United States Patent and Trademark Office OG Notices: 25 April 2006
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 41
[Docket No.: PTO-P-2005-0016]
RIN 0651-AB77
Revisions and Technical Corrections
Affecting Requirements for
Ex Parte and Inter Partes Reexamination
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rule making.
SUMMARY: The United States Patent and Trademark Office (Office) is
proposing changes to the rules of practice relating to ex parte and
inter partes reexamination. The Office is proposing to provide for a
patent owner reply to a request for an ex parte reexamination or an
inter partes reexamination prior to the examiner's decision on the
request. The Office is also proposing to prohibit supplemental patent
owner responses to an Office action in an inter partes reexamination
without a showing of sufficient cause. The Office additionally proposes
to designate the correspondence address for the patent as the correct
address for all communications for patent owners in an ex parte
reexamination or an inter partes reexamination, and to simplify the
filing of reexamination papers by providing for the use of a single
"mail stop" address for the filing of substantially all ex parte
reexamination papers (such is already the case for inter partes
reexamination papers). The Office is further proposing to make
miscellaneous clarifying changes as to terminology and applicability of
the reexamination rules.
Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before May 30, 2006. No public hearing
will be held.
ADDRESSES: Comments should be sent by electronic mail over the Internet
addressed to: AB77.comments@uspto.gov. Comments may also be submitted
by mail addressed to: Mail Stop Comments - Patents, Commissioner for
Patents, PO Box 1450, Alexandria, VA 22313-1450; or by facsimile to
(571) 273-7710, 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.
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 Patent Legal Administration, Office of the Deputy Commissioner for
Patent Examination Policy, currently located at Room MDW 07D74 of
Madison West, 600 Dulany Street, Alexandria, Virginia 22313-1450, 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: 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 proposing changes to the rules
of practice relating to ex parte and inter partes as follows:
Proposal I: To provide for a patent owner reply to a request for an
ex parte reexamination or an inter partes reexamination prior to the
examiner's decision on the request.
Proposal II: To prohibit supplemental patent owner responses to an
Office action in an inter partes reexamination without a showing of
sufficient cause.
Proposal III: To designate the correspondence address for the
patent as the correct address for all notices, official letters, and
other communications for patent owners in an ex parte reexamination or
an inter partes reexamination. Also, to simplify the filing of
reexamination papers by providing for the use of "Mail Stop Ex Parte
Reexam" for the filing of all ex parte reexamination papers (not just
ex parte reexamination requests), other than certain correspondence to
the Office of the General Counsel.
Proposal IV: To make miscellaneous clarifying changes as to the
terminology and applicability of the reexamination rules, and to
correct inadvertent errors in the text of certain reexamination rules.
Discussion of Proposals I through IV
Proposal I. To Provide for a Patent Owner Reply to a Request for
Reexamination Prior to Decision on the Request: Since the inception of
reexamination, a patent owner whose patent is challenged by a third
party request for reexamination has not been afforded an opportunity to
comment on the request prior to the examiner's decision on the request.
This is equally so for both ex parte reexamination and inter partes
reexamination. Under Sec. 1.530(a), "[e]xcept as provided in Sec.
1.510(e), no statement or other response by the patent owner in an ex
parte reexamination proceeding shall be filed prior to the
determinations made in accordance with Sec. 1.515 or Sec. 1.520. If a
premature statement or other response is filed by the patent owner, it
will not be acknowledged or considered in making the determination."
Under Sec. 1.540, "[n]o submissions other than the statement pursuant
to Sec. 1.530 and the reply by the ex parte reexamination requester
pursuant to Sec. 1.535 will be considered prior to examination."
Under Sec. 1.939(b), [u]nless otherwise authorized, no paper shall be
filed prior to the initial Office action on the merits of the inter
partes reexamination.
The rule making history for Sec. 1.530(a) addressed the Office's
rationale for the regulatory prohibition of a patent owner response to
a request (prior to the examiner's decision on the request) in a
hearing report issued by the Office, which stated that "several
persons felt that the patent owner should be allowed to comment before
the decision [on the request] under Sec. 1.515 is made. Providing for
such a comment would delay the decision under Sec. 1.515 which must be
made within three months * * *." See Rules of Practice in Patent
Cases; Reexamination Proceedings, 46 FR 29176, 29179 (May 29, 1981)
(final rule). In Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ
985 (Fed. Cir. 1985), the propriety of the Office's regulatory
prohibition of a patent owner response to a request prior to the
decision on the request was upheld by the U.S. Court of Appeals for the
Federal Circuit (hereinafter - the Federal Circuit). The Office argued
in Patlex that this regulatory prohibition was adopted in the interest
of efficiency, in view of the three-month deadline set by Congress in
35 U.S.C. 303. The Office pointed out that the only purpose of the
decision on the request is to decide whether reexamination should go
forward at all, not to decide how any new question of patentability
ultimately will be answered. The Patlex court supported the Office in
this matter based upon the agency's (Office's) expression of a need for
administrative convenience.
Recently, however, the Office initiated a program to process and
examine all new reexamination proceedings in one Central Reexamination
Unit (the CRU). This is expected to permit increased efficiency in
deciding new requests for reexamination to the point where a patent
owner response to a request (prior to the examiner's decision on the
request) can be accommodated, while continuing to comply with the
statutory mandate to decide requests for reexamination within three
months. Accordingly, the Office is proposing to provide for a patent
owner reply to a request for an ex parte reexamination or an inter
partes reexamination prior to the examiner's decision on the request.
Such a patent owner reply would address patentee concerns as to their
current inability to address a request prior to an order. Further, the
patent owner's input could improve the information/evidence and
understanding of the issues before the examiner deciding the request.
That input should serve the purpose of reducing improper/unnecessary
orders and providing more timely patent owner responses on the record
to third party allegations. This proposal should enable the Office to
be better able to weed out those requests that do not raise a
substantial question of patentability, prior to instituting a full-
blown proceeding. Bringing the issues to light earlier via such a
patent owner response to the request should facilitate the
reexamination process pursuant to special dispatch.
As a final point, in order to address the statutory mandate to
decide all requests for reexamination within three months, the content
and time for filing the patent owner's response (to the request) will
be strictly limited. This should enable the Office to comply with the
statute, while obtaining the benefits of the patent owner's comments
prior to deciding the request.
This proposal involves providing new sections Sec. 1.512 and Sec.
1.921, and revising Sec. 1.510(b), Sec. 1.515(a), Sec. 1.530(a),
Sec. 1.915(b) and Sec. 1.923.
Proposal II. To Prohibit Supplemental Patent Owner Responses to an
Office Action Without a Showing of Sufficient Cause: The Office is
proposing to amend Sec. 1.945 to provide that a patent owner
supplemental response (which can be filed to address a third party
requester's comments on patent owner's initial response to an Office
action) will be entered only where the patent owner has made a showing
of sufficient cause as to why the supplemental response should be
entered.
Pursuant to Sec. 1.937(b), an inter partes reexamination
proceeding is "conducted in accordance with Secs. 1.104 through
1.116, the sections governing the application examination process * * *
except as otherwise provided * * * " Thus, a patent owner's response
to an Office action is governed by Sec. 1.111. Prior to the revision
of Sec. 1.111(a)(2) implemented via the final rule, Changes To Support
Implementation of the United States Patent and Trademark Office 21st
Century Strategic Plan, 69 FR 56482 (Sept. 21, 2004), 1287 Off. Gaz.
Pat. Office 67 (Oct. 12, 2004) (final rule), a patent owner could, in
effect, file an unlimited number of supplemental responses to an Office
action for an inter partes reexamination proceeding, thereby delaying
prosecution. The changes to Sec. 1.111(a)(2) made in the Strategic
Plan final rule, in effect, addressed this undesirable consequence of
the rules in inter partes reexamination by providing that a reply (or
response, in reexamination) which is supplemental to a Sec. 1.111(b)
compliant reply will not be entered as a matter of right (with the
exception of a supplemental reply filed while action by the Office is
suspended under Sec. 1.103(a) or (c)). Section 1.111(a)(2)(i), as
implemented in the Strategic Plan final rule, however, also provides
that "the Office may enter" a supplemental response to an Office
action under certain conditions. Thus, a patent owner's supplemental
response that provides additional information, or one that further
amends the claims, could be argued to "simplify the issues for
appeal" and thereby satisfy Sec. 1.111(a)(2)(i)(F), or the
supplemental response might be limited to "cancellation of claims"
(to satisfy Sec. 1.111(a)(2)(i)(A)), or "adoption of the examiner
suggestions" (to satisfy Sec. 1.111(a)(2)(i)(B)). Even a supplemental
response that answers the third party requester comments might, in some
instances, be argued to "simplify the issues for appeal." Whether or
not the supplemental response should be entered is then a question to
be decided by the Office. In order to fully inform both the Office and
the requester (so that the requester can provide rebuttal in its
comments) as to why patent owner deems a supplemental response to be
worthy of entry, it is proposed that the rules be revised to require a
patent owner showing of sufficient cause why entry should be permitted
to accompany any supplemental response by the patent owner. The showing
of sufficient cause would be required to provide: (1) A detailed
explanation of how the criteria of Sec. 1.111(a)(2)(i) is satisfied;
(2) an explanation of why the supplemental response could not have been
presented together with the original response to the Office action; and
(3) a compelling reason to enter the supplemental response.
