United States Patent and Trademark Office OG Notices: 21 March 2006
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
Docket No.: PTO-P-2006-0007
RIN 0651-AC02
Clarification of Filing Date Requirements for
Ex Parte and Inter Partes Reexamination Proceedings
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Interim rule.
SUMMARY: The United States Patent and Trademark Office (Office) is revising
the rules of practice relating to the filing date requirements for ex parte
and inter partes reexamination proceedings for consistency with the
provisions of the patent statute governing ex parte and inter partes
reexamination proceedings. The Office is specifically revising the rules to
require that a request for ex parte reexamination or for inter partes
reexamination must meet all the applicable statutory requirements before a
filing date is accorded to the request for ex parte reexamination or for
inter partes reexamination.
DATES: Effective Date: March 27, 2006.
Comment Deadline Date: To be ensured of consideration, written comments
must be received on or before April 24, 2006. No public hearing will be
held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: ac2/comments@uspto.gov. Comments may also be
submitted by mail addressed to: Box Comments - Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, or by facsimile
transmission to (571) 273-7710 marked to the attention of Kenneth M.
Schor. 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.
Comments may also be sent by electronic mail message over the Internet
via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web
site (http://www.regulations.gov) for additional instructions on providing
comments via the Federal eRulemaking Portal.
The comments will be available for public inspection at the Office of
the Commissioner for Patents, located in Madison East, Tenth Floor, 600
Dulany Street, Alexandria, Virginia, and will be available via the Office
Internet Web site (address: http://www.uspto.gov). Because 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: By telephone - Kenneth M. Schor, at
(571) 272-7710 or Robert J. Spar at (571) 272-7700; by mail addressed
to U.S. Patent and Trademark Office, Mail Stop Comments - Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of Kenneth M. Schor; by facsimile transmission
to (571) 273-7710 marked to the attention of Kenneth M. Schor; or by
electronic mail message over the Internet addressed to
kenneth.schor@uspto.gov.
SUPPLEMENTARY INFORMATION: The Office is revising the rules of practice in
title 37 of the Code of Federal Regulations (CFR) to require that a request
for ex parte reexamination or for inter partes reexamination must meet all
the applicable statutory requirements in 35 U.S.C. 302 or 311 before a
filing date is accorded to the request for ex parte reexamination or for
inter partes reexamination. Thus, the Office is amending the rules to
clearly require compliance with all the requirements of filing an ex parte
reexamination request (set forth in 37 CFR 1.510(b)) before a filing date
will be assigned to an ex parte reexamination request, and to clearly
require compliance with all the requirements of filing an inter partes
reexamination request (set forth in 37 CFR 1.915(b)) before a filing date
will be assigned to an inter partes reexamination request.
Section 1.510 sets forth the requirements for the content of a request
for ex parte reexamination. Section 1.915 sets forth the requirements for
the content of a request for inter partes reexamination.
Former Sec. 1.510(d) states that the filing date of a request for ex
parte reexamination is "(1) The date on which the request including the
entire fee for requesting reexamination is received in the Patent and
Trademark Office; or (2) The date on which the last portion of the fee for
requesting reexamination is received" (emphasis added). In like manner,
former Sec. 1.919(a) states that "[t]he filing date of a request for inter
partes reexamination is the date on which the request satisfies the fee
requirement of Sec. 1.915(a)" (emphasis added). Given the former rule
language, it may have appeared that compliance with the provisions of Sec.
1.510(b) or Sec. 1.915(b) is not required for obtaining a filing date in
reexamination. However, 35 U.S.C. 302 (for ex parte reexamination) requires
that "[t]he request must set forth the pertinency and manner of applying
cited prior art to every claim for which reexamination is requested."
Likewise, 35 U.S.C. 311(b) (for inter partes reexamination) requires that
the request must "include the identity of the real party in interest" and
"set forth the pertinency and manner of applying cited prior art to every
claim for which reexamination is requested." Reexamination requesters do
not always comply with these statutory requirements when submitting
requests for reexamination. Furthermore, the information missing due to a
lack of compliance with Sec. 1.510(b) or Sec. 1.915(b) is often relevant to
the decision on whether to grant the request for reexamination. This
presents a difficulty for the Office in view of the statutory requirements
of 35 U.S.C. 303 (for ex parte reexamination) and 35 U.S.C. 312 (for inter
partes reexamination) that the decision on the request must be issued
within three months of the filing date of the request for reexamination
because the process of notifying the requester of non-compliance and
obtaining the missing information may very well extend beyond the
three-month statutory deadline, or the information may be provided so close
to the deadline that there is not sufficient time to properly evaluate it.
