United States Patent and Trademark Office OG Notices: 20 May 2003
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: 2003-P-001]
RIN 0651-AB57
Changes To Implement the 2002 Inter Partes Reexamination
and Other Technical Amendments to the Patent Statute
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The 21st Century Department of Justice Appropriations
Authorization Act contains a title relating to intellectual property.
The patent-related provisions in the intellectual property title of the
21st Century Department of Justice Appropriations Authorization Act
include provisions permitting a third party requester in an inter
partes reexamination proceeding to appeal a final decision by the Board
of Patent Appeals and Interferences (BPAI) to the U.S. Court of Appeals
for the Federal Circuit (Federal Circuit), and to participate in the
patent owner's appeal of a final decision by the BPAI to the Federal
Circuit. Also included are technical amendments to statutory provisions
directed to inter partes reexamination, 18-month publication of patent
applications and provisional rights, and issuance of patents. The
United States Patent and Trademark Office (Office) is in this notice
proposing changes to the rules of practice to implement the patent-
related provisions of the 21st Century Department of Justice
Appropriations Authorization Act, and other miscellaneous changes
related to appeals in reexamination proceedings.
DATES: To be ensured of consideration, written comments must be
received on or before June 27, 2003. No public hearing will be held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to AB57Comments@uspto.gov. Comments may also be
submitted by mail addressed to: Box Comments--Patents, Commissioner for
Patents, Washington, DC 20231, or by facsimile to (703) 872-9408,
marked to the attention of Kenneth M. Schor, Senior Legal Advisor.
Although comments may be submitted by mail or facsimile, the Office
prefers to receive comments via the Internet. If comments are submitted
by mail, the Office prefers that the comments be submitted on a DOS
formatted 3 1/2 inch disk accompanied by a paper copy.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Crystal Park 2, Suite 910,
2121 Crystal Drive, Arlington, Virginia, and will be available through
anonymous file transfer protocol (ftp) via the Internet (address:
http://www.uspto.gov). Since comments will be made available for public
inspection, information that is not desired to be made public, such as
an address or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Kenneth M. Schor or Gerald A. Dost,
Senior Legal Advisors. Kenneth M. Schor may be contacted by telephone
at (703) 308-6710; by mail addressed to: U.S. Patent and Trademark
Office, Box Comments--Patents, Commissioner for Patents, Washington, DC
20231, marked to the attention of Kenneth M. Schor; by facsimile
transmission to (703) 872-9408, marked to the attention of Kenneth M.
Schor; or by electronic mail message over the Internet addressed to
kenneth.schor@uspto.gov. Gerald A. Dost may be contacted by telephone
at (703) 305-8610; by mail addressed to: U.S. Patent and Trademark
Office, Box Comments--Patents, Commissioner for Patents, Washington, DC
20231, marked to the attention of Gerald A. Dost; by facsimile
transmission to (703) 308-6916, marked to the attention of Gerald A.
Dost; or by electronic mail message over the Internet addressed to
gerald.dost@uspto.gov.
SUPPLEMENTARY INFORMATION: The American Inventors Protection Act of
1999 (AIPA), enacted on November 29,
1999, contained a number of changes to title 35, United States Code
(U.S.C.). See Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through 1501A-
591 (1999). The 21st Century Department of Justice Appropriations
Authorization Act, enacted on November 2, 2002, contained technical
corrections to the AIPA as well as other technical amendments to title
35, U.S.C. See Pub. L. 107-273, 116 Stat. 1758, 1899-1906 (2002). This
notice proposes changes to the rules of practice in title 37 CFR to
implement the patent-related provisions of the 21st Century Department
of Justice Appropriations Authorization Act (and other related
miscellaneous changes).
I. Third Party Requester Appeal Rights to United States Court of
Appeals for the Federal Circuit: Optional inter partes reexamination
was newly enacted in the AIPA. The AIPA provided that the patent owner
in an inter partes reexamination could appeal a decision of the BPAI
(adverse to patent owner) to the Federal Circuit. The third party
requester of the inter partes reexamination, however, was specifically
precluded from appealing a decision of the BPAI to the Federal Circuit.
35 U.S.C. 134(c). In addition, no provision was made in the statute for
the third party requester to be a party to, i.e., participate in, an
appeal taken by the patent owner to the Federal Circuit.
The Office published a final rule in December of 2000 revising the
rules of practice in patent cases to implement the optional inter
partes reexamination provisions of the AIPA. See Rules to Implement
Optional Inter Partes Reexamination Proceedings, 65 FR 76755 (Dec. 7,
2000), 1242 Off. Gaz. Pat. Office 12 (Jan. 2, 2001) (final rule). In
this final rule, Sec. 1.983 was promulgated to track the patent
owner's statutory right, under 35 U.S.C. 141, to appeal to the Federal
Circuit in inter partes reexamination proceedings. Because the third-
party requester of an inter partes reexamination was explicitly
precluded under 35 U.S.C. 134(c) from appealing the decision of the
BPAI to the Federal Circuit, no such provision of the rules was
provided. Likewise, because there was no authority in the statute for
the third party requester to participate in an appeal taken by the
patent owner to the Federal Circuit, no such provision of the rules was
provided. Finally, because the third-party requester of an inter partes
reexamination was precluded under 35 U.S.C. 134(c) from appealing the
decision of the BPAI to the Federal Circuit, no provision in the rules
concerning patent owner participation in a third-party requester appeal
was provided.
Section 13106 of Public Law 107-273 grants the inter partes
reexamination third party requester the right to appeal an adverse
decision of the BPAI to the Federal Circuit. 35 U.S.C. 315(b)(1). It
further authorizes the third party requester to be a party to any
appeal taken by the patent owner to the Federal Circuit. 35 U.S.C.
315(b)(1). Moreover, section 13106 also permits the patent owner to be
a party to an appeal taken by the third party requester to the Federal
Circuit. This is so because 35 U.S.C. 315(a)(2) as enacted by the AIPA
states that the patent owner involved in an inter partes reexamination
proceeding "may be a party to any appeal taken by a third-party
requester under subsection (b)."
It is being proposed that Sec. 1.983 be amended to implement this
statutory revision, and conforming/ancillary amendments be made to
Sec. Sec. 1.301, 1.304, and 1.979.
II. Technical amendments to the inter partes reexamination
provisions of the American Inventors Protection Act of 1999: Section
13202 of Public Law 107-273 made technical corrections to statutory
provisions directed to inter partes and ex parte reexamination.
Amendments to Sec. Sec. 1.191, 1.303, and 1.913 are being proposed to
address the inter partes and ex parte reexamination technical
corrections.
III. Other miscellaneous changes made as to reexamination:
Additionally, revision of the inter partes reexamination rules is being
proposed to avoid the loss of appeal rights during appeals to the BPAI
due to certain inadvertent errors on the part of the patent owner or
third party requester. Revision of the inter partes reexamination rules
is also being proposed to expedite the prosecution leading to the
appeal stage. Finally, revision is proposed for clarifying the inter
partes and ex parte reexamination appeal rules. Amendments to these
ends are proposed below for Sec. Sec. 1.302, 1.949, 1.953, 1.959,
1.965, 1.967, 1.971, and 1.977.
IV. Patent and Trademark Efficiency Act Amendments: Section 13203
of Public Law 107-273 is directed to efficiency amendments to the
statute. It is proposed that Sec. 1.13(b) be amended to eliminate its
requirement for an attestation for certified copies of documents,
similar to the elimination of the attestation requirement in 35 U.S.C.
153 as provided in section 13203(c) of Public Law 107-273.
V. Technical amendment related to eighteen-month publication of
applications and provisional rights: Sections 13203(c), 13204 and 13205
of Public Law 107-273 made technical corrections to provisions directed
to the eighteen-month publication of patent applications and
provisional rights, and the issuance of patents. The proposed changes
to Sec. Sec. 1.14, 1.78, 1.417, and 1.495 are directed to
implementation of the statutory revisions made by these sections of
Public Law 107-273.