This proposal would permit the entry of a supplemental response to
an Office action where there is a valid reason for it, and a showing to
that effect is made by the patent owner. At the same time, it would
provide the Office and the requester with notice of patent owner's
reasons for desiring entry and permit the requester to rebut patent
owner's stated position.
This proposal involves Sec. 1.945.
Proposal III. Reexamination Correspondence: 1. The Patent Owner's
Address of Record: Currently, all notices, official letters, and other
communications for patent owners in a reexamination proceeding must be
directed to the attorney or agent of record (see Sec. 1.33(c)) in the
patent file at the address listed on the register of patent attorneys
and agents maintained pursuant to Sec. 11.5 and Sec. 11.11 (unless
there is no attorney or agent of record, in which case the patent
owner(s) address(es) of record are used). The Office has been receiving
reexamination filings where the request has been served on the patent
owner at the correspondence address under Sec. 1.33(a) that is a
correct address for the patent, rather than at the patent owner address
prescribed in Sec. 1.33(c) for use in reexamination. This has been
occurring because the Sec. 1.33(a) address is the address used for
correspondence during the pendency of applications, as well as post-
grant correspondence in patents maturing from such applications.
Further, even if a potential reexamination requester realizes that the
address indicated by Sec. 1.33(c) is the proper patent owner address
to use, patent practitioners occasionally move from one firm to
another, and the potential reexamination requester is then faced with
two (or more) Sec. 1.33(c) addresses for the practitioners of record;
the requester must decide which practitioner address to serve. Finally,
the Sec. 1.33(c) address might not be kept up-to-date, while a
practitioner or patent owner is likely to be inclined to keep the Sec.
1.33(a) address up-to-date for prompt receipt of notices as to the
patent. The Office of Enrollment and Discipline regularly has mail
returned because the register of patent attorneys and agents maintained
pursuant to Sec. 11.5 and Sec. 11.11 is not up-to-date. Thus, the
Sec. 1.33(a) correspondence address for the patent provides a better
or more reliable option for the patent owner's address than does the
register of patent attorneys and agents maintained pursuant to Sec.
11.5 and Sec. 11.11 (the reexamination address for the patent owner
presently called for by Sec. 1.33(c)).
It is to be noted that a change to the correspondence address may
be filed with the Office during the enforceable life of the patent, and
the correspondence address will be used in any correspondence relating
to maintenance fees unless a separate fee address has been specified.
See Sec. 1.33(d). A review of randomly selected recent listings of
inter partes reexamination filings reflected that all had an attorney
or agent of record for the related patents. There were an average of
18.6 attorneys or agents of record for the patents, and for those
attorneys, an average of 3.8 addresses (according to the register of
patent attorneys and agents maintained pursuant to Sec. 11.5 and Sec.
11.11). Although for half of the patents, all of the attorneys or
agents had the same address, one patent had 77 attorneys and agents of
record, and the register reflects 18 different addresses for these
practitioners. In such a patent with many different attorneys and
agents of record, and many of the practitioners being in different
states, mailing a notice related to a reexamination proceeding for the
patent to an attorney or agent of record in the patented file, even the
attorney or agent most recently made of record (e.g., the attorney with
the highest registration number), is likely to result in correspondence
not being received by the appropriate party. Since the correspondence
address of the patent file is used for maintenance fee correspondence,
if a fee address is not specified, patent owners already have an
incentive to keep the correspondence address for a patented file up-to-
date.
Given the choice of relying on either the correspondence address
for the patent or the address for the attorney/agent of record per the
register of patent attorneys and agents (as is presently the case), it
is more reasonable to rely on the correspondence address for the
patent. The patentee should be responsible for updating the
correspondence address for the patent, and if the patentee does not,
then the patentee should bear the risk of a terminated reexamination
prosecution due to the failure to respond to an Office action sent to
an obsolete address. Further, use of the correspondence address for the
patent will provide a potential reexamination requester and the Office
with one simple address to work with, and the requester and the Office
will not be confused in the situations where attorneys move from firm
to firm (as that has become more common). The correspondence address
for the patents is available in public PAIR (Patent Application
Information Retrieval), so that a requester need only click on the
address button for the patent, and he/she will know what address to
use.
The present proposal would accordingly revise Sec. 1.33(c) to
designate the correspondence address for the patent as the correct
address for all notices, official letters, and other communications for
patent owners in reexamination proceedings.
If the present proposal is implemented, the correspondence address
for any pending reexamination proceeding not having the same
correspondence address as that of the patent file will automatically be
changed, by rule, to that of the patent file. For any such proceeding,
it would be strongly encouraged (at that point) that the patent owner
should affirmatively file a Notification of Change of Correspondence
Address in the reexamination proceeding to conform the address of the
proceeding with that of the patent. While the correspondence address
change would automatically be effected (by rule) even if the patent
owner notification is not filed, such a patent owner notification would
clarify the record, and would address the possibility that, absent such
a patent owner notification, correspondence may inadvertently be mailed
to an incorrect address causing a delay in the prosecution.
This aspect of the proposal involves Sec. 1.33.
2. Reexamination correspondence addressed to the Office: In the
final rule Changes to Implement the 2002 Inter Partes Reexamination and
Other Technical Amendments to the Patent Statute, 68 FR 70996 (Dec. 22,
2003), 1278 Off. Gaz. Pat. Office 218 (Jan. 20, 2004), Sec. 1.1(c) was
amended to provide separate mail stops for ex parte reexamination
proceedings and inter partes reexamination proceedings. See Sec.
1.1(c). As per that rule making, the mail stop for ex parte
reexamination proceedings can only be used for the original request
papers for ex parte reexamination. The new mail stop for inter partes
reexamination, on the other hand, includes both original request papers
and all subsequent correspondence filed in the Office (other than
correspondence to the Office of the General Counsel pursuant to
Sec. 1.1(a)(3) and Sec. 1.302(c)), because the Central Reexamination Unit
(CRU) was, and is, the central receiving area for all inter partes
reexamination proceeding papers. The CRU has now also become the central
receiving area for all ex parte reexamination proceeding papers.
Accordingly, it is proposed to simplify the filing of reexamination papers
by permitting the use of "Mail Stop Ex Parte Reexam" for the filing of
all ex parte reexamination follow-on papers (not just ex parte
reexamination requests), other than correspondence to the Office of the
General Counsel pursuant to Secs. 1.1(a)(3) and 1.302(c)).
This aspect of the proposal involves Sec. 1.1(c).
Correspondence relating to all reexamination proceedings is best
handled at one central location where Office personnel have specific
expertise in reexamination because of the unique nature of reexamination
proceedings. That central location is the CRU.
Proposal IV. Clarifying Changes as to Reexamination Rule
Terminology and Applicability, and Correction of Inadvertent Errors in
the Text of Certain Reexamination Rules: The Office is proposing
miscellaneous clarifying changes as to the terminology and
applicability of the reexamination rules. The rule changes of sub-parts
1 and 2 below were proposed in the Changes To Support Implementation of
the United States Patent and Trademark Office 21st Century Strategic
Plan, 68 FR 53816 (Sept. 12, 2003), 1275 Off. Gaz. Pat. Office 23 (Oct.
