###### Editorial Note on Part 1

#### Editorial Notes:

1. In Patent and Trademark Office publications and usage the part number is omitted from the numbers of §§ 1.1 to 1.352 and the numbers to the right of the decimal point correspond with the respective rule numbers.

2. For nomenclature changes to part 1, see 68 FR 14335, Mar. 25, 2003; 87 FR 68904, Nov. 17, 2022.

#### § 1.565 Concurrent office proceedings which include an *ex parte* reexamination proceeding.

(a) In an *ex parte* reexamination proceeding before the Office, the patent owner must inform the Office of any prior or concurrent proceedings in which the patent is or was involved such as interferences, reissues, *ex parte* reexaminations, *inter partes* reexaminations, or litigation and the results of such proceedings. See § 1.985 for notification of prior or concurrent proceedings in an *inter partes* reexamination proceeding.

(b) If a patent in the process of *ex parte* reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the reexamination. See § 1.987 for *inter partes* reexamination proceedings.

(c) If *ex parte* reexamination is ordered while a prior *ex parte* reexamination proceeding is pending and prosecution in the prior *ex parte* reexamination proceeding has not been terminated, the *ex parte* reexamination proceedings will usually be merged and result in the issuance and publication of a single certificate under § 1.570. For merger of *inter partes* reexamination proceedings, see § 1.989(a). For merger of *ex parte* reexamination and *inter partes* reexamination proceedings, see § 1.989(b).

(d) If a reissue application and an *ex parte* reexamination proceeding on which an order pursuant to § 1.525 has been mailed are pending concurrently on a patent, a decision will usually be made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an *ex parte* reexamination proceeding is ordered, the merged examination will be conducted in accordance with §§ 1.171 through 1.179, and the patent owner will be required to place and maintain the same claims in the reissue application and the *ex parte* reexamination proceeding during the pendency of the merged proceeding. The examiner's actions and responses by the patent owner in a merged proceeding will apply to both the reissue application and the *ex parte* reexamination proceeding and will be physically entered into both files. Any *ex parte* reexamination proceeding merged with a reissue application shall be concluded by the grant of the reissued patent. For merger of a reissue application and an *inter partes* reexamination, see § 1.991.

(e) If a patent in the process of *ex parte* reexamination is or becomes involved in an interference, the Director may suspend the reexamination or the interference. The Director will not consider a request to suspend an interference unless a motion (§ 41.121(a)(3) of this title) to suspend the interference has been presented to, and denied by, an administrative patent judge, and the request is filed within ten (10) days of a decision by an administrative patent judge denying the motion for suspension or such other time as the administrative patent judge may set. For concurrent *inter partes* reexamination and interference of a patent, see § 1.993.

[65 FR 76776, Dec. 7, 2000, as amended at 69 FR 50001, Aug. 12, 2004; 72 FR 18905, Apr. 16, 2007]

###### Editorial Note on Subchapter A of Chapter I

#### Editorial Note:

Part 2 is placed in the separate grouping of parts pertaining to trademarks regulations.

###### Editorial Note on Subchapter A of Chapter I

#### Editorial Note:

Part 6 is placed in the separate grouping of parts pertaining to trademarks regulations.

###### Editorial Note on Subchapter A of Chapter I

#### Editorial Note:

Part 7 is placed in the separate grouping of parts pertaining to trademarks regulations.

###### Editorial Note on Subchapter A of Chapter I

#### Editorial Note:

Part 1 is placed in the separate grouping of parts pertaining to patents regulations.

###### Editorial Note on Subchapter A of Chapter I

#### Editorial Note:

Part 3 pertaining to both patents and trademarks is placed in the grouping pertaining to patents regulations.

###### Editorial Note on Subchapter A of Chapter I

#### Editorial Note:

Part 4 is placed in the separate grouping of parts pertaining to patents regulations.

###### Editorial Note on Subchapter A of Chapter I

#### Editorial Note:

Part 5 is placed in the separate grouping of parts pertaining to patents regulations.