Mondaq: Piggyback Ex Parte Reexaminations Are Clipped by The USPTO

According to a September 7, 2004 article by Kenneth Cage and Lawrence T. Cullen, of McDermott, Will & Emery, "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." The authors conclude that "Since inter partes reexamination is now available for patents that originated from an application filed after November 29, 1999, the USPTO may be attempting to encourage third party requesters to use inter partes reexaminations over ex parte reexaminations."