Section-by-Section Discussion
Section 1.1: It is proposed that Sec. 1.1(c) be amended to provide
separate mail stops for ex parte reexamination proceedings and for
inter partes reexamination proceedings. It is also proposed that Sec.
1.1(c) be amended to make it clear that the mail stop for ex parte
reexamination proceedings is only for the original request papers for
ex parte reexamination. The new mail stop for inter partes
reexamination would be for original request papers and all subsequent
correspondence filed in the Office (other than correspondence to the
Office of the Solicitor pursuant to Sec. 1.1(a)(3) and Sec.
1.302(c)), since the nature of such proceedings is complex and
correspondence is best handled at a central location, where the
personnel have specific expertise in inter partes reexamination.
Section 1.13: It is proposed that Sec. 1.13(b) be amended to
delete "attested by an officer of the United States Patent and
Trademark Office authorized by the Director." Section 13203(c) of
Public Law 107-273 eliminated the requirement in 35 U.S.C. 153 that the
signature of the Director for issued patents be attested to by an
officer of the Office. To achieve further efficiencies, it is proposed
that certified copies of documents would no longer include an
attestation for the Director's signature. Accordingly, it is proposed
that Sec. 1.13(b) be amended to eliminate the requirement for an
attestation for certified copies of documents.
Section 1.14: It is proposed that Sec. 1.14(i)(2) be amended by
inserting "of the publication" after "English language translation"
in the sole sentence of the paragraph. Section 13204 of Public Law 107-
273 made a technical change to the provisional rights provisions of the
patent statute as to international applications to clarify that a
translation of the international publication, as opposed to the
international application, is required to be filed in order for a
patent owner to obtain provisional rights pursuant to 35 U.S.C. 154(d).
In view of this change to the statute, the corresponding reference to
the translation in Sec. 1.14 is proposed to be changed to add "the
publication of an international application" after "English language
translation of." In addition, it is proposed that the
parenthetical phrase at the end of paragraph (i)(2), referencing the
fee for a copy of a document in a file, be corrected to refer to Sec.
1.19(b)(4) rather than Sec. 1.19(b)(2) or (3).
Section 1.78: It is proposed that Sec. 1.78, paragraph (a)(3), be
amended by deleting the phrase "in a nonprovisional application" in
the first sentence of the paragraph.
Section 4508 of the AIPA as originally enacted did not make the 18-
month publication amendments to 35 U.S.C. 119 and 120 applicable to an
international application unless and until it enters the national stage
under 35 U.S.C. 371. See Public Law 106-113, 113 Stat. at 1501A-566
through 1501A-567. Section 13205 of Public Law 107-273 amended section
4508 of the AIPA to make the 18-month publication amendments to 35
U.S.C. 119 and 120 also applicable during the international stage of an
international application. With regard to international applications,
Sec. 1.78(a)(2)(ii) requires that the reference required by Sec.
1.78(a)(2)(i) be submitted: (1) During the pendency of the later-filed
application; and (2) within the later of (A) four months from the date
on which the national stage commenced under 35 U.S.C. 371(b) or (f) in
the later-filed international application or (B) 16 months from the
filing date of the prior-filed application. An abandoned international
application is not a nonprovisional application; thus, as Sec.
1.78(a)(3) currently reads, the petition procedure set forth in Sec.
1.78(a)(3) would not be applicable to a delayed priority claim in an
abandoned international application. If the presently proposed
amendment to Sec. 1.78(a)(3) is adopted, then the petition procedure
set forth in Sec. 1.78(a)(3) would be applicable to submitting a
delayed priority claim in an abandoned international application
including an international application that has not entered the
national stage under 35 U.S.C. 371. In view of the statutory change to
the applicability of the 18-month publication amendments to 35 U.S.C.
119 and 120 and the presently proposed change to Sec. 1.78(a)(3), when
filing a "bypass" continuation application under 35 U.S.C. 111(a)
that claims the benefit of the international application with a filing
date on or after November 29, 2000, that could have but did not claim
the benefit of an earlier U.S. application and the benefit claim is to
be added, a petition under Sec. 1.78(a)(3) will be required in the
international application. A "bypass" continuation application is an
application for patent filed under 35 U.S.C. 111(a) that claims the
benefit of the filing date of an earlier international application that
did not enter the national stage under 35 U.S.C. 371. See H.R. Rep. No.
107-685, at 222 (2002). Thus, applicants should no longer rely upon the
advice that to amend a later-filed abandoned international application
to add a claim to the benefit of a prior-filed nonprovisional
application, or a prior-filed international application designating the
United States, an applicant need only file a petition under Sec. 1.182
to amend an abandoned application (the later-filed international
application) with the claim to the benefit of a prior-filed
application. See Requirements for Claiming the Benefit of Prior-Filed
Applications Under Eighteen-Month Publication of Patent Applications,
66 FR 67087, 67092 (Dec. 28, 2001), 1254 Off. Gaz. Pat. Office 121, 125
(Jan. 22, 2002) (final rule) (response to comment 6).
Section 1.191: It is proposed that Sec. 1.191 be amended by
revising paragraph (a) to delete each appearance of "for a patent that
issued from an original application filed in the United States."
Section 13202(d) of Public Law 107-273 provided a technical correction
for the effective date set forth in the AIPA for appeals to the BPAI as
follows:
Effective Date--The amendments made by section 4605(b), (c), and
(e) of the Intellectual Property and Communications Omnibus Reform
Act, as enacted by section 1000(a)(9) of Public Law 106-113, shall
apply to any reexamination filed in the United States Patent and
Trademark Office on or after the date of enactment of Public Law
106-113.
The effective date language in section 4608 of the AIPA limited the
applicability of the conforming amendments to 35 U.S.C. 134 to a
reexamination of a patent that issued from an original application
which was filed on or after November 29, 1999. Thus, the conforming
amendments to 35 U.S.C. 134 applied only to those ex parte
reexamination proceedings filed under Sec. 1.510 for patents that
issued from an original application which was filed on or after
November 29, 1999. Public Law 107-273 revised the applicability of the
conforming amendments to 35 U.S.C. 134 such that the conforming
amendments are applicable to a reexamination of a patent where the
request for ex parte reexamination was filed on or after November 29,
1999. Accordingly, Sec. 1.191 is proposed to be amended to track the
statutory revision of effective date.
Section 1.197: It is proposed that Sec. 1.197(c) be amended to
provide that an appeal to the Federal Circuit is terminated when the
mandate is issued by the Court, rather than when the mandate is
received by the Office. This proposed change to Sec. 1.197(c) is for
consistency with a 1998 amendment to rule 41 of the Federal Rules of
Appellate Procedure. The commentary on the addition of subdivision (c)
to rule 41 of the Federal Rules of Appellate Procedure indicates that
this provision is intended to make clear that the court's mandate is
effective upon issuance, and that its effectiveness is not delayed
until receipt of the mandate by the trial court or agency, or until the
trial court or agency acts upon the mandate.
Section 1.301: It is proposed that the last sentence of Sec. 1.301
be amended by inserting "appeals by patent owners and third party
requesters in" before "inter partes reexamination proceedings." The
revision would make it clear that appeals by third party requesters of
inter partes reexamination proceedings are controlled by Sec. 1.983.
Section 1.302: It is proposed that Sec. 1.302 be revised by adding
new paragraphs (c) and (d), and redesignating existing paragraph (c) as
paragraph (e). New paragraph (c) would point out that when an appeal is
taken to the Federal Circuit in an ex parte reexamination proceeding,
the appellant must serve notice as provided in Sec. 1.550(f). New
paragraph (d) would point out that when an appeal is taken to the
Federal Circuit in an inter partes reexamination proceeding, the
appellant must serve notice as provided in Sec. 1.903. The proposed
revisions are made to focus parties on the unique service that must be
made in ex parte and inter partes reexamination proceedings, when
appealing to the Federal Circuit.