7, 2003) (notice of proposed rule making) (hereinafter the Strategic
Plan Proposed Rule). The Office did not proceed with those changes in
the final rule Changes To Support Implementation of the United States
Patent and Trademark Office 21st Century Strategic Plan, 69 FR 56482
(Sept. 21, 2004), 1287 Off. Gaz. Pat. Office 67 (Oct. 12, 2004) (final
rule) (hereinafter the Strategic Plan Final Rule). The Office is re-
presenting those proposals after further consideration and in view of
the changes somewhat more recently made by the final rule Rules of
Practice Before the Board of Patent Appeals and Interferences 69 FR
49960 (Aug. 12, 2004), 1286 Off. Gaz. Pat. Office 21 (Sept. 7, 2004)
(final rule) (hereinafter, the Appeals final rule). The essential
substance of all change proposals set forth in Proposal IV, sub-parts 1
and 2, remains as it was in the Strategic Plan Proposed Rule. The four
revisions proposed in Proposal IV are set forth as follows:
1. It is proposed that the rules be amended to clarify that the
patent owner's failure to file a timely response in an ex parte or
inter partes reexamination proceeding will terminate the prosecution of
the reexamination proceeding, but will not terminate or conclude the
reexamination proceeding itself. It is the issuance and publication of
a reexamination certificate that concludes the reexamination
proceeding. This distinction is important, because a reexamination
prosecution which is terminated may be reopened at the option of the
Director where appropriate. For example, a rejection that was withdrawn
during the proceeding may be reinstated after the prosecution has
terminated where the propriety of that rejection has been reconsidered.
In contrast, a reexamination proceeding which has been concluded is not
subject to being reopened. After the reexamination proceeding has been
concluded, the Office is not permitted to reinstate the exact same
ground of rejection in a reexamination proceeding, where the same
question of patentability is raised by the prior art that is the basis
of the rejection. See Sec. 13105, part (a), of the Patent and
Trademark Office Authorization Act of 2002, enacted in Public Law 107-
273, 21st Century Department of Justice Appropriations Authorization
Act, 116 Stat. 1758 (2002).
This distinction between terminating the prosecution of the
reexamination proceeding, and the conclusion of the reexamination
proceeding, was highlighted by the Federal Circuit decision of In re
Bass, 314 F.3d 575, 577, 65 USPQ2d 1156, 1157 (Fed. Cir. 2003), wherein
the Court indicated that:
Until a matter has been completed, however, the PTO may
reconsider an earlier action. See In re Borkowski, 505 F.2d 713,
718, 184 USPQ 29, 32-33 (CCPA 1974). A reexamination is complete
upon the statutorily mandated issuance of a reexamination
certificate, 35 U.S.C. 307(a); the NIRC merely notifies the
applicant of the PTO's intent to issue a certificate. A NIRC does
not wrest jurisdiction from the PTO precluding further review of
the matter.
It is to be noted that both Notice of Intent to Issue Reexamination
Certificate (NIRC) cover sheet forms, i.e., ex parte reexamination Form
PTOL 469 and inter partes reexamination Form PTOL 2068, specifically
state (in their opening sentences) that "[p]rosecution on the merits
is (or remains) closed in this * * * reexamination proceeding. This
proceeding is subject to reopening at the initiative of the Office, or
upon petition." This statement in both forms makes the point that the
NIRC terminates the prosecution in the reexamination proceeding (if
prosecution has not already been terminated, e.g., via failure to
respond), but does not terminate or conclude the reexamination
proceeding itself. Rather, it is the issuance and publication of the
reexamination certificate that concludes the reexamination proceeding.
The rules would be revised accordingly.
Definitional Consideration: In the Strategic Plan Proposed Rule,
the terminology used was that a patent owner's failure to file a timely
response in a reexamination proceeding (and the issuance of the NIRC)
would "conclude" the prosecution of the reexamination proceeding, but
would not terminate the reexamination proceeding, and the issuance and
publication of a reexamination certificate would "terminate" the
reexamination proceeding. This usage of "conclude" and "terminate"
has been reconsidered, however, and the usage of the terms has been
reversed to be consistent with the way the Office defines
"termination," as can be observed in the recent Appeals final rule
(supra.). It is to be noted that the patent statute, in 35 U.S.C.
307(a), states for ex parte reexamination (35 U.S.C. 316 contains an
analogous statement for inter partes reexamination): "In a
reexamination proceeding under this chapter, when the time for appeal
has expired or any appeal proceeding has terminated, the Director will
issue and publish a certificate canceling any claim of the patent
finally determined to be unpatentable, confirming any claim of the
patent determined to be patentable, and incorporating in the patent any
proposed amended or new claim determined to be patentable." (Emphasis
added).
Thus, after the appeal proceeding in the reexamination is
terminated (which terminates the prosecution in the reexamination), the
reexamination proceeding is concluded by the issuance and publication
of the reexamination certificate.
It is further observed that in the Appeals final rule, Sec.
1.116(c) states that "[t]he admission of, or refusal to admit, any
amendment after a final rejection, a final action, an action closing
prosecution, or any related proceedings will not operate to relieve the
* * * reexamination prosecution from termination under Sec. 1.550(d)
or Sec. 1.957(b) * * *." The use of "termination of the prosecution" where
the reexamination proceeding has not concluded is consistent with the
presentation in Sec. 1.116(c) in the Appeals final rule. As a further
indication in the Appeals final rule, Sec. 1.197(a) discusses the passing
of jurisdiction over an application or patent under ex parte reexamination
proceeding to the examiner after a decision by the Board of Patent
Appeals and Interferences, and Sec. 1.197(b) then states that
"[p]roceedings on an application 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 * * *." Thus, the
termination (of the appeal) does not signify the completion of an
application or reexamination proceeding. Rather, the application then
continues until patenting or abandonment, and the reexamination
continues until issuance of the reexamination certificate; at that
point these proceedings are concluded.
The above changes would be directed to Secs. 1.502, 1.550,
1.565(d), 1.570, 1.902, 1.953, 1.957, 1.958, 1.979, 1.991, 1.997, and
41.4.
2. Pursuant to 35 U.S.C. 307(a), "when the time for appeal has
expired or any appeal proceeding has terminated, the Director will
issue and publish a certificate * * *" (emphasis added) for an ex
parte reexamination proceeding. Likewise, for an inter partes
reexamination, 35 U.S.C. 316(a) states that "when the time for appeal
has expired or any appeal proceeding has terminated, the Director shall
issue and publish a certificate" (emphasis added). Accordingly, any
reexamination proceeding is concluded when the reexamination
certificate has been issued and published. It is at that point in time
that the Office no longer has jurisdiction over the patent which has
been reexamined.
Sections 1.570 and 1.997 are the sections that implement the
statutory ex parte and inter partes reexamination certificates,
respectively. The titles of Secs. 1.570 and 1.997, as well as
paragraphs (b) and (d) in both sections, currently refer to the
issuance of the reexamination certificate, but fail to refer to the
publication of the certificate. The titles of Secs. 1.570 and
1.997, as well as paragraphs (b) and (d), are proposed to be revised to
track the language of 35 U.S.C. 307 and 35 U.S.C. 316, and refer to
both issuance and publication, to thereby make it clear in the rules
when the reexamination proceeding is concluded. The other reexamination
rules containing language referring to the issuance of the
reexamination certificate would likewise be revised.
The above changes would be directed to Secs. 1.502, 1.530,
1.550, 1.565(c), 1.570, 1.902, 1.953, 1.957, 1.979, and 1.997.
3. In Sec. 1.137, the introductory text of paragraphs (a) and (b)
states "a reexamination proceeding terminated under Secs.
1.550(d) or 1.957(b) or (c)." [Emphasis added]. As pointed out in the
discussion of the first sub-proposal, when the patent owner fails to
timely respond, it is actually the prosecution of the reexamination
that is terminated under Sec. 1.550(d) for ex parte reexamination, or
is terminated under Sec. 1.957(b) for inter partes reexamination. For
the Sec. 1.957(c) scenario, however, the prosecution of the inter
partes reexamination proceeding is not terminated when the patent owner
fails to timely respond pursuant to Sec. 1.957(c). Rather, an Office
action is issued to permit the third party requester to challenge the
claims found patentable (as to any matter where the requester has
preserved the right of such a challenge), and the prosecution is
"limited to the claims found patentable at the time of the failure to
respond, and to any claims added thereafter which do not expand the
scope of the claims which were found patentable at that time." Section
1.957(c).
It is proposed that the introductory text of Sec. 1.137(a) and
Sec. 1.137(b) be revised to also provide for the situation where the
prosecution is "limited" pursuant to Sec. 1.957(c) (and the
prosecution of the reexamination is not "terminated"). It is also
proposed that Sec. 1.137(e) be revised consistent with Sec. 1.137(a)
and Sec. 1.137(b).
