Change in Policy of Examiner Assignment in
Ex Parte Reexamination Proceedings and
Establishment of Patentability Review
Conferences in Ex Parte Reexamination Proceedings
Effective immediately, the United States Patent and Trademark Office
(USPTO) is implementing the following two changes in ex parte
reexamination practice:
I. Examiner Assignment Policy: It will be the general policy of the
USPTO to assign ex parte requests for reexamination of a patent to an
examiner different from the examiner(s) who examined the patent
application.
II. Patentability Review Conference: A "patentability review conference"
will be convened in each ex parte reexamination proceeding (1) just
prior to issuing a final rejection, and (2) just prior to issuing a
Notice of Intent to Issue Reexamination Certificate (NIRC).
These changes in the policy of examiner assignment and the introduction
of the patentability review conference are directed specifically to ex
parte reexamination practice, including an ex parte reexamination
proceeding merged with a reissue application. They do not apply to
proceedings under the newly enacted inter partes reexamination statute
nor to merged ex parte-inter partes reexamination proceedings. Similar
policies are, however, being considered for proceedings under the
recently enacted inter partes reexamination statute, including merged ex
parte-inter partes reexamination proceedings. See Notice of proposed
rulemaking, Rules to Implement Optional Inter Partes Reexamination
Proceedings, 65 Fed. Reg. 18154, 18157-58 (2000), 1234 OG 93, 96 (2000),
Response to Issue 4. Specific guidance as to policies, practices and
procedures as they will apply to inter partes reexamination proceedings
will be forthcoming in a separate O.G. Notice to be published in
conjunction with the final rules on inter partes reexamination.
I. Examiner Assignment Policy in
Ex Parte Reexamination Proceedings
A. Background
After a request for ex parte reexamination is received by the USPTO, the
reexamination request is forwarded to the appropriate Technology Center
(TC) and then to the TC Art Unit in which the reexamination proceeding
is to be examined. Normally, the Art Unit that currently examines the
class and subclass in which the patent to be reexamined is currently
classified will conduct the reexamination. The reexamination request is
then assigned by the Supervisory Patent Examiner (SPE) of the Art Unit
to an examiner familiar with the claimed subject matter of the patent.
That examiner will be referred to as the "examiner in charge" of the
reexamination.
Historically, the examiner chosen by the SPE has generally been the
original examiner who examined the patent for which reexamination is
requested. When the original examiner has been available, he or she has
been presumed to be the examiner most familiar with the technology and
prosecution history of the patent. Statistics compiled by the USPTO do
not support the existence of any significant difference in the rate of
reaffirming the patentability of claims, whether the cases are assigned
to the original examiner or to a different examiner. The public,
however, has voiced complaints that a perception of "original examiner
bias" exists.
B. Implementation of New Examiner Assignment Policy in Ex Parte
Reexamination
In view of the public perception of "original examiner bias," the USPTO
is changing its practice for assigning ex parte reexamination requests
to an examiner. Henceforth, the general policy of the USPTO will be to
assign all such ex parte requests, which are filed after the date of
this notice, to an examiner different from the examiner(s) who examined
the patent application.
Exceptions to this general policy include cases where the SPE is the
only Primary Examiner in the Art Unit, or where the original examiner is
the only examiner with adequate knowledge of the relevant technology. In
the unusual case where there is a need to assign the request to the
original examiner, the assignment must be approved by the TC Group
Director and so indicatedin the decision on the request for
reexamination order.
C. Consequences of Inadvertent Assignment to an "Original Examiner"
Should a reexamination be inadvertently assigned to an "original
examiner," the patent owner or the third party requester who objects
must promptly file a paper alerting the USPTO to this fact.Any request
challenging the assignment of an examiner to the case must be made
within two months of the first Office action or other Office
communication indicating the examiner assignment, or reassignment will
not be considered. Reassignment of the reexamination to a different
examiner will be addressed on a case-by-case basis. In no event will the
assignment to the original examiner, by itself, be grounds for vacating
any Office decision(s) or action(s) and "restarting" the reexamination.
II. Patentability Review Conferences in
Ex Parte Reexamination Proceedings
A. Background
Currently, reexaminations are monitored by Special Program Examiners in
each Technology Center. Prior to the issuance of the reexamination
certificate, all reexamination proceedings are screened for obvious
errors and to ensure that the record has been prepared properly. This
screening is currently performed in the Office of Patent Legal
Administration. In addition, the Office of Patent Quality Review
conducts a patentability review in a sample of reexamination proceedings.