Section 1.303: It is proposed that Sec. 1.303 be amended by
revising paragraphs (a), (b) and (d) to delete the appearance of "for
a patent that issued from an original application filed in the United
States" in each paragraph. This proposed revision is made for the
reasons stated in the above discussion of the proposed revision of
Sec. 1.191.
Section 1.304: It is proposed that Sec. 1.304 be amended by
revising paragraph (a)(1) to add after the second sentence, the
following sentence: "If a request for rehearing or reconsideration of
the decision is filed within the time period provided under Sec.
1.979(a), the time for filing an appeal shall expire two months after
action on the last such request made by the parties." In addition,
reference to Sec. 1.979(a) in the second sentence would be deleted.
Further, it is proposed that all of the current provisions relating to
interferences be included in Sec. 1.304(i), and that Sec. 1.304(ii)
provide that in inter partes reexaminations, the time for
filing a cross-appeal expires: (1) 14 days after service of the notice
of appeal; or (2) two months after the date of decision of the BPAI,
whichever is later.
The proposed revision to Sec. 1.304(a)(1) provides that an inter
partes third party requester can appeal to the Federal Circuit and can
participate in the patent owner's appeal to the Federal Circuit. The
time for filing an appeal to the Federal Circuit will expire two months
after "action on the last such request made by the parties," as
opposed to the sentence which precedes the added sentence where time
for filing an appeal to the Federal Circuit is stated to expire two
months after "action on the request." Thus, the potential for
rehearing or reconsideration by more than one party is factored into
the time for appeal to the Federal Circuit. Since a party may not
challenge a BPAI decision in an inter partes reexamination in a civil
action under 35 U.S.C. 145, Sec. 1.304(a)(1) provides that "the time
for filing an appeal shall expire * * *" and not "the time for filing
an appeal or commencing a civil action * * *" (which appears in the
sentence which precedes the added sentence).
The proposed revision to Sec. 1.304(a)(1) also conforms to the
change proposed for Sec. 1.983, by addressing the potential for cross
appeal to the Federal Circuit in an inter partes reexamination (in
addition to that in an interference).
Section 1.417: As pointed out in the discussion above of the
proposed revision to Sec. 1.14, the statute has been revised to
clarify that a translation of the international publication, as opposed
to the international application, must be filed in order for a patent
owner to obtain the provisional right of a reasonable royalty under 35
U.S.C. 154(d). Accordingly, it is proposed that Sec. 1.417 be amended:
(1) To delete "the international publication or"; (2) to add "of the
publication" after "English language translation"; and (3) to delete
", unless it is being submitted pursuant to Sec. 1.495,".
Section 1.495: It is proposed that Sec. 1.495(c) be amended to
change "if it was originally filed in another language (35 U.S.C.
371(c)(2)" to "if the international application was originally filed
in another language and if any English language translation of the
publication of the international application previously submitted under
35 U.S.C. 154(d) (Sec. 1.417) is not also a translation of the
international application as filed (35 U.S.C. 371(c)(2))." The purpose
of this revision is to clarify that if an English language translation
of the publication has already been filed and the publication was also
a translation of the international application, a second translation is
not required. Instead, the translation required by 35 U.S.C. 154(d)
will satisfy the requirement for a translation under 35 U.S.C.
371(c)(2). In Sec. 1.495(g), it is proposed to delete ", except for a
copy of the international publication or translation of the
international application that is identified as provided in Sec.
1.417," because the phrase is unnecessary, since it merely repeats a
provision of Sec. 1.417.
Section 1.913: It is proposed that Sec. 1.913 be amended to add
"other than the patent owner or its privies" after "any person," as
section 13202 of Public Law 107-273 now clarifies that there is
statutory basis only for the third party requester to file a request
for inter partes reexamination, and there is no such basis for a patent
owner to do so. This position is consistent with the initial position
taken by the Office during the implementation of optional inter partes
reexamination. See Rules to Implement Optional Inter Partes
Reexamination Proceedings, 65 FR 18153, 18178 (Apr. 6, 2000), 1234 Off.
Gaz. Pat. Office 93, 116 (May 23, 2000) (proposed rule).
Sections 1.949 and 1.953: It is proposed that the clause "or upon
a determination of patentability of all claims" be deleted from the
first sentence of Sec. 1.949, and the clause "or upon a determination
of patentability of all claims in the proceeding" be added to Sec.
1.953(a), so that Sec. 1.953(a) would read as follows: "Upon
considering the comments of the patent owner and the third party
requester subsequent to the Office action closing prosecution in an
inter partes reexamination, or upon expiration of the time for
submitting such comments, or upon a determination of patentability of
all claims in the proceeding, the examiner shall issue a Right of
Appeal Notice (RAN), unless the examiner reopens prosecution and issues
another Office action on the merits" (emphasis added in bold). This
proposed change would be directed to streamlining prosecution in an
inter partes reexamination by issuing a RAN under Sec. 1.953 as soon
as all claims in the proceeding are found patentable. This would be in
contrast to the current procedure where an Action Closing Prosecution
(ACP) under Sec. 1.949 is issued upon a determination of patentability
of all claims, and later a RAN must be issued. Thus, an extra Office
action would be avoided by the current proposal.
Currently, where the examiner finds all claims to be patentable, an
ACP would be issued even though the Office action being issued is the
first action on the merits. The purpose in going directly to an ACP
even in a first Office action is that the patent owner has nothing to
respond to, upon learning that the claims are all patentable. Further,
since the patent owner will not respond, the third party requester has
nothing to comment upon, and is barred from filing a paper as to the
merits. Statutory provision for requester's participation in the
proceeding (prior to appeal) is only made for requester comments on a
patent owner response. 35 U.S.C. 314(b)(3). Therefore, no reason exists
to delay the closing of prosecution where all claims are found
patentable, and the examiner thus issues an ACP directly. In
implementing the optional inter partes reexamination proceedings
provisions of the AIPA, the Office proposed that the examiner should
not go directly to the RAN where all claims are found patentable,
because that would deprive the third party requester of the right of
filing comments on the examiner's Office actions prior to appeal (Sec.
1.951(a) as proposed provided that "(a) After an action closing
prosecution in an inter partes reexamination, a third-party requester
may once file comments limited to the issues raised in the Office
action closing prosecution"). See Rules to Implement Optional Inter
Partes Reexamination Proceedings, 65 FR at 18180, 1234 Off. Gaz. Pat.
Office at 117.
This third party requester's right to file original comments on the
examiner's ACP pursuant to Sec. 1.951(a), however, was not adopted in
the final rule to implement optional inter partes reexamination
proceedings. The requester's right to file original comments on the
examiner's ACP was deleted in response to a comment on Sec. 1.951(a)
which pointed out that "such `direct' requester comments are not
consistent with the statute as the statute makes it clear that the
third party requester's right to comment only matures with the filing
of a patent owner response to an Office action on the merits, and
nowhere in the statute does it permit third party requester comments
without there first being a patent owner response." See Rules to
Implement Optional Inter Partes Reexamination Proceedings, 65 FR at
76768, 1242 Off. Gaz. Pat. Office at 22-23.
Given that the third party requester does not have a right to file
original comments on the examiner's ACP, the above-discussed reason for
issuing an ACP prior to a RAN where all claims are found patentable
(i.e., to give the requester at least one chance for input prior to
appeal) no longer exists. There is no reason to issue an unnecessary
ACP in this instance, since the patent
owner has no incentive to reply to the finding of all claims
patentable, and thus, presumably will not file a response to the ACP.
The patent owner would not argue against the allowance of all the
claims, and the patent owner would not be expected to comment on any
stated reasons for allowance at this point, since he or she may do so
after a Notice of Intent to Issue a Reexamination Certificate is
issued, while a comment at this stage would give requester an extra
opportunity to participate in the proceeding. Accordingly, the present
proposal would eliminate the need for an ACP where all claims are found
patentable by going directly to the issuance of a RAN, and thus
streamline and expedite the inter partes reexamination process.