It is noted that Sec. 1.957(c) does, in fact, result in the
"terminating" of reexamination prosecution as to the non-patentable
claims (under Sec. 1.957(b), on the other hand, prosecution is
terminated in toto). It would be confusing, however, to refer to a
termination of reexamination prosecution in the Sec. 1.957(c)
scenario, since the limited termination as to the non-patentable claims
could easily be confused with the termination of the entirety of the
prosecution of Sec. 1.957(b). Accordingly, the Sec. 1.957(c)
"limitation" of the scope of the remaining claims is the language
deemed better suited for use in the rules.
The above changes would be directed to Secs. 1.8, 1.137 and
41.4 (Secs. 1.8 and 41.4 contain language which tracks that of
Sec. 1.137(a) and Sec. 1.137(b), and would thus be revised accordingly).
4. Pursuant to Sec. 1.8(b), a remedy is provided for having
correspondence considered to be timely filed, where correspondence was
mailed or transmitted in accordance with paragraph Sec. 1.8(a) but not
timely received in the Office, and "the application is held to be
abandoned or the proceeding is dismissed, terminated, or decided with
prejudice." Such a remedy is not, however, explicitly provided for in
an inter partes reexamination proceeding where correspondence was
mailed or transmitted in accordance with paragraph Sec. 1.8(a), but
not timely received in the Office. In that case, pursuant to Sec.
1.957(c), the reexamination prosecution is not terminated, but is
rather "limited to the claims found patentable at the time of the
failure to respond, and to any claims added thereafter which do not
expand the scope of the claims which were found patentable at that
time." Therefore, it could appear that Sec. 1.8(b) does not apply to
the Sec. 1.957(c) scenario. Therefore, Sec. 1.8(b) is proposed to be
revised to explicitly provide the Sec. 1.8(b) remedy for the Sec.
1.957(c) scenario as well.
In addition, the certificate of mailing and transmission is
available to an inter partes reexamination third party requester filing
papers. See MPEP Secs. 2624 and 2666.05. Just as a Sec. 1.8(b)
remedy would be provided for the patent owner in the Sec. 1.957(b) and
(c) scenarios, it would also be provided for the requester in the Sec.
1.957(a) scenario.
The above change would be directed to Sec. 1.8.
5. The final rule Rules of Practice Before the Board of Patent
Appeals and Interferences 69 FR 49960 (Aug. 12, 2004), 1286 Off. Gaz.
Pat. Office 21 (Sept. 7, 2004) (final rule) revised the reexamination
appeal rules to remove and reserve Secs. 1.961 to 1.977. In addition,
Secs. 1.959, 1.979, 1.993 were revised and new Secs. 41.60 through 41.81
were added. Revision of some of the reexamination rules referring to these
sections was inadvertently not made. It is proposed to make those changes.
Further, it is proposed that Secs. 1.510(f) and 1.915(c) be revised to
change Sec. 1.34(a) to Sec. 1.34, to update the sections to conform with
the revision of Sec. 1.34 made in final rule Revision of Power of Attorney
and Assignment Practice 69 FR 29865 (May 26, 2004) (final rule).
It is further proposed that Sec. 1.33(c) be revised to add
"Amendments and other papers filed in a reexamination proceeding on
behalf of the patent owner must be signed by the patent owner, or if
there is more than one owner by all the owners, or by an attorney or
agent of record in the patent file, or by a registered attorney or
agent not of record who acts in a representative capacity under the
provisions of Sec. 1.34. Double correspondence with the patent owner
or owners and the patent owner's attorney or agent, or with more than
one attorney or agent, will not be undertaken." These two sentences
were inadvertently deleted from Sec. 1.33(c) via the final rule
Changes to Representation of Others Before the United States Patent and
Trademark Office, 69 FR 35428, 35452 (June 24, 2004) (final rule).
This aspect of the proposal involves Secs. 1.33(c), 1.510(f),
1.915(c), 1.953(b), 1.983(a), and 1.991.
Section-by-Section Discussion
Section 1.1: It is proposed, pursuant to Proposal III, to amend
Sec. 1.1(c)(1) to provide for use of "Mail Stop Ex Parte Reexam" for
the filing of all ex parte reexamination follow-on papers (not just ex
parte reexamination requests), other than certain correspondence to the
Office of the General Counsel. Section 1.1 would be amended by revising
paragraph (c)(1) from its current reading "Requests for ex parte
reexamination (original request papers only) should be additionally
marked `Mail Stop Ex Parte Reexam'" to read "Requests for ex parte
reexamination (original request papers) and all subsequent ex parte
reexamination correspondence filed in the Office, other than
correspondence to the Office of the General Counsel pursuant to Sec.
1.1(a)(3) and Sec. 1.302(c), should be additionally marked `Mail Stop
Ex Parte Reexam.'"
Section 1.8: Section 1.8(b) is proposed to be amended, pursuant to
Proposal IV, to recite "In the event that correspondence is considered
timely filed by being mailed or transmitted in accordance with
paragraph (a) of this section, but not received in the * * * Office
after a reasonable amount of time has elapsed from the time of mailing
or transmitting of the correspondence * * * or the prosecution of a
reexamination proceeding is terminated pursuant to Sec. 1.550(d) or
Sec. 1.957(b) or limited pursuant to Sec. 1.957(c), or a requester
paper is refused consideration pursuant to Sec. 1.957(a), the
correspondence will be considered timely if the party who forwarded
such correspondence * * *."
The language "the prosecution of a reexamination proceeding is
terminated" (for Secs. 1.550(d) and 1.957(b)) clarifies that the
reexamination proceeding is not concluded under Secs. 1.550(d) or
1.957(b), but rather, the prosecution of the reexamination is
terminated.
The language "or the prosecution of a reexamination proceeding is
* * * limited pursuant to Sec. 1.957(c)" more appropriately sets
forth that the Sec. 1.8(b) remedy is applied to avoid the Sec.
1.957(c) consequences of a patent owner failure to respond in an inter
partes reexamination.
The language "or a requester paper is refused consideration
pursuant to Sec. 1.957(a)" more appropriately sets forth that the
Sec. 1.8(b) remedy is applied to avoid the Sec. 1.957(a) consequences
of a failure to file a requester paper in an inter partes
reexamination.
Section 1.17: Sections 1.17(l) and (m) are proposed to be revised,
pursuant to Proposal IV, to clarify that a reexamination proceeding is
not concluded under Secs. 1.550(d) or 1.957(b), but rather, the
prosecution of a reexamination is terminated under Secs. 1.550(d)
or 1.957(b), or reexamination prosecution is limited under Sec.
1.957(c). No change is being proposed as to the fee amounts.
Section 1.33: It is proposed that Sec. 1.33(c) be revised,
pursuant to Proposal III, to replace "the attorney or agent of record
(see Sec. 1.34(b)) in the patent file at the address listed on the
register of patent attorneys and agents maintained pursuant to
Secs. 11.5 and 11.11 or, if no attorney or agent is of record, to
the patent owner or owners at the address or addresses of record" with
"correspondence address." As proposed to be revised, all notices,
official letters, and other communications for the patent owner or
owners in a reexamination proceeding will be directed to the
correspondence address for the patent. As previously discussed, a
change to the correspondence address may be filed with the Office
during the enforceable life of the patent. It is further proposed,
pursuant to Proposal IV, that Sec. 1.33(c) be revised to add
"Amendments and other papers filed in a reexamination proceeding on
behalf of the patent owner must be signed by the patent owner, or if
there is more than one owner by all the owners, or by an attorney or
agent of record in the patent file, or by a registered attorney or
agent not of record who acts in a representative capacity under the
provisions of Sec. 1.34. Double correspondence with the patent owner
or owners and the patent owner's attorney or agent, or with more than
one attorney or agent, will not be undertaken."
Section 1.137: Sections 1.137(a), (b), and (e) are proposed to be
amended, pursuant to Proposal IV, to more appropriately set forth the
Secs. 1.550(d) and 1.957(b) consequences of the patent owner's
failure to make a required response. To do so, the introductory text of
Sec. 1.137(a) and Sec. 1.137(b) is proposed to be revised to recite
"a reexamination prosecution becoming terminated under Secs.
1.550(d) or 1.957(b)" (emphasis added), rather than "a reexamination
proceeding becoming terminated under Secs. 1.550(d) or 1.957(b)"
(emphasis added). In Sec. 1.137(e), "a concluded ex parte reexamination
prosecution" and "a concluded inter partes reexamination prosecution" is
proposed to be inserted in place of "a terminated ex parte reexamination
proceeding" and "a terminated inter partes reexamination proceeding",
respectively.