To address this problem, Secs. 1.510(c) and (d) are revised to clearly
require compliance with all the requirements of Secs. 1.510(a) and (b) in
order to obtain an ex parte reexamination filing date (and a decision on
the request for reexamination). Likewise, Sec. 1.919(a) is revised to
clearly require compliance with all the requirements of Sec. 1.915 in order
to obtain an inter partes reexamination filing date. This revision should
not have a significant impact on reexamination requesters because the
filing date in a reexamination proceeding does not have the same legal
significance as the filing date in other Office patent proceedings (cf. 35
U.S.C. 102(b)). The rules now simply clearly recite that the statutory
requirements for a request for reexamination must be fulfilled before a
filing date will be assigned. See 35 U.S.C. 302 and 35 U.S.C. 311.
Section-by-Section Discussion
Section 1.510: Section 1.510(c) is revised to provide that if a request
for ex parte reexamination does not (1) include the fee for requesting ex
parte reexamination and (2) comply with all the requirements of Sec.
1.510(b), then the person identified as requesting reexamination will be
notified and will generally be given an opportunity to complete the request
within a specified time. If the request is not completed within the time
specified, the request will not be granted a filing date and no decision on
the request will be made. The request may be placed in the patent file as a
citation if it complies with the requirements of Sec. 1.501. Deleted from
former Sec. 1.510(c) is the sentence: "If the fee for requesting
reexamination has been paid but the defect in the request is not corrected
within the specified time, the determination whether or not to institute
reexamination will be made on the request as it then exists."
Section 1.510(c) states that the requester will "generally" be given an
opportunity to complete the request, because, in some instances, it may not
be practical or even possible to provide an opportunity for completion of
the request. For example, the request might be submitted anonymously
(though such is not proper), or without an address, or with an inoperative
address. In such instances, the requester would be notified of the
incomplete request by publication in the Official Gazette, but an
opportunity to complete the request would not be provided.
Section 1.510(d) is revised to provide that the filing date of the
request for an ex parte reexamination request is the date on which the
request satisfies all the requirements of Secs. 1.510(a) and (b). Until
that point, the request for reexamination is not complete.
Section 1.915: Section 1.915(d) is revised to provide that if a request
for inter partes reexamination does not (1) include the fee for requesting
inter partes reexamination and (2) comply with all the requirements of
Sec. 1.915(b), then the person identified as requesting reexamination will
be notified and will generally be given an opportunity to complete the
request within a specified time. If the request is not completed within the
time specified, the request will not be granted a filing date and no
decision on the request will be made.
Section 1.915(d) states that the requester will "generally" be given an
opportunity to complete the request, because, in some instances, it may not
be practical or even possible to provide an opportunity for completion of
the request (see discussion of Sec. 1.510(c)).
Section 1.915(d) stated, prior to the change made via the present rule
making, that the reexamination proceeding may be vacated under this
circumstance. Based on the revision to Sec. 1.919(a) set forth immediately
below, however, the inter partes request will not be granted a filing date
under this circumstance; thus, there will be no reexamination proceeding to
vacate.
Section 1.919: Section 1.919(a) is revised to require that the request
for inter partes reexamination must satisfy all the requirements for the
request set forth in Sec. 1.915, prior to assignment of a filing date.
Until that point, the request for reexamination is not complete.