Section 1.959: It is proposed that Sec. 1.959 be revised by adding
a new paragraph (f). New paragraph (f) would provide a non-extendable
one-month period for correcting an inadvertent failure to comply with
any requirement of Sec. 1.959, when a notice of appeal or cross appeal
is submitted. The proposed revision of Sec. 1.959 would permit a
remedy of inadvertent defects in a notice of appeal or cross appeal.
Section 1.959 relates to appeals and cross appeals to the BPAI in
inter partes reexamination proceedings. The requirements for acceptance
by the Office of a notice of appeal and cross appeal to the BPAI are:
(1) Payment of the appeal fee set forth in Sec. 1.17(b) (Sec. Sec.
1.959(a) and (b)); identification of the appealed claim(s) (Sec.
1.959(c)); and (3) signature by the patent owner, the third party
requester, or their duly authorized attorney or agent (Sec. 1.959(c)).
It is proposed to revise Sec. 1.959 by providing the third party
requester one opportunity to supply, within one month, the missing fee
or missing portion of the fee that was inadvertently not supplied.
Section 1.957(a) provides that if "the third party requester files an
untimely or inappropriate comment [or] notice of appeal * * * in an
inter partes reexamination, the paper will be refused consideration."
Thus, if the third party requester inadvertently fails to pay the
appeal fee or makes a payment which is deficient as to the amount
specified in Sec. 1.17(b), the requester's notice of appeal (or cross
appeal) will not be considered and requester's appeal would otherwise
be barred. The failure to submit the complete appeal fee cannot be
considered a "bona fide attempt to respond and to advance the
prosecution" where "some requirement has been inadvertently omitted"
under Sec. 1.957(d) (with requester then given a chance to rectify the
inadvertency), since Sec. 1.957(d) applies only to a patent owner and
not to a third party requester. In addition, the third party requester
does not have the opportunity to "revive" the appeal, as does the
patent owner under Sec. 1.137 (further, an extension of the time for
filing the notice of appeal (or cross appeal) is not provided for by
Sec. 1.956, even if the requester becomes aware of the inadvertency on
the last day to remedy it). Thus, the third party requester would be
barred from appealing the case when a sufficient payment of the fee is
inadvertently not made in the absence of the proposed revision to Sec.
1.959. Yet, estoppel attaches to the third party requester which
precludes further resolution of the issues that the requester wishes to
appeal. Under the statute, requester is estopped from later asserting
in any civil action, or in a subsequent inter partes reexamination, the
invalidity/unpatentability of any claim finally determined to be valid
and patentable on any ground the third party requester raised or could
have raised in the inter partes reexamination. Requester is further
estopped from later challenging in a civil action any fact determined
in the inter partes reexamination. Accordingly, requester's loss of
appeal rights because of an inadvertency is considered an unduly harsh
and extreme measure. Accordingly, it is proposed to revise Sec. 1.959
by providing the third party requester one opportunity to supply,
within one month, the missing fee or missing portion of the fee that
was inadvertently not supplied. As to the requirements that the notice
of appeal (or cross appeal) identify the appealed claim(s) and be
signed by the appellant, it may be that an opportunity to remedy the
inadvertent failure to comply with same is not precluded by Sec.
1.957(a). The refusal of consideration mandated by that section is
directed only to "untimely or inappropriate" notices of appeal (and
cross appeal). If so, the failure to sign or identify as required might
not render the notice untimely, and the paper might be an
"appropriate" paper, i.e., the type of paper that is entitled to
entry in an inter partes reexamination, but is not a complete paper.
However, to cover the possibility that failure to comply with the
signature or identification of claims requirement of Sec. 1.959(c)
could permanently bar the requester's appeal, the proposed new Sec.
1.959(f) has been made broad enough to explicitly encompass these
potential defects in a notice of appeal (or cross appeal). Further, the
proposed new Sec. 1.959(f) is drafted to encompass patent owner
inadvertencies as well as those of the third party requester.
Sections 1.965 and 1.967: It is proposed that Sec. 1.965,
paragraph (d), be revised to insert "paragraphs (a) and (c)" in place
of "paragraph (c)." It is proposed that Sec. 1.967, paragraph (c),
be revised to insert "paragraphs (a) and (b)" in place of "paragraph
(b)."
As Sec. 1.965 currently reads, an inadvertent failure to comply
with a Sec. 1.965(a) requirement would permanently bar the requester's
appeal from going forward. As Sec. 1.967 currently reads, an
inadvertent failure to comply with a Sec. 1.967(a) requirement would
bar the requester's participation via respondent brief in the patent
owner's appeal. It is proposed to revise Sec. Sec. 1.965 and 1.967 to
provide the appellant and respondent, respectively, with a non-
extendable one-month period for correcting an inadvertent failure to
comply with a requirement of Sec. Sec. 1.965(a) and 1.967(a),
respectively. This revision of Sec. Sec. 1.965 and 1.967 is proposed
for reasons analogous to those set forth above for the proposed
revision of Sec. 1.959. Again, the loss of requester's appeal rights
because of a Sec. 1.965(a) inadvertency, and the loss of requester's
participation rights because of a Sec. 1.967(a) inadvertency, are
considered to be unduly harsh and extreme measures.
It is noted that Sec. 1.965(b) states: "A party's appeal shall
stand dismissed upon failure of that party to file an appellant's
brief, accompanied by the requisite fee, within the time allowed." If
the proposed revision to Sec. 1.965(d) is made, the phrase "within
the time allowed" in Sec. 1.965(b) would be interpreted to include
the filing of an "appellant's brief, accompanied by the requisite
fee" within the one-month period for correcting an inadvertency (in
failure to comply with a requirement of Sec. 1.965(a) and/or (c)) set
forth in Sec. 1.965(d).
Section 1.971: It is proposed that Sec. 1.971 be amended by
designating the sole current paragraph of the section as paragraph (a),
and adding new paragraph (b). New paragraph (b) would provide a non-
extendable one-month period for correcting an inadvertent failure to
comply with any requirement of paragraph (a) of Sec. 1.971, when a
rebuttal brief is submitted. Sections 1.965(d) and 1.967(c) currently
provide relief for certain non-compliance inadvertencies in appellant
and respondent briefs, respectively. There is no such relief provided
for rebuttal briefs; yet, no reason exists as to why the relief is
provided for both appellant and respondent briefs, but not for rebuttal
briefs. It is proposed to revise
Sec. 1.971 to provide relief granted for inadvertencies in the
rebuttal brief that would parallel the relief granted for
inadvertencies in appellant and respondent briefs. This would be
effected by providing, in Sec. 1.971, a new paragraph (b), which is
analogous to Sec. Sec. 1.965(d) and 1.967(c).
Section 1.977: It is proposed that Sec. 1.977, paragraph (g), be
amended by inserting ", when the owner is responding under paragraph
(b)(1) of this section" at the end of the first sentence of the
paragraph, and by adding the following new sentence as the second
sentence: "The time period set forth in paragraph (b) of this section
may not be extended when the owner is responding under paragraph (b)(2)
of this section."
Current Sec. 1.977(g) provides that "[t]he time period set forth
in paragraph (b) of this section is subject to the extension of time
provisions of Sec. 1.956." Thus, an extension of time could be
obtained for the filing of a patent owner amendment or showing of facts
presented under Sec. 1.977(b)(1), or the filing of a patent owner
request for rehearing of the decision of the BPAI made under Sec.
1.977(b)(2). However, Sec. 1.979(g) states that the times for
requesting rehearing under Sec. 1.979(a) may not be extended, and a
patent owner request for rehearing of the decision of the BPAI made
under Sec. 1.977(b)(2) is included as Sec. 1.979(a)(2). Thus, the
time for filing a patent owner request for rehearing under Sec.
1.977(b)(2) cannot be extended. The proposed revision would revise
Sec. 1.977(g) to make it consistent with the language of Sec.
