The second look comes either through a reexamination or a reissue proceeding.
The Patent Office will only reexamine a patent if there is a "substantial new question of patentability" that warrants a second look. Now, the PTO has released new rules for the case where a second or subsequent request for reexamination is filed while the earlier filed reexamination is still pending. According to the new rules, the substantial new question (SNQ) for a second or subsequent request for reexamination must be new and different than any SNQ that was raised, or existed, during any prior pending or concluded reexamination proceeding for the patent.
According to the Office, the rule change is needed to eliminate the practice of filing additional reexamination requests simply for the purpose of prolonging the examination proceedings. In addition, multiple filings of reexamination requests for the same SNQ can turn into a de facto inter partes proceeding.
These actions by patent owners and third party requesters have resulted in multiple reexaminations taking years to conclude, thus making it extremely difficult for the Office to conclude reexamination proceedings with "special dispatch" as required by statute (35 U.S.C. 305 for ex parte reexamination, 35 U.S.C. 314 inter partes reexamination).
RCR: PTO governance is always a give and take process. So, rather than file a second reexamination request based on the same SNQ, the Office is planning to allow the patent owner to file a "request for continued reexamination" or RCR.
“[T]he patent owner, by filing an RCR, could obtain continued prosecution on the merits in the reexamination proceeding, including entry of an amendment and/or evidence that was denied entry after a final rejection in an ex parte reexamination proceeding or after an action closing prosecution in an inter partes reexamination proceeding.”
Because the rules have not yet been implemented, “patent owners are advised to use either: (1) the petition procedure under 37 CFR § 1.181 to seek review of a denial of entry of an amendment . . . ; or (2) the petition procedure under 37 CFR § 1.182 to seek relief that is not currently provided by an existing rule, but that would be provided when a new request for continued reexamination (RCR) practice is in effect.
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