Sections 1.137(a), (b) and (e) are proposed to be amended to
clarify that the reexamination proceedings under Sec. 1.957(c)
referred to in Secs. 1.137(b) and (c) are limited as to further
prosecution; the prosecution is not terminated. To make this
clarification, the introductory text portions of Sec. 1.137(a) and
Sec. 1.137(b) are proposed to be revised to recite that the
prosecution is "limited under Sec. 1.957(c)," rather than
"terminated." Section 1.137(e) is proposed to be revised to also
refer to "revival" of "an inter partes reexamination limited as to
further prosecution."
Section 1.502: Section 1.502 is proposed to be amended, pursuant to
Proposal IV, to state that the "reexamination proceeding" is
"concluded by the issuance and publication of a reexamination
certificate." That is the point at which citations (having an entry
right in the patent) which were filed after the order of ex parte
reexamination will be placed in the patent file.
Section 1.510: It is proposed that Sec. 1.510(b)(5) be revised,
pursuant to Proposal I, as a conformatory change with respect to new
Sec. 1.512 discussed below. In order to provide the patent owner with
a maximized amount of time to file a reply under Sec. 1.512 to a third
party request, the request must be served on the patent owner by
facsimile transmission, personal service (courier) or overnight
delivery, as opposed to first class mail. Accordingly, Sec.
1.510(b)(5) would be revised to require that the request include a
certification in accordance with Sec. 1.248(b) by the third party
requester that a copy of the request was served in its entirety on the
patent owner at the address as provided for in Sec. 1.33(c) by
facsimile transmission, personal service (courier) or overnight. The
name and address of the party served must be indicated. If service on
the patent owner was not possible, then a duplicate copy must be
supplied to the Office. A filing date will not be granted to the
request until either the certification by the requester is received, or
the Office serves the supplied duplicate copy on the patent owner.
It is further proposed that Sec. 1.510(f) be revised, pursuant to
Proposal IV, to change Sec. 1.34(a) to Sec. 1.34. This change would
update the section to conform with the revision of Sec. 1.34 made in
Revision of Power of Attorney and Assignment Practice 69 FR 29865 (May
26, 2004) (final rule).
Section 1.512: Pursuant to Proposal I, it is proposed to provide
new Sec. 1.512 to provide for a patent owner reply to a request for an
ex parte reexamination prior to the examiner's decision on the request.
Section 1.512(a) would permit a reply to a third party ex parte
reexamination request under Sec. 1.510 to be filed by the patent owner
within thirty days from the date of service of the request on the
patent owner. Since the statute requires that the decision on the
request be issued within three months following the filing of a request
for reexamination, this thirty-day period is not extendable. It is
strongly encouraged that any patent owner reply to a request be faxed
directly to the CRU to ensure receipt and matching with the
reexamination proceeding prior to the examiner's decision on the
request.
It is to be noted that this provision for patent owner reply to a
request does not apply to Director ordered reexaminations and patent
owner requested reexaminations. It does not apply to Director ordered
reexaminations, since there is no request for reexamination. It does
not apply to patent owner requested reexaminations, since the patent
owner can place all of its comments in its request.
Section 1.512(a) would also require that any reply to a request by
the patent owner must be served upon the third party requester in
accordance with Sec. 1.248. Service on the requester of all patent
owner papers is required in a third party requested reexamination.
Section 1.512(b) would require (1) that the total reply to the
request not exceed fifty total pages in length excluding evidence and
reference materials such as prior art references, (2) that the form of
the reply must be in accordance with the requirements of Sec. 1.52,
and (3) that the reply must not include any proposed amendment of the
claims. Fifty pages is deemed a sufficient upper limit for the patent
owner's rebuttal of the requester's case, and an excessive length would
only delay the process. Section 1.512(b) would also require that the
reply not include any proposed amendment of the claims. The
determination on whether to order reexamination is made on the patent
claims as they exist at the filing of the request; thus there is no
need for an amendment at this point in the process, and again, an
amendment would only delay the process.
Section 1.512(c) would provide that the reply will be considered
only to the extent that it relates to the issues raised in the request
for reexamination. Although a reply that does not solely relate to the
issues raised in the request will not be returned to the patent owner,
any portion of the reply that does not relate to the issues raised in
the request will not be considered, and comments will not be provided
by the Office as to what was not considered.
Section 1.512(c) would further provide for the returning or
discarding of the reply papers, if the reply to the request: is not
timely filed, fails to comply with Sec. 1.512(b), or fails to include
a certification that the reply was served upon the requester in
accordance with Sec. 1.248. In these instances, the reply will be
returned to the patent owner or discarded (at the Office's option)
without consideration. Further, there will be no opportunity to file a
supplemental reply, given the time constraints discussed above.
Section 1.512(d) would provide that the third party requester may
not file a paper responsive to the patent owner reply to the request,
and that any such paper will be returned to the requester or discarded
(at the Office's option) without consideration. There is no need for a
further requester paper at this point, since, if reexamination is
denied, third party requester will continue to have (pursuant to Sec.
1.515(c)) the right to seek review by a petition under Sec. 1.181
within one month of the mailing date of the examiner's determination
refusing reexamination. At that point, the requester can address the
patent owner reply to the request.
Section 1.515(a): Section 1.515(a) is proposed to be amended,
pursuant to Proposal IV, as a conformatory change with respect to new
Sec. 1.512. Section 1.515(a) would be revised to state that the
examiner will consider any patent owner reply under Sec. 1.512
together with the request for reexamination, in determining whether to
grant reexamination. The first sentence of Sec. 1.515(a) would read:
"Within three months following the filing date of a request for an ex
parte reexamination under Sec. 1.510, an examiner will consider the
request and any patent owner reply under Sec. 1.512 and determine
whether or not a substantial new question of patentability affecting
any claim of the patent is raised * * *." The bold shows the added
text.
Section 1.530: Section 1.530(a) is proposed to be amended, pursuant
to Proposal I as a conformatory change with respect to new Sec. 1.512.
Currently, Sec. 1.530(a) provides: "Except as provided in Sec.
1.510(e), no statement or other response by the patent owner * * *
shall be filed prior to the determinations made in accordance with
Sec. 1.515 or Sec. 1.520." Since the patent owner would be permitted
to file, prior to the determination made in accordance with Sec.
1.515, a reply to a third party ex parte reexamination request under
Sec. 1.510 if proposed new Sec. 1.512 is adopted, Sec. 1.530(a)
would be revised to provide: "Unless otherwise authorized, no
statement or other response by the patent owner in an ex parte
reexamination proceeding shall be filed prior to the determinations
made in accordance with Sec. 1.515 or Sec. 1.520." This "unless
otherwise authorized" language is the same as is used in the inter
partes reexamination analogous provision Sec. 1.939. In addition, the
disposition of the unauthorized paper would be explicitly set forth in
the Sec. 1.530(a), i.e., the paper will be returned or discarded at
the Office's option.
Section 1.530(k) is proposed to be amended, pursuant to Proposal
IV, to state that proposed amendments in ex parte or inter partes
reexamination are not effective until the reexamination certificate is
both "issued and published" (emphasis added) to conform Sec.
1.530(k) with the language of 35 U.S.C. 307.
Section 1.550: Section 1.550(d) is proposed to be amended, pursuant
to Proposal IV, to recite that "[i]f the patent owner fails to file a
timely and appropriate response to any Office action or any written
statement of an interview required under Sec. 1.560(b), the
prosecution in the ex parte reexamination proceeding will be a
terminated prosecution, and the Director will proceed to issue and
publish a certificate concluding the reexamination proceeding under
Sec. 1.570 * * *" (emphasis added.). This makes it clear that the
patent owner's failure to timely file a required response (or interview
statement) will result in the terminating of prosecution of the
reexamination proceeding, but will not conclude the reexamination
proceeding. It is to be noted that the prosecution will be a terminated
prosecution as of the day after the response was due and not timely
filed. In this instance, the NIRC will be subsequently issued; however,
it will not be the instrument that operates to terminate the
prosecution, since that will have already automatically occurred upon
the failure to respond. Further, "issued and published" is used to
conform Sec. 1.550(d) with the language of 35 U.S.C. 307.
Section 1.565: Pursuant to Proposal IV, it is proposed that Sec.
1.565(c) be amended to set forth that consolidated ex parte
reexamination proceedings will result in the issuance and publication
of a single certificate under Sec. 1.570. As pointed out above, this
tracks the statutory language. It is further proposed that Sec. 1.565(d)
be amended to make it clear that the issuance of a reissue patent for a
merged reissue-reexamination proceeding effects the conclusion of the
reexamination proceeding. This is distinguished from the termination of
the reexamination prosecution, as pointed out above. As a further
technical change, it is proposed to change "consolidated" in Sec.