1.979(g). Note further that this revision is consistent with the policy
for a streamlined appeal procedure, which is reflected, for example, in
Sec. 1.959 (no extension of the time for filing the notice of appeal
or cross appeal), Sec. 1.963 (no extension of the time for filing
appellant, respondent, and rebuttal briefs), and Sec. 1.979(g) (no
extension of the time for filing any rehearing request). Thus, it is
appropriate that an extension of time cannot be obtained for the filing
of a patent owner request for rehearing of the decision of the BPAI
made under Sec. 1.977(b)(2), while an extension can be obtained for
the filing of a patent owner amendment or showing of facts presented
under Sec. 1.977(b)(1), which may be considered a reopening of the
examination process, as opposed to the appeal process.
Section 1.979: It is first proposed that Sec. 1.979 be amended by
revising its paragraphs (e) and (f) to replace "patent owner" with
"parties to an appeal to the Board of Patent Appeals and
Interferences," "party," "any party," and "party's," where each
replacement is applicable, and to delete "patent owner's" where it
appears. It is also proposed that Sec. 1.979 be amended by deleting
the first and second sentences of paragraph (f). It is also proposed
that the third sentence of Sec. 1.979(f) be amended to add "to the
Board of Patent Appeals and Interferences" after "An appeal" to
provide additional clarity. Section 1.979 is currently drafted to
address the situation where appeal to the Federal Circuit is possible
only for the patent owner. The first proposed revision would modify the
language of Sec. 1.979 to make it applicable to all parties to the
inter partes reexamination proceeding, i.e., the patent owner and any
inter partes reexamination third party requester, who are the parties
to the appeal to the BPAI. The second proposed revision would delete
the current provision for termination of the third party requester's
appeal, which was (before the enactment of Public Law 107-273) under
criteria different than that of the patent owner (since a third party
requester could not appeal to the courts under the statute prior to
Public Law 107-273). The first proposed revision to the text of Sec.
1.979(f) make the criteria for termination the same for all parties to
the appeal. Finally, it is proposed that Sec. 1.979(f) be amended to
provide that an appeal to the Federal Circuit is terminated when the
mandate is issued by the Court for consistency with a 1998 amendment to
rule 41 of the Federal Rules of Appellate Procedure.
Undesignated center heading immediately preceding Sec. 1.983: It
is proposed that the undesignated center heading immediately preceding
Sec. 1.983 be revised to delete "PATENT OWNER" before "APPEAL TO
THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT." The
undesignated center heading immediately preceding Sec. 1.983 is
currently drafted to address the situation where appeal to the Federal
Circuit is possible only for the patent owner. The proposed revision
would modify the language to make it applicable to all parties to the
inter partes reexamination proceeding who are the parties to the appeal
to the BPAI.
Section 1.983: Section 13106 of Public Law 107-273 grants the inter
partes reexamination third party requester the right to appeal an
adverse decision of the BPAI to the Federal Circuit. 35 U.S.C.
315(b)(1). It further authorizes the third party requester to be a
party to any appeal taken by the patent owner to the Federal Circuit.
35 U.S.C. 315(b)(1). Also, as pointed out above, section 13106 of
Public Law 107-273 implicitly permits the patent owner to be a party to
the newly provided-for appeal taken by the third party requester to the
Federal Circuit. It is proposed that Sec. 1.983 be amended to track
this newly enacted legislation by revising its heading, dividing the
existing text into paragraphs (a) and (b); revising the text of newly
designated paragraphs (a) and (b), and adding new paragraphs (c)
through (f).
It is proposed that the title of Sec. 1.983 be revised by changing
"Patent owner appeal" to "Appeal."
It is proposed that Sec. 1.983(a) be revised to permit the patent
owner and any third party requester who is a party to an appeal to the
BPAI to (1) appeal the BPAI's decision to the Federal Circuit, and (2)
to be a party to any appeal to the Federal Circuit taken from the
Board's decision.
It is proposed that Sec. 1.983(b) be revised to clarify that
service of the notice of appeal or cross appeal must be made on every
other party in the reexamination proceeding as required in Sec. 1.903.
The explicit statement of requirement for service on other parties also
provides antecedent for the 14-day period recited in paragraph (e) of
Sec. 1.983 that follows.
It is proposed that paragraphs (c) and (d) be added to Sec. 1.983
to provide for a cross appeal within 14 days of service of an opposing
party's notice of appeal. This is analogous to the cross appeal (within
14 days of service of the notice of appeal) provided for in Sec.
1.304(a)(1) for interferences. The interferences model is used, because
an interference is the only other inter partes proceeding appealed to
the court from the decision of the BPAI. It is to be noted that if the
two-month time period from the BPAI's decision will expire after the
14-day period set for a cross appeal, then the later-expiring two-month
period will control. Thus, where a first party files an appeal to the
court (the Federal Circuit) 14 days after the BPAI's decision, an
opposing party need not file a cross appeal 15 days later (29 days
after the BPAI's decision), but rather has the remainder of the two-
month period to do so.
A new paragraph (e) is proposed to be added to Sec. 1.983, to
prescribe the action a party must take in order to participate in an
appellant's appeal (including cross appeal). Participation in the
appellant's appeal is directed to providing argument supporting the
decision of the BPAI. Such participation is in contrast to the cross
appeal which would be provided for in paragraphs (c) and (d) of Sec.
1.983, where a party challenges a decision of the BPAI adverse to that
party.
New paragraph (f): Section 13106(d) of Public Law 107-273 provides the
effective date for the revision to the statute made in section 13106 as
follows: "The amendments made by this Section apply with respect to
any reexamination proceeding commenced on or after the date of
enactment of this Act."
Accordingly, it is proposed that Sec. 1.983 be amended to add a
new paragraph (f) stating: "(f) Notwithstanding any provision of the
rules, in any reexamination proceeding commenced prior to November 2,
2002, the third party requester is precluded from appealing and cross
appealing any decision of the BPAI to the Federal Circuit, and the
third party requester is precluded from participating in any appeal
taken by the patent owner to the Court."
Rulemaking Considerations
Administrative Procedure Act: The changes proposed in this notice
conform the patent-related rules of practice in 37 CFR to the changes
to title 35 U.S.C. contained in Public Law 107-273. Therefore, these
changes involve interpretive rules or rules of agency practice and
procedure under 5 U.S.C. 553(b)(A). See Bachow Communications Inc. v.
FCC, 237 F.3d 683, 690 (D.C. Cir. 2001); Paralyzed Veterans of America
v. West 138 F.3d 1434, 1436 (Fed. Cir. 1998); and Komjathy v. National
Transportation Safety Board, 832 F.2d 1294, 1296-97 (D.C. Cir. 1987).
Therefore, prior notice and opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b) or (c) (or any other law).
Nevertheless, the Office is providing this opportunity for public
comment on the changes proposed in this notice because the Office
desires the benefit of public comment on these proposed changes.
Regulatory Flexibility Act: As prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553 (or any other
law), an initial regulatory flexibility analysis under the Regulatory
Flexibility Act (5 U.S.C. 601 et seq.) is not required. See 5 U.S.C.
603.
Executive Order 13132: This rulemaking does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rulemaking has been determined to be
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act: This notice involves information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). The collections of information involved in
this notice have been reviewed and previously approved by OMB under OMB
control numbers: 0651-0021, 0651-0031, 0651-0032, and 0651-0033. The
United States Patent and Trademark Office is not resubmitting any
information collection package to OMB for its review and approval
because the changes in this notice do not affect the information
collection requirements associated with the information collection
under these OMB control numbers.
The title, description and respondent description of each of the
information collections are shown below with an estimate of each of the
annual reporting burdens. Included in each estimate is the time for
reviewing instructions, gathering and maintaining the data needed, and
completing and reviewing the collection of information. The changes in
this notice conform the patent-related rules of practice in 37 CFR to
the changes to title 35 U.S.C. contained in Public Law 107-273.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101, ANNEX/134/144, PTO-1382, PCT/IPEA/401,
PCT/IB/328, PTO/SB/61/PCT, PTO/SB/64/PCT.