Rule Making Considerations
Administrative Procedure Act: The changes in this interim rule merely
revise the rules of practice (37 CFR 1.510 and 1.915) to require that a
request for ex parte reexamination or for inter partes reexamination meets
the requirements in 35 U.S.C. 302 and 311 for a request for ex parte
reexamination or for inter partes reexamination before a filing date is
accorded to the request for ex parte reexamination or for inter partes
reexamination. Therefore, these rule changes involve interpretive rules, or
rules of agency practice and procedure under 5 U.S.C. 553(b)(A), and prior
notice and an opportunity for public comment were not required pursuant to
5 U.S.C. 553(b)(A) (or any other law). See Bachow Communications Inc. v.
FCC, 237 F.3d 683, 690 (DC Cir. 2001) (rules governing an application
process are "rules of agency organization, procedure, or practice" and are
exempt from the Administrative Procedure Act's notice and comment
requirement); see also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50,
38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice promulgated
under the authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are
not substantive rules (to which the notice and comment requirements of the
Administrative Procedure Act apply)), and Fressola v. Manbeck, 36 USPQ2d
1211, 1215 (D.D.C. 1995) ("it is doubtful whether any of the rules
formulated to govern patent and trade-mark practice are other than
`interpretative rules, general statements of policy, * * * procedure, or
practice.' ") (quoting C.W. Ooms, The United States Patent Office and the
Administrative Procedure Act, 38 Trademark Rep. 149, 153 (1948)).
Accordingly, prior notice and an opportunity for public comment were not
required pursuant to 5 U.S.C. 553(b)(A) (or any other law).
Regulatory Flexibility Act: As discussed previously, the changes in this
interim rule involve rules of agency practice and procedure under 5 U.S.C.
553(b)(A), and prior notice and an opportunity for public comment were not
required pursuant to 5 U.S.C. 553(b)(A) (or any other law). As prior notice
and an opportunity for public comment were not required pursuant to 5
U.S.C. 553 (or any other law) for the changes in this interim rule, a
regulatory flexibility analysis under the Regulatory Flexibility Act (5
U.S.C. 601 et seq.) is not required for the changes in this interim rule.
See 5 U.S.C. 603.
Executive Order 13132: This rule making does not contain policies with
federalism implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (August 4, 1999).
Executive Order 12866: This rulemaking has been determined to be not
significant for purposes of Executive Order 12866 (September 30, 1993).
Paperwork Reduction Act: This interim rule 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 collection of information involved in this
interim rule has been reviewed and previously approved by OMB under OMB
control number 0651-0033. The United States Patent and Trademark Office is
not resubmitting any information collection to OMB for its review and
approval because the changes in this interim rule do not affect the
information collection requirements associated with the information
collection under OMB control number 0651-0033. The principal impacts of the
changes in this interim rule are to clarify the requirement for compliance
with all the requirements of filing a reexamination before a filing date
will be assigned to a reexamination.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this burden
to: (1) The Office of Information and Regulatory Affairs, Office of
Management and Budget, New Executive Office Building, Room 10202, 725 17th
Street, NW., Washington, DC 20503, Attention: Desk Officer for the Patent
and Trademark Office; and (2) Robert J. Spar, Director, Office of Patent
Legal Administration, Commissioner for Patents, P.O. Box 1450, Alexandria,
Virginia 22313-1450.
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, and Biologics.
. For the reasons set forth in the preamble, 37 CFR part 1 is 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), unless otherwise noted.
. 2. Section 1.510 is amended by revising paragraphs (c) and (d) to read as
follows:
Sec. 1.510 Request for ex parte reexamination.
* * * * *
(c) If the request does not include the fee for requesting ex parte
reexamination required by paragraph (a) of this section and all of the
parts required by paragraph (b) of this section, then the person identified
as requesting reexamination will be so notified and will generally be given
an opportunity to complete the request within a specified time. Failure to
comply with the notice will result in the ex parte reexamination request
not being granted a filing date, and will result in placement of the
request in the patent file as a citation if it complies with the
requirements of Sec. 1.501.
(d) The filing date of the request for ex parte reexamination is the
date on which the request satisfies all the requirements of paragraphs (a)
and (b) of this section.
* * * * *
. 3. Section 1.915 is amended by revising paragraph (d) as follows:
Sec. 1.915 Content of request for inter partes reexamination.
* * * * *
(d) If the inter partes request does not meet all the requirements of
subsection 1.915(b), the person identified as requesting inter partes
reexamination will be so notified and will generally be given an
opportunity to complete the formal requirements of the request within a
specified time. Failure to comply with the notice will result in the inter
partes reexamination request not being granted a filing date.
. 4. Section 1.919 is amended by revising paragraph (a) to read as
follows:
Sec. 1.919 Filing date of request for inter partes reexamination.
(a) The filing date of a request for inter partes reexamination is the
date on which the request satisfies all the requirements for the request
set forth in Sec. 1.915.
* * * * *
February 16, 2006 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office