1.565(c) to "merged," for consistency with the terminology used in
Sec. 1.565(d). There is no difference in the meaning of the two terms,
and the use of different terms in the two subsections is confusing. In
addition, in Sec. 1.565(d), it is proposed to replace "normally"
with "usually," as "normally" is deemed an inadvertent
inappropriate choice of terminology. The same term ("usually") would
be added to Sec. 1.565(c). It is to be noted that there are instances
where the Office does not consolidate or merge an ongoing ex parte
reexamination proceeding with a subsequent reexamination or reissue
proceeding, which are addressed on a case-by-case basis. The following
are examples. If the prosecution in an ongoing ex parte reexamination
proceeding has terminated (e.g., by the issuance of a Notice of Intent
to Issue Reexamination Certificate), the ex parte reexamination
proceedings will generally not be consolidated or merged with a
subsequent reexamination or reissue proceeding. If an ongoing ex parte
reexamination proceeding is ready for decision by the Board of Patent
Appeals and Interferences, or is on appeal to the U.S. Court of Appeals
for the Federal Circuit, it would be inefficient (and contrary to the
statutory mandate for special dispatch) to "pull back" the ongoing ex
parte reexamination proceeding for merger with a subsequent
reexamination or reissue proceeding. As a final example, an ongoing ex
parte reexamination proceeding might be directed to one set of claims
for which a first accused infringer (with respect to the second set)
has filed the ongoing request for reexamination. A later reexamination
request might then be directed to a different set of claims for which a
second accused infringer (with respect to the second set) has filed the
request. In this instance, where there are simply no issues in common,
merger would serve only to delay the resolution of the first
proceeding, representing a harm to the reexamination system. If
reexamination is to act as an effective alternative to litigation, the
ability to decide the question of whether to merge/consolidate based on
the merits of a particular fact pattern must be reserved to the Office.
Section 1.570: Pursuant to Proposal IV, it is proposed that the
heading of Sec. 1.570 and Sec. 1.570(a) be amended to make it clear
that the issuance and publication of the ex parte reexamination
certificate effects the conclusion of the reexamination proceeding. The
failure to timely respond, or the issuance of the NIRC, do not conclude
the reexamination proceeding. Section 1.570, paragraphs (b) and (d),
would be amended to recite that the reexamination certificate is both
issued and published for consistency with the language of 35 U.S.C.
307.
Section 1.902: Pursuant to Proposal IV, it is proposed to amend
Sec. 1.902 to state that the "reexamination proceeding" is
"concluded by the issuance and publication of a reexamination
certificate." That is the point at which citations (having a right to
entry in the patent) which were filed after the order of inter partes
reexamination will be placed in the patent file.
Section 1.915: It is proposed that Sec. 1.915(b)(6) be revised,
pursuant to Proposal I, as a conformatory change with respect to new
Sec. 1.921 discussed below. In order to provide the patent owner with
a maximized amount of time to file a reply under Sec. 1.921 to the
third party's request, the request must be served on the patent owner
by facsimile transmission, personal service (courier) or overnight
delivery, as opposed to first class mail. Accordingly, Sec.
1.915(b)(6) would be revised to require that the request include a
certification in accordance with Sec. 1.248(b) by the third party
requester that a copy of the request was served in its entirety on the
patent owner at the address as provided for in Sec. 1.33(c) by
facsimile transmission, personal service (courier) or overnight. The
name and address of the party served must be indicated. If service on
the patent owner was not possible, then a duplicate copy must be
supplied to the Office. A filing date will not be granted to the
request until either the certification by the requester is received, or
the Office serves the supplied duplicate copy on the patent owner.
Pursuant to Proposal IV, it is proposed that Sec. 1.915(c) be
revised to change Sec. 1.34(a) to Sec. 1.34. This change would update
the section to conform with the revision of Sec. 1.34 made in Revision
of Power of Attorney and Assignment Practice 69 FR 29865 (May 26, 2004)
(final rule).
Section 1.921: Pursuant to Proposal I, it is proposed to provide
new Sec. 1.921 to provide for a patent owner reply to a request for an
inter partes reexamination prior to the examiner's decision on the
request.
Section 1.921(a) would permit a reply to a third party inter partes
reexamination request under Sec. 1.915 to be filed by the patent owner
within thirty days from the date of service of the request on the
patent owner. Since the statute requires that the decision on the
request be issued within three months following the filing of a request
for reexamination, this thirty-day period is not extendable. It is
strongly encouraged that any patent owner reply to a request be faxed
directly to the CRU or hand-carried to the CRU, to ensure receipt and
matching with the reexamination proceeding prior to the examiner's
decision on the request.
It is to be noted that this provision for a patent owner reply to a
request does not apply to Director ordered reexaminations and patent
owner requested reexaminations, since there cannot be a Director
ordered inter partes reexamination or a patent owner requested inter
partes reexamination.
Section 1.921(a) would also require that any reply to a request by
the patent owner must be served upon the third party requester in
accordance with Sec. 1.248. Service on the requester of all patent
owner papers is required in any inter partes reexamination.
Section 1.921(b) would require (1) that the entire reply to the
request not exceed 50 total pages in length excluding evidence and
reference materials such as prior art references, (2) that the form of
the reply must be in accordance with the requirements of Sec. 1.52,
and (3) that the reply must not include any proposed amendment of the
claims. Fifty pages is deemed a sufficient upper limit for the patent
owner's rebuttal of the requester's case, and an excessive length would
only delay the process. Section 1.921(b) would also require that the
reply not include any proposed amendment of the claims. The
determination on whether to order reexamination is made on the patent
claims as they exist at the filing of the request; thus there is no
need for an amendment at this point in the process, and again, an
amendment would only delay the process.
Section 1.921(c) would provide that the reply will be considered
only to the extent that it relates to the issues raised in the request
for reexamination. Although a reply that does not solely relate to the
issues raised in the request will not be returned to the patent owner,
any portion of the reply that does not relate to the issues raised in
the request will not be considered, and comments will not be provided by
the Office as to what was not considered.
Section 1.921(c) would further provide for the returning or
discarding of the reply papers if the reply to the request: Is not
timely filed, fails to comply with Sec. 1.921(b), or fails to include
a certification that the reply was served upon the requester in
accordance with Sec. 1.248. In these instances, the reply will be
returned to the patent owner or discarded (at the Office's option)
without consideration. Further, there will be no opportunity to file a
supplemental reply, given the time constraints discussed above.
Section 1.921(d) would provide that the third party requester may
not file a paper responsive to the patent owner reply to the request,
and that any such paper will be returned to the requester or discarded
(at the Office's option) without consideration. There is no need for a
further requester paper at this point, since, if reexamination is
denied, the third party requester will continue to have (pursuant to
Sec. 1.927) the right to seek review by a petition under Sec. 1.181
within one month of the mailing date of the examiner's determination
refusing reexamination. At that point, the requester can address the
patent owner reply to the request.
Section 1.923: Section 1.923 is proposed to be amended, pursuant to
Proposal I, as a conformatory change with respect to new Sec. 1.921.
Section 1.923 would be revised to state that the examiner will consider
any patent owner reply under Sec. 1.921 together with the request for
reexamination, in determining whether to grant reexamination. In
addition, in the first sentence, "Sec. 1.919" would be changed to
"Sec. 1.915," since it is Sec. 1.915 that provides for the request;
Sec. 1.919 provides for the filing date of the request.
Section 1.945: Currently, Sec. 1.945 provides that "[t]he patent
owner will be given at least thirty days to file a response to any
Office action on the merits of the inter partes reexamination."
Pursuant to Proposal II, it is proposed that Sec. 1.945 be revised to
address the filing of a supplemental response to an Office action. As
it is proposed to revise Sec. 1.945, any supplemental response to an
Office action would be entered only where the supplemental response is
accompanied by a showing of sufficient cause why the supplemental
response should be entered. The showing of sufficient cause would be
required to provide: (1) A detailed explanation of how the requirements
of Sec. 1.111(a)(2)(i) are satisfied; (2) an explanation of why the
supplemental response could not have been presented together with the
original response to the Office action; and (3) a compelling reason to
enter the supplemental response.
The decision on the sufficiency of the showing will not be issued
until after receipt of requester comments under Sec. 1.947 on the
supplemental response, or the expiration of the 30-day period for
requester comments (whichever comes first). The decision would be
communicated to the parties either prior to, or with, the next Office
action on the merits, as is deemed appropriate for the handling of the
case.