Type of Review: Approved through December of 2003.
Affected Public: Individuals or households, business or other for-
profit, Federal agencies or employees, not-for-profit institutions,
small businesses or organizations, farms, and State, local or tribal
government.
Estimated Number of Respondents: 331,407.
Estimated Time Per Response: 15 minutes to 4 hours.
Estimated Total Annual Burden Hours: 401,202 hours.
Needs and Uses: The information collected is required by the Patent
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify
the filing of patent applications on the same invention in different
countries. It provides for a centralized filing procedure and a
standardized application format.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08A/08B/21/22/23/24/25/26/27/30/31/32/35/37/
36/42/43/61 61/PCT/62/63/64 64/PCT/67/68/91/92/96/97, PTO-2053-A/B,
PTO-2054-A/B, PTO-2055-A/B.
Type of Review: Approved through April of 2003.
Affected Public: Individuals or households, State or local
governments, farms, business or other for-profit institutions, not-for-
profit institutions, small businesses or organizations, and Federal
government.
Estimated Number of Respondents: 2,247,270.
Estimated Time Per Response: 1 minute 48 seconds to 4 hours.
Estimated Total Annual Burden Hours: 1,021,822 hours.
Needs and Uses: During the processing of an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the Office concerning the examination of a
specific application. The specific information required or which may be
submitted includes: Information Disclosure Statements; Terminal
Disclaimers; Petitions to Revive; Express Abandonments; Appeal Notices;
Petitions for Access; Powers to Inspect; Certificates of Mailing or
Transmission; Statements under Sec. 3.73(b); Amendments, Petitions and
their Transmittal Letters; and Deposit Account Order Forms.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/13PCT/16-19/29/101-110.
Type of Review: Approved through April of 2003.
Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions, farms, Federal
government, and State, local, or tribal governments.
Estimated Number of Respondents: 319,350.
Estimated Time Per Response: 24 minutes to 11 hours and 18 minutes.
Estimated Total Annual Burden Hours: 2,984,360 hours.
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the
criteria set forth in the patent statute and regulations. The standard
Fee Transmittal form, New Utility Patent Application Transmittal form,
New Design Patent Application Transmittal form, New Plant Patent
Application Transmittal form, Declaration, Provisional Application
Coversheet, and Plant Patent Application Declaration will assist
applicants in complying with the requirements of the patent statute and
regulations, and will further assist the Office in processing and
examination of the application.
OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/44/50/51, 51S/52/53/55/56/57/58, PTOL-85B.
Type of Review: Approved through January of 2004.
Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions, farms, State, local and
tribal governments, and Federal government.
Estimated Number of Respondents: 205,480.
Estimated Time Per Response: 2 minutes to 2 hours.
Estimated Total Annual Burden Hours: 63,640 hours.
Needs and Uses: This collection of information is required to
administer the patent laws pursuant to title 35, U.S.C., concerning the
issuance of patents and related actions including correcting errors in
printed patents, refiling of patent applications, requesting
reexamination of a patent, and requesting a reissue patent to correct
an error in a patent. The affected public includes any individual or
institution whose application for a patent has been allowed or who
takes action as covered by the applicable rules.
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Office of Patent Legal
Administration, United States Patent and Trademark Office, Washington,
DC 20231, or to the Office of Information and Regulatory Affairs,
Office of Management and Budget, New Executive Office Building, Room
10235, 725 17th Street, NW., Washington, DC 20503, Attention: Desk
Officer for the Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is
proposed to be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES 1.
The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.1 is amended by revising paragraph (c) to read:
Sec. 1.1 Addresses for correspondence with the United States Patent
and Trademark Office.
* * * * *
(c) For reexamination proceedings. (1) Requests for ex parte
reexamination (original request papers only) should be additionally
marked "Mail Stop Ex Parte Reexam."
(2) Requests for inter partes reexamination for original request
papers and all subsequent correspondence filed in the Office, other
than correspondence to the Office of the Solicitor pursuant to Sec.
1.1(a)(3) and Sec. 1.302(c), should be additionally marked "Mail Stop
Inter Partes Reexam."
* * * * *
3. Section 1.13 is amended by revising paragraph (b) to read:
Sec. 1.13 Copies and certified copies.
* * * * *
(b) Certified copies of patents, patent application publications,
and trademark registrations and of any records, books, papers, or
drawings within the jurisdiction of the United States Patent and
Trademark Office and open to the public or persons entitled thereto
will be authenticated by the seal of the United States Patent and
Trademark Office and certified by the Director, or in his or her name,
upon payment of the fee for the certified copy.
4. Section 1.14 is amended by revising paragraph (i)(2) to read as
follows:
Sec. 1.14 Patent applications preserved in confidence.
* * * * *
(i) * * *
(2) A copy of an English language translation of the publication of
an international application which has been filed in the United States
Patent and Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be
furnished upon written request including a showing that the publication
of the application in accordance with PCT Article 21(2) has occurred
and that the U.S. was designated, and upon payment of the appropriate
fee (Sec. 1.19(b)(4)).
* * * * *
5. Section 1.78 is amended by revising paragraph (a)(3) to read as
follows:
Sec. 1.78 Claiming benefit of earlier filing date and cross-
references to other applications.
(a) * * *
(3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2)
of this section is presented after the time period provided by
paragraph (a)(2)(ii) of this section, the claim under 35 U.S.C. 120,
121, or 365(c) for the benefit of a prior-filed copending
nonprovisional application or international application designating the
United States of America may be accepted if the reference identifying
the prior-filed application by application number or international
application number and international filing date was unintentionally
delayed. A petition to accept an unintentionally delayed claim under 35
U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed application
must be accompanied by:
(i) The reference required by 35 U.S.C. 120 and paragraph (a)(2) of
this section to the prior-filed application, unless previously
submitted;
(ii) The surcharge set forth in Sec. 1.17(t); and
(iii) A statement that the entire delay between the date the claim
was due under paragraph (a)(2)(ii) of this section and the date the
claim was filed was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
* * * * *
6. Section 1.191 is amended by revising paragraph (a) to read as
follows:
Sec. 1.191 Appeal to Board of Patent Appeals and Interferences.
(a) Every applicant for a patent or for reissue of a patent, and
every owner of a patent under ex parte reexamination filed under Sec.
1.510 before November 29, 1999, any of whose claims has been twice or
finally (Sec. 1.113) rejected, may appeal from the decision of the
examiner to the Board of Patent Appeals and Interferences by filing a
notice of appeal and the fee set forth in Sec. 1.17(b) within the time
period provided under Sec. Sec. 1.134 and 1.136 for reply.
Notwithstanding the above, for an ex parte reexamination proceeding
filed under Sec. 1.510 on or after November 29, 1999, no appeal may be
filed until the claims have been finally rejected (Sec. 1.113).
Appeals to the Board of Patent Appeals and Interferences in inter
partes reexamination proceedings filed under Sec. 1.913 are controlled
by Sec. Sec. 1.959 through 1.981. Sections 1.191 through 1.198 are not
applicable to appeals in inter partes reexamination proceedings filed
under Sec. 1.913.
* * * * *
7. Section 1.197 is amended by revising paragraph (c) to read as
follows:
Sec. 1.197 Action following decision.
* * * * *
(c) Termination of proceedings.--(1) Proceedings are considered
terminated by the dismissal of an appeal or the failure to timely file
an appeal to the court or a civil action (Sec. 1.304) except:
(i) Where claims stand allowed in an application; or
(ii) Where the nature of the decision requires further action by
the examiner.
