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Manual of Patent Examining Procedure - MPEP2200 Citation of Prior Art and Ex Parte Reexamination of Patents2233 Processing in Technology CenterThe working groups in the Technology Centers (TCs) have designated the legal instrument examiners to act as reexamination clerks, as part of their assigned duties, and thus to perform those clerical duties and responsibilities in the groups which are unique to reexamination. The TC Special Program Examiners (SPREs) and Paralegal Specialists have the responsibility to oversee clerical processing and serve as a resource for questions. I. FEESUnder reexamination, there are fees for the request (37 CFR 1.20(c)(1)), for addition of claims (excess claims fees under 37 CFR 1.20(c)(3) and (c)(4)), for an extension of time under 37 CFR 1.550(c), and for any appeal, brief, and oral hearing fees under 37 CFR 41.20(b). No fee is required for issue of the reexamination certificate . Any petitions filed under 37 CFR 1.137 or 37 CFR 1.182 or 1.183 relating to a reexamination proceeding require fees ( 37 CFR 1.17(f ), (l) and (m)). Small entity reductions are available to the patent owner for the 37 CFR 1.137 petition fee, excess claim fees, appeal, brief, and oral hearing fees. Small entity reductions in fees are not available for the reexamination filing fee , extension of time fees, nor for petition fees for petitions filed under 37 CFR 1.182 and 1.183. When a fee is required in a merged proceeding (see MPEP § 2283 and § 2285), only a single fee is needed even though multiple copies of the submissions (one for each file) are required. II. MAILINGA transmittal form with the requester's address will be used to forward copies of Office actions (and any references cited in the Office actions) to the requester. Whenever an Office action is issued, a copy of this form will be made and attached to a copy of the Office action. The use of this form removes the need to retype the requester's address each time a mailing is required. When the patent owner is the requester, no such form is needed. The following steps should be taken when processing reexamination requests in the TCs.
(A) Report receipt of the reexamination file in the TC on the PALM terminal and forward the file to the TC reexamination clerk. (B) Date stamp the date of receipt in the TC on the reexamination file. (C) Charge file on the PALM terminal to the supervisory patent examiner (SPE) of the TC art unit indicated on the reexamination file and forward the file to the supervisory patent examiner. (D) The SPE promptly reviews the subject matter of the patent in which reexamination was requested and either transfers the request file (which should rarely occur) or assigns it to a patent examiner other than the examiner who was involved in the examination of the patent application (see MPEP § 2236). The patent examiner is informed and the request file is returned to the TC reexamination clerk for entry of the examiner's name into PALM. (E) At about 6 weeks after the filing of the request, the request file should be forwarded (messaged) to the examiner and charged to him or her on PALM. (F) The examiner then drafts a decision on the request on a "special" basis, normally within 8 weeks after the filing date of the request. The examiner will sign the action if the examiner is a primary examiner, or the action will be signed by the SPE if the examiner is not a primary examiner. (G) The signed decision is forwarded to the Office of the TC Special Program Examiner for review, and then to the TC technical support staff for mailing and PALM update, normally within 10 weeks after the filing date of the request.
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