A showing of sufficient cause will not be established by an
explanation that the supplemental response is needed to address the
requester's comments (on patent owner's response), and could not have
been presented together with the original response because it was not
known that requester would raise a particular point. The inter partes
reexamination statute (35 U.S.C. 314) provides for the patent owner to
respond to an Office action, and the requester to comment on that
response. There is no intent in the statute to provide the patent owner
with a chance to file a supplemental response to address the
requester's comments.
It is pointed out that no corresponding rule revision is needed in
ex parte reexamination, since there is no third party requester comment
on a patent owner response (that a patent owner will wish to address),
and Sec. 1.111(a)(2) will adequately deal with patent owner
supplemental responses.
Section 1.953: Revision is proposed pursuant to Proposal IV.
Section 1.953(b) states "Any appeal by the parties shall be conducted
in accordance with Secs. 1.959-1.983." This reference to
Secs. 1.959-1.983 is not correct, as some of the referenced rules
have been deleted and others added. Instead of revising the incorrect
reference, the entire sentence is proposed to be deleted as being out
of place in Sec. 1.953, which is not directed to the appeal process,
but rather an Office action notifying parties of the right to appeal.
Section 1.953(c) is proposed to be amended, pursuant to Proposal
IV, to state that if a notice of appeal is not timely filed after a
Right of Appeal Notice, then "prosecution in the inter partes
reexamination proceeding will be terminated." This will not, however,
conclude the reexamination proceeding.
The subheading preceding Sec. 1.956 is proposed to be amended,
pursuant to Proposal IV, to refer to termination of the prosecution of
the reexamination, rather than the termination or conclusion of the
reexamination proceeding, since that is what the sections which follow
address. It is Sec. 1.997 (Issuance of Inter Partes Reexamination
Certificate) that deals with conclusion of the reexamination proceeding.
Section 1.957: Section 1.957(b) is proposed to be amended, pursuant
to Proposal IV, to recite that "[i]f no claims are found patentable,
and the patent owner fails to file a timely and appropriate response *
* *, the prosecution in the reexamination proceeding will be a
terminated prosecution, and the Director will proceed to issue and
publish a certificate concluding the reexamination proceeding under
Sec. 1.997 * * *" (Emphasis added). This makes it clear that the
patent owner's failure to timely file a required response, where no
claim has been found patentable, will result in the terminating of
prosecution of the reexamination proceeding, but will not conclude the
reexamination proceeding. As previously discussed for ex parte
reexamination, the prosecution will be a terminated prosecution as of
the day after the response was due and not timely filed. In this
instance, the NIRC will be subsequently issued; however, it will not be
the instrument that operates to terminate the prosecution, since that
will have already automatically occurred upon the failure to respond.
Also, "issued and published" is used to conform Sec. 1.550(d) with
the language of 35 U.S.C. 316.
Section 1.958: The heading of Sec. 1.958 is proposed to be
amended, pursuant to Proposal IV, to refer to the termination of
prosecution of the reexamination, rather than the termination or
conclusion of the reexamination proceeding, since that is what the rule
addresses.
Section 1.979: Section 1.979(b) is proposed to be amended, pursuant
to Proposal IV, to recite that "[u]pon judgment in the appeal before
the Board of Patent Appeals and Interferences, if no further appeal has
been taken (Sec. 1.983), the prosecution in the inter partes
reexamination proceeding will be terminated and the Director will issue
and publish a certificate under Sec. 1.997 concluding the
proceeding." [Emphasis added]. This makes it clear that the
termination of an appeal for an inter partes reexamination proceeding
will result in a terminating of prosecution of the reexamination
proceeding if no other appeal is present, but will not conclude the
reexamination proceeding. Rather, it is the reexamination certificate
under Sec. 1.997 that concludes the reexamination proceeding.
In addition, the title of Sec. 1.979 is proposed to be amended to
add "appeal" before proceedings, and thus recite "Return of Jurisdiction
from the Board of Patent Appeals and Interferences; termination of
appeal proceedings." This would make it clear that it is the appeal
proceedings that are terminated; the reexamination proceeding is not
terminated or concluded.
Section 1.983: In Sec. 1.983(a), it is proposed, pursuant to
Proposal IV, to change the incorrect reference to Sec. 1.979(e) to the
correct reference, - Sec. 41.81.
Section 1.989: Pursuant to Proposal IV, it is proposed that Sec.
1.989(a) be amended to set forth that consolidated (merged)
reexamination proceedings containing an inter partes reexamination
proceeding will result in the issuance and publication of a single
certificate under Sec. 1.570. As pointed out above, this tracks the
statutory language.
Section 1.991: In Sec. 1.991, it is proposed, pursuant to Proposal
IV, to add "and 41.60-41.81" to "Secs. 1.902 through 1.997,"
since Secs. 41.60-41.81 provide the requester with participation
rights. It is further proposed that Sec. 1.991 be amended to make it
clear that the issuance of a reissue patent for a merged reissue-
reexamination proceeding effects the conclusion of the reexamination
proceeding. This is distinguished from the termination of the
reexamination prosecution, as pointed out above.
Section 1.997: Both the heading of Sec. 1.997 and Sec. 1.997(a)
are proposed to be amended, pursuant to Proposal IV, to make it clear
that the issuance and publication of the inter partes reexamination
certificate effects the conclusion of the reexamination proceeding. The
failure to timely respond, or the issuance of the NIRC, does not
conclude the reexamination proceeding. Section 1.997(a) is also
proposed to be revised to make its language consistent with that of
Sec. 1.570(a). Section 1.997, paragraphs (b) and (d), are proposed to
be amended to recite that the reexamination certificate is both issued
and published, for consistency with the language of 35 U.S.C. 316.
Section 41.4: Paragraph (b) of Sec. 41.4 is proposed to be
amended, pursuant to Proposal IV, to (1) recite to "a reexamination
prosecution becoming terminated under Secs. 1.550(d) or 1.957(b)"
rather than "a reexamination proceeding becoming terminated under
Secs. 1.550(d) or 1.957(b)," and (2) refer to the prosecution as
being "limited" under Sec. 1.957(c) rather than "terminated" under
Sec. 1.957(c). These changes track those made in Sec. 1.137; see the
discussion of Sec. 1.137.
Rule Making Considerations
Regulatory Flexibility Act: For the reasons set forth herein, the
Deputy General Counsel for General Law of the United States Patent and
Trademark Office has certified to the Chief Counsel for Advocacy of the
Small Business Administration that the changes proposed in this notice
will not have a significant economic impact on a substantial number of
small entities. See 5 U.S.C. 605(b). The Office has issued between
about 150,000 and 190,000 patents each year during the last five fiscal
years. The Office receives fewer than 500 requests for ex parte
reexamination each year, and fewer than 100 requests for inter partes
reexamination each year. The principal impact of the changes in this
proposed rule is to prohibit supplemental patent owner responses to an
Office action in an inter partes reexamination without a showing of
sufficient cause.
The change in this proposed rule to prohibit supplemental patent
owner responses to an Office action in an inter partes reexamination
without a showing of sufficient cause will not have a significant
economic impact on a substantial number of small entities for two
reasons. First, assuming that all patentees in an inter partes
reexamination are small entities and that all would have submitted a
supplemental response without sufficient cause, the proposed change
would impact fewer than 100 small entity patentees each year. Second,
there is no petition or other fee for the showing of sufficient cause
that would be necessary under the proposed change for a supplemental
patent owner's response to an Office action in an inter partes
reexamination.
Therefore, the changes proposed in this notice will not have a
significant economic impact on a substantial number of small entities.
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 (Aug. 4, 1999).
Executive Order 12866: This rule making 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: 0651-0027, 0651-0031, 0651-0033, and 0651-0035. The
United States Patent and Trademark Office is not resubmitting the other
information collections listed above to OMB for its review and approval
because the changes in this notice do not affect the information
collection requirements associated with the information collections
under these OMB control numbers. The principal impacts of the changes
in this proposed rule are to: (1) Provide for a patent owner reply to a
request for an ex parte reexamination or an inter partes reexamination
prior to the examiner's decision on the request, (2) prohibit
supplemental patent owner responses to an Office action in an inter
partes reexamination without a showing of sufficient cause, (3) to
designate the correspondence address for the patent as the correspondence
address for all communications for patent owners in ex parte and inter
partes reexaminations, and (4) to provide for the use of a single "mail
stop" address for the filing of substantially all ex parte reexamination
papers (as is already the case for inter partes reexamination papers).
Interested persons are requested to send comments to 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, PO Box 1450,
Alexandria, VA 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
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses, and Biologics.