(2) The date of termination of proceedings is the date on which the
appeal is dismissed or the date on which the time for appeal to the
court or review by civil action (Sec. 1.304) expires. If an appeal to
the court or a civil action has been filed, proceedings are considered
terminated when the appeal or civil action is terminated. An appeal to
the U.S. Court of Appeals for the Federal Circuit is terminated when
the mandate is issued by the Court. A civil action is terminated when
the time to appeal the judgment expires.
8. Section 1.301 is revised to read as follows:
Sec. 1.301 Appeal to U.S. Court of Appeals for the Federal Circuit.
Any applicant or any owner of a patent involved in any ex parte
reexamination proceeding filed under Sec. 1.510, dissatisfied with the
decision of the Board of Patent Appeals and Interferences, and any
party to an interference dissatisfied with the decision of the Board of
Patent Appeals and Interferences, may appeal to the U.S. Court of
Appeals for the Federal Circuit. The appellant must take the following
steps in such an appeal: In the U.S. Patent and Trademark Office, file
a written notice of appeal directed to the Director (see Sec. Sec.
1.302 and 1.304); and in the Court, file a copy of the notice of appeal
and pay the fee for appeal as provided by the rules of the Court. For
appeals by patent owners and third party requesters in inter partes
reexamination proceedings filed under Sec. 1.913, Sec. 1.983 is
controlling.
9. Section 1.302 is revised to read as follows:
Sec. 1.302 Notice of appeal.
(a) When an appeal is taken to the U.S. Court of Appeals for the
Federal Circuit, the appellant shall give notice thereof to the
Director within the time specified in Sec. 1.304.
(b) In interferences, the notice must be served as provided in
Sec. 1.646.
(c) In ex parte reexamination proceedings, the notice must be
served as provided in Sec. 1.550(f).
(d) In inter partes reexamination proceedings, the notice must be
served as provided in Sec. 1.903.
(e) Notices of appeal directed to the Director shall be mailed to
or served by hand on the General Counsel as provided in Sec. 104.2.
10. Section 1.303 is amended by revising paragraphs (a), (b), and
(d) to read as follows:
Sec. 1.303 Civil action under 35 U.S.C. 145, 146, 306.
(a) Any applicant or any owner of a patent involved in an ex parte
reexamination proceeding filed under Sec. 1.510 before November 29,
1999, dissatisfied with the decision of the Board of Patent Appeals and
Interferences, and any party to an interference dissatisfied with the
decision of the Board of Patent Appeals and Interferences may, instead
of appealing to the U.S. Court of Appeals for the Federal Circuit
(Sec. 1.301), have remedy by civil action under 35 U.S.C. 145 or 146,
as appropriate. Such civil action must be commenced within the time
specified in Sec. 1.304.
(b) If an applicant in an ex parte case or an owner of a patent
involved in an ex parte reexamination proceeding filed under Sec.
1.510 before November 29, 1999, has taken an appeal to the U.S. Court
of Appeals for the Federal Circuit, he or she thereby waives his or her
right to proceed under 35 U.S.C. 145.
* * * * *
(d) For an ex parte reexamination proceeding filed under Sec.
1.510 on or after November 29, 1999, and for an inter partes
reexamination proceeding filed under Sec. 1.913, no remedy by civil
action under 35 U.S.C. 145 is available.
11. Section 1.304 is amended by revising paragraph (a)(1) to read
as follows:
Sec. 1.304 Time for appeal or civil action.
(a)(1) The time for filing the notice of appeal to the U.S. Court
of Appeals for the Federal Circuit (Sec. 1.302) or for commencing a
civil action (Sec. 1.303) is 2 months from the date of the decision of
the Board of Patent Appeals and Interferences. If a request for
rehearing or reconsideration of the decision is filed within the time
period provided under Sec. 1.197(b), or Sec. 1.658(b), the time for
filing an appeal or commencing a civil action shall expire 2 months
after action on the request. If a request for rehearing or
reconsideration of the decision is filed within the time period
provided under Sec. 1.979(a), the time for filing an appeal shall
expire 2 months after action on the last such request made by the
parties.
(i) In interferences, the time for filing a cross-appeal or cross-
action expires:
(A) Fourteen days after service of the notice of appeal or the
summons and complaint; or
(B) Two months after the date of decision of the Board of Patent
Appeals and Interferences, whichever is later.
(ii) In inter partes reexaminations, the time for filing a cross-
appeal expires:
(A) Fourteen days after service of the notice of appeal; or
(B) Two months after the date of decision of the Board of Patent
Appeals and Interferences, whichever is later.
* * * * *
12. Section 1.417 is revised to read as follows:
Sec. 1.417 Submission of translation of international publication.
The submission of an English language translation of the
publication of an international application pursuant to 35 U.S.C.
154(d)(4) must clearly identify the international application to which
it pertains (Sec. 1.5(a)) and be clearly identified as a submission
pursuant to 35 U.S.C. 154(d)(4). Otherwise, the submission will be
treated as a filing under 35 U.S.C. 111(a). Such submissions should be
marked "Box PCT."
13. Section 1.495 is amended by revising paragraphs (c) and (g) to
read as follows:
Sec. 1.495 Entering the national stage in the United States of America.
* * * * *
(c) If applicant complies with paragraph (b) of this section before
expiration of thirty months from the priority date but omits either a
translation of the international application, as filed, into the
English language, if the international application was originally filed
in another language and if any English language translation of the
publication of the international application previously submitted under
35 U.S.C. 154(d) (Sec. 1.417) is not also a translation of the
international application as filed (35 U.S.C. 371(c)(2)), or the oath
or declaration of the inventor (35 U.S.C. 371(c)(4) and Sec. 1.497),
if a declaration of inventorship in compliance with Sec. 1.497 has not
been previously submitted in the international application under PCT
Rule 4.17(iv) within the time limits provided for in PCT Rule 26ter.1,
applicant will be so notified and given a period of time within which
to file the translation and/or oath or declaration in order to prevent
abandonment of the application. The payment of the processing fee set
forth in Sec. 1.492(f) is required for acceptance of an English
translation later than the expiration of thirty months after the
priority date. The payment of the surcharge set forth in Sec. 1.492(e)
is required for acceptance of the oath or declaration of the inventor
later than the expiration of thirty months after the priority date. A
"Sequence Listing" need not be translated if the "Sequence Listing"
complies with PCT Rule 12.1(d) and the description complies with PCT
Rule 5.2(b).
* * * * *
(g) The documents and fees submitted under paragraphs (b) and (c)
of this section must be clearly identified as a submission to enter the
national stage under 35 U.S.C. 371. Otherwise, the submission will be
considered as being made under 35 U.S.C. 111(a).
* * * * *
14. Section 1.913 is revised to read as follows:
Sec. 1.913 Persons eligible to file request for inter partes reexamination
Except as provided for in Sec. 1.907, any person other than the
patent owner or its privies may, at any time during the period of
enforceability of a patent which issued from an original application
filed in the United States on or after November 29, 1999, file a
request for inter partes reexamination by the Office of any claim of
the patent on the basis of prior art patents or printed publications
cited under Sec. 1.501.
15. Section 1.949 is revised to read as follows:
Sec. 1.949 Examiner's Office action closing prosecution in inter
partes reexamination.
Upon consideration of the issues a second or subsequent time, the
examiner shall issue an Office action treating all claims present in
the inter partes reexamination, which may be an action closing
prosecution. The Office action shall set forth all rejections and
determinations not to make a proposed rejection, and the grounds
therefor. An Office action will not usually close prosecution if it
includes a new ground of rejection which was not previously addressed
by the patent owner, unless the new ground was necessitated by an
amendment.
16. Section 1.953 is amended by revising paragraph (a) to read as
follows:
Sec. 1.953 Examiner's Right of Appeal Notice in inter partes
reexamination.
(a) Upon considering the comments of the patent owner and the third
party requester subsequent to the Office action closing prosecution in
an inter partes reexamination, or upon expiration of the time for
submitting such comments, or upon a determination of patentability of
all claims in the proceeding, the examiner shall issue a Right of
Appeal Notice, unless the examiner reopens prosecution and issues
another Office action on the merits.