Reexaminations often involve patents in litigation, and the outcome for
the patent owner and for the patent challenger can be dispositive. The
USPTO and the public share the concern that the reexaminations should be
conducted at the highest possible level of quality. Accordingly, the
USPTO will conduct "patentability review conferences" to enhance the
quality of ex parte reexamination proceedings. The patentability review
conferences will provide substantive review of all the issues before the
examiner, thereby enhancing objective analysis and quality in the ex
parte reexamination proceeding.
B. Implementation of Patentability Review Conference in Ex Parte
Reexamination:
Effective immediately, a "patentability review conference" will be
convened in each pending ex parte reexamination proceeding (1) just
prior to issuing a final rejection, and (2) just prior to issuing a
Notice of Intent to Issue a Reexamination Certificate (NIRC). These are
the two most critical events in reexamination proceedings. Each
conference will provide a forum to consider all issues of patentability
as well as procedural issues having an impact on patentability.
C. Make-up of the Patentability Review Conference
The patentability review conference will consist of three members, one
of whom may be the SPE. The first member will be the examiner in charge
of the proceeding. The SPE will select the other two members, who will
be examiner-conferees. The examiner-conferees will be Primary Examiners,
or examiners who are knowledgeable in the technology of the invention
claimed in the patent being reexamined, and/or who are experienced in
reexamination practice.The majority of those present at the conference
will be examiners who were not involved in the examination or issuance
of the patent. An "original" examiner should be chosen as a conferee
only if that examiner is the most knowledgeable in the art, or there is
some other specific and justifiable reason to choose an original
examiner as a participant in the conference.
The patentability review conference will be similar to the appeal
conference presently carried out prior to the issuance of an examiner's
answer following the filing of a Notice of Appeal and Brief. See MPEP
1208. A patentability review conference must be held in each instance
where a final rejection is about to be issued in a reexamination
proceeding. A patentability review conference must be held in each
instance where an NIRC is about to be issued, unless the NIRC is being
issued: (1) following and consistent with a decision by the Board of
Patent Appeals and Interferences on the merits of the proceeding, or (2)
as a consequence of the patent owner's failure to respond or take other
action where such a response or action is necessary to maintain pendency
of the proceeding and, as a result of which failure to respond, all of
the claims will be canceled. When the patentability review conference
results in the issuance of a final rejection or an NIRC, the two
conferees will place their initials, followed by the word "conferee,"
below the signature of the examiner. The signature of the examiner and
initials of the conferees on the resulting Office action will reflect
that the patentability review conference has been conducted.
D. Consequences of Failure to Hold Conference
Should the examiner issue a final rejection or NIRC without holding a
patentability review conference, the patent owner or the third party
requester who wishes to object must promptly file a paper alerting the
USPTO of this fact. Any challenge of the failure to hold a patentability
review conference must be made within two months of the Office action,
or the challenge will not be considered. Convening the conference to
reconsider the examiner's decision will be addressed on a case-by-case
basis. In no event will the failure to hold a review conference, by
itself, be grounds for vacating any Office decision(s) or action(s) and
"restarting" the reexamination proceeding.
E. Discussion
Review of the patentability of the claims by more than one Primary
Examiner should diminish the perception that the patent owner can
disproportionately influence the examiner in charge of the proceeding.
The conference will also provide greater assurance that all matters will
be addressed appropriately. All issues in the proceeding will be viewed
from the perspectives of three examiners. What the examiner in charge of
the proceeding might have missed, the other two conference members would
likely detect. The conference will provide for a comprehensive
discussion of, and finding for, each issue. The present initiative
limits the use of the multiple examiner conference review to the two
most critical points in the proceeding: (1) where the examiner decides
whether to issue a final rejection of claims, and (2) where the examiner
decides whether to issue an NIRC to confirm or allow claims. Thus, this
initiative provides the advantage that the proceeding will be looked at
by three "pairs of eyes" at the most important points in the
reexamination, without expending an inordinate amount of resources and
without unduly delaying the proceeding.
Incorporation into the Manual of Patent Examining Procedure (MPEP):
The "Examiner Assignment Policy" and "Patentability Review Conference"
initiatives, as well as their particulars, will be incorporated into the
MPEP in due course.
Inquiries:
Inquiries regarding this matter should be directed to Kenneth M. Schor,
Senior Legal Advisor, Office of Patent Legal Administration:
By e-mail: kenneth.schor@uspto.gov
By telephone: (703) 308-6710
By FAX: (703) 872-9408, marked to the attention of Kenneth M. Schor
By mail: United States Patent and Trademark Office
Box Comments--Patents
Commissioner for Patents
Washington, D.C. 20231
Attention: Kenneth M. Schor
August 4, 2000 Q. TODD DICKINSON
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office