* * * * *
17. Section 1.959 is amended by adding a new paragraph (f) to read
as follows:
Sec. 1.959 Notice of appeal and cross appeal to Board of Patent
Appeals and Interferences in inter partes reexamination.
* * * * *
(f) If a notice of appeal or cross appeal is timely filed but does
not comply with any requirement of this section, appellant will be
notified of the reasons for non-compliance and provided with a non-
extendable period of one month within which to file an amended notice
of appeal or cross appeal. If the appellant does not then file an
amended notice of appeal or cross appeal within the one-month period,
or files a notice which does not overcome all the reasons for non-
compliance stated in the notification of the reasons for non-
compliance, that appellant's appeal or cross appeal will stand
dismissed.
18. Section 1.965 is amended by revising paragraph (d) to read as
follows:
Sec. 1.965 Appellant's brief inter partes reexamination.
* * * * *
(d) If a brief is filed which does not comply with all the
requirements of paragraphs (a) and (c) of this section, appellant will
be notified of the reasons for non-compliance and provided with a non-
extendable period of one month within which to file an amended brief.
If the appellant does not file an amended brief during the one-month
period, or files an amended brief which does not overcome all the
reasons for non-compliance stated in the notification, that appellant's
appeal will stand dismissed.
19. Section 1.967 is amended by revising paragraph (c) to read as
follows:
Sec. 1.967 Respondent's brief in inter partes reexamination.
* * * * *
(c) If a respondent brief is filed which does not comply with all
the requirements of paragraphs (a) and (b) of this section, respondent
will be notified of the reasons for non-compliance and provided with a
non-extendable period of one month within which to file an amended
brief. If the respondent does not file an amended brief during the one-
month period, or files an amended brief which does not overcome all the
reasons for non-compliance stated in the notification, the respondent
brief will not be considered.
20. Section 1.971 is revised to read as follows:
Sec. 1.971 Rebuttal brief in inter partes reexamination.
(a) Within one month of the examiner's answer in an inter partes
reexamination appeal, any appellant may once file a rebuttal brief in
triplicate. The rebuttal brief of the patent owner may be directed to
the examiner's answer and/or any respondent brief. The rebuttal brief
of any third party requester may be directed to the examiner's answer
and/or the respondent brief of the patent owner. The rebuttal brief of
a third party requester may not be directed to the respondent brief of
any other third party requester. No new ground of rejection can be
proposed by a third party requester. The time for filing a rebuttal
brief may not be extended. The rebuttal brief must include a
certification that a copy of the rebuttal brief has been served in its
entirety on all other parties to the reexamination proceeding. The
names and addresses of the parties served must be indicated.
(b) If a rebuttal brief is filed which does not comply with all the
requirements of paragraph (a) of this section, appellant will be
notified of the reasons for non-compliance and provided with a non-
extendable period of one month within which to file an amended rebuttal
brief. If the appellant does not file an amended rebuttal brief during
the one-month period, or files an amended rebuttal brief which does not
overcome all the reasons for non-compliance stated in the notification,
that appellant's rebuttal brief will not be considered.
21. Section 1.977 is amended by revising paragraph (g) to read as
follows:
Sec. 1.977 Decision by the Board of Patent Appeals and Interferences;
remand to examiner in inter partes reexamination.
* * * * *
(g) The time period set forth in paragraph (b) of this section is
subject to the extension of time provisions of Sec. 1.956, when the
owner is responding under paragraph (b)(1) of this section. The time
period set forth in paragraph (b) of this section may not be extended
when the owner is responding under paragraph (b)(2) of this section.
The time periods set forth in paragraphs (c) and (e) of this section
may not be extended.
22. Section 1.979 is amended by revising paragraphs (e) and (f) to
read as follows:
Sec. 1.979 Action following decision by the Board of Patent Appeals
and Interferences or dismissal of appeal in inter partes reexamination.
* * * * *
(e) The parties to an appeal to the Board of Patent Appeals and
Interferences may not appeal to the U.S. Court of Appeals for the
Federal Circuit under Sec. 1.983 until all parties' rights to request
rehearing have been exhausted, at which time the decision of the Board
of Patent Appeals and Interferences is final and appealable by any
party to an appeal to the Board of Patent Appeals and Interferences who
is dissatisfied with the final decision of the Board of Patent Appeals
and Interferences.
(f) An appeal to the Board of Patent Appeals and Interferences by a
party is considered terminated by the dismissal of that party's appeal,
the failure of the party to timely request rehearing under Sec.
1.979(a) or (c), or the failure of the party to timely file an appeal
to the U.S. Court of Appeals for the Federal Circuit under Sec. 1.983.
The date of such termination is the date on which the appeal is
dismissed, the date on which the time for rehearing expires, or the
date on which the time for the appeal to the U.S. Court of Appeals for
the Federal Circuit expires. If an appeal to the U.S. Court of Appeals
for the Federal Circuit has been filed, the appeal is considered
terminated when the mandate is issued by the Court. Upon termination of
an appeal, if no other appeal is present, the reexamination proceeding
will be terminated and the Director will issue a certificate under
Sec. 1.997.
* * * * *
23. The undesignated center heading immediately preceding Sec.
1.983 is revised to read as follows:
Appeal to the United States Court of Appeals for the Federal Circuit in
Inter Partes Reexamination
24. Section 1.983 is revised to read as follows:
Sec. 1.983 Appeal to the United States Court of Appeals for the
Federal Circuit in inter partes reexamination.
(a) The patent owner or third party requester in an inter partes
reexamination proceeding who is a party to an appeal to the Board of
Patent Appeals and Interferences and who is dissatisfied with the
decision of the Board of Patent Appeals and Interferences may, subject
to Sec. 1.979(e), appeal to the U.S. Court of Appeals for the Federal
Circuit and may be a party to any appeal thereto taken from a
reexamination decision of the Board of Patent Appeals and
Interferences.
(b) The appellant must take the following steps in such an appeal:
(1) In the U. S. Patent and Trademark Office, timely file a written
notice of appeal directed to the Director in accordance with Sec. Sec.
1.302 and 1.304;
(2) In the Court, file a copy of the notice of appeal and pay the
fee, as provided for in the rules of the Court; and
(3) Serve a copy of the notice of appeal on every other party in
the reexamination proceeding in the manner provided in Sec. 1.248.
(c) If the patent owner has filed a notice of appeal to the U.S.
Court of Appeals for the Federal Circuit, the third party may cross
appeal to the U.S. Court of Appeals for the Federal Circuit if also
dissatisfied with the decision of the Board of Patent Appeals and
Interferences.
(d) If the third party has filed a notice of appeal to the U.S.
Court of Appeals for the Federal Circuit, the patent owner may cross
appeal to the U.S. Court of Appeals for the Federal Circuit if also
dissatisfied with the decision of the Board of Patent Appeals and
Interferences.
(e) A party electing to participate in an appellant's appeal must,
within 14 days of service of the appellant's notice of appeal under
paragraph (b) of this section, or notice of cross appeal under
paragraphs (c) or (d) of this section, take the following steps:
(1) In the U. S. Patent and Trademark Office, timely file a written
notice directed to the Director electing to participate in the
appellant's appeal to the Court by mail to or hand service on the
General Counsel as provided in Sec. 104.2;
(2) In the Court, file a copy of the notice electing to participate
in accordance with the rules of the Court; and
(3) Serve a copy of the notice electing to participate on every
other party in the reexamination proceeding in the manner provided in
Sec. 1.248.
(f) Notwithstanding any provision of the rules, in any
reexamination proceeding commenced prior to November 2, 2002, the third
party requester is precluded from appealing and cross appealing any
decision of the Board of Patent Appeals and Interferences to the U.S.
Court of Appeals for the Federal Circuit, and the third party requester
is precluded from participating in any appeal taken by the patent owner
to the Court.
April 22, 2003 JAMES E. ROGAN
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office