37 CFR Part 41
Administrative practice and procedure, Inventions and patents, Lawyers.
For the reasons set forth in the preamble, 37 CFR parts 1 and 41
are 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), unless otherwise noted.
2. Section 1.1 is amended by revising paragraph (c)(1) to read as
follows:
Sec. 1.1 Addresses for non-trademark correspondence with the United
States Patent and Trademark Office.
* * * * *
(c) * * *
(1) Requests for ex parte reexamination (original request papers)
and all subsequent ex parte reexamination correspondence filed in the
Office, other than correspondence to the Office of the General Counsel
pursuant to Sec. 1.1(a)(3) and Sec. 1.302(c), should be additionally
marked "Mail Stop Ex Parte Reexam."
* * * * *
3. Section 1.8 is amended by revising the introductory text of
paragraph (b) to read as follows:
Sec. 1.8 Certificate of mailing or transmission.
* * * * *
(b) In the event that correspondence is considered timely filed by
being mailed or transmitted in accordance with paragraph (a) of this
section, but not received in the U.S. Patent and Trademark Office after
a reasonable amount of time has elapsed from the time of mailing or
transmitting of the correspondence, or after the application is held to
be abandoned, or after the proceeding is dismissed or decided with
prejudice, or the prosecution of a reexamination proceeding is
terminated pursuant to Sec. 1.550(d) or Sec. 1.957(b) or limited
pursuant to Sec. 1.957(c), or a requester paper is refused
consideration pursuant to Sec. 1.957(a), the correspondence will be
considered timely if the party who forwarded such correspondence:
* * * * *
4. Section 1.17 is amended by revising paragraphs (l) and (m) to
read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(l) For filing a petition for the revival of an unavoidably
abandoned application under 35 U.S.C. 111, 133, 364, or 371, for the
unavoidably delayed payment of the issue fee under 35 U.S.C. 151, or
for the revival of an unavoidably terminated or limited reexamination
prosecution under 35 U.S.C. 133 (Sec. 1.137(a)):
By a small entity (Sec. 1.27(a)).................. $250.00
By other than a small entity...................... $500.00
(m) For filing a petition for the revival of an unintentionally
abandoned application, for the unintentionally delayed payment of the
fee for issuing a patent, or for the revival of an unintentionally
terminated or limited reexamination prosecution under 35 U.S.C.
41(a)(7) (Sec. 1.137(b)):
By a small entity (Sec. 1.27(a)).................. $750.00
By other than a small entity.................... $1,500.00
* * * * *
5. Section 1.33 is amended by revising paragraph (c) to read as
follows:
Sec. 1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings.
* * * * *
(c) All notices, official letters, and other communications for the
patent owner or owners in a reexamination proceeding will be directed
to the correspondence address. Amendments and other papers filed in a
reexamination proceeding on behalf of the patent owner must be signed
by the patent owner, or if there is more than one owner by all the
owners, or by an attorney or agent of record in the patent file, or by
a registered attorney or agent not of record who acts in a
representative capacity under the provisions of Sec. 1.34. Double
correspondence with the patent owner or owners and the patent owner's
attorney or agent, or with more than one attorney or agent, will not be
undertaken.
* * * * *
6. Section 1.137 is amended by revising its heading, the
introductory text of paragraph (a), the introductory text of paragraph
(b), and paragraph (e) to read as follows:
Sec. 1.137 Revival of abandoned application, terminated reexamination
prosecution, or lapsed patent.
(a) Unavoidable. If the delay in reply by applicant or patent owner
was unavoidable, a petition may be filed pursuant to this paragraph to
revive an abandoned application, a reexamination prosecution terminated
under Secs. 1.550(d) or 1.957(b) or limited under Sec. 1.957(c),
or a lapsed patent. A grantable petition pursuant to this paragraph
must be accompanied by:
* * * * *
(b) Unintentional. If the delay in reply by applicant or patent
owner was unintentional, a petition may be filed pursuant to this
paragraph to revive an abandoned application, a reexamination
prosecution terminated under Secs. 1.550(d) or 1.957(b) or limited
under Sec. 1.957(c), or a lapsed patent. A grantable petition pursuant
to this paragraph must be accompanied by:
* * * * *
(e) Request for reconsideration. Any request for reconsideration or
review of a decision refusing to revive an abandoned application, a
terminated or limited reexamination prosecution, or lapsed patent upon
petition filed pursuant to this section, to be considered timely, must
be filed within two months of the decision refusing to revive or within
such time as set in the decision. Unless a decision indicates
otherwise, this time period may be extended under:
(1) The provisions of Sec. 1.136 for an abandoned application or
lapsed patent;
(2) The provisions of Sec. 1.550(c) for a terminated ex parte
reexamination prosecution, where the ex parte reexamination was filed
under Sec. 1.510; or
(3) The provisions of Sec. 1.956 for a terminated inter partes
reexamination prosecution or an inter partes reexamination limited as
to further prosecution, where the inter partes reexamination was filed
under Sec. 1.913.
* * * * *
7. Section 1.502 is revised to read as follows:
Sec. 1.502 Processing of prior art citations during an ex parte
reexamination proceeding.
Citations by the patent owner under Sec. 1.555 and by an ex parte
reexamination requester under either Sec. 1.510 or Sec. 1.535 will be
entered in the reexamination file during a reexamination proceeding.
The entry in the patent file of citations submitted after the date of
an order to reexamine pursuant to Sec. 1.525 by persons other than the
patent owner, or an ex parte reexamination requester under either Sec.
1.510 or Sec. 1.535, will be delayed until the reexamination
proceeding has been concluded by the issuance and publication of a
reexamination certificate. See Sec. 1.902 for processing of prior art
citations in patent and reexamination files during an inter partes
reexamination proceeding filed under Sec. 1.913.
8. Section 1.510 is amended by revising paragraphs (b)(5), and (f)
to read as follows:
Sec. 1.510 Request for ex parte reexamination.
* * * * *
(b) * * *
(5) If the request was filed by a person other than the patent
owner, a certification in accordance with Sec. 1.248(b) by the requester
that a copy of the request has been served in its entirety on the patent
owner at the address as provided for in Sec. 1.33(c) by facsimile
transmission, personal service (courier) or overnight delivery. The name
and address of the party served must be indicated. If service was not
possible, a duplicate copy must be supplied to the Office. A filing date
will not be granted to the request until the certification is received, or
the Office serves the supplied duplicate copy on the patent owner.
* * * * *
(f) If a request is filed by an attorney or agent identifying
another party on whose behalf the request is being filed, the attorney
or agent must have a power of attorney from that party or be acting in
a representative capacity pursuant to Sec. 1.34.
9. A new Sec. 1.512 is added to read as follows:
Sec. 1.512 Patent owner reply to third party request for ex parte
reexamination.
(a) A reply to a third party ex parte reexamination request under
Sec. 1.510 may be filed by the patent owner within thirty days from
the date of service of the request on the patent owner. This thirty-day
period is not extendable. Any such reply to the request by the patent
owner must be served upon the third party requester in accordance with
Sec. 1.248.
(b) The reply to the request must not exceed fifty pages in length
excluding evidence and reference materials such as prior art
references, must be in accordance with the requirements of Sec. 1.52,
and must not include any proposed amendment of the claims.
(c) The reply will be considered only to the extent that it relates
to the issues raised in the request for reexamination. If a reply to
the request is not timely filed, fails to comply with paragraph (b) of
this section, or fails to include a certification that the reply was
served upon the requester in accordance with Sec. 1.248, the reply
will be returned to the patent owner or discarded (at the Office's
option) without consideration and without an opportunity to file a
supplemental reply.
(d) The third party requester may not file a paper responsive to
the patent owner reply to the request, and any such paper will be
returned to the requester or discarded (at the Office's option) without
consideration.
10. Section 1.515 is amended by revising paragraph (a) to read as
follows:
Sec. 1.515 Determination of the request for ex parte reexamination.
(a) Within three months following the filing date of a request for
an ex parte reexamination under Sec. 1.510, an examiner will consider
the request and any patent owner reply under Sec. 1.512 and determine
whether or not a substantial new question of patentability affecting
any claim of the patent is raised by the request and the prior art
cited therein, with or without consideration of other patents or
printed publications. The examiner's determination will be based on the
claims in effect at the time of the determination, will become a part
of the official file of the patent, and will be mailed to the patent
owner at the address as provided for in Sec. 1.33(c) and to the person
requesting reexamination.
* * * * *
11. Section 1.530 is amended by revising paragraphs (a) and (k) to
read as follows:
Sec. 1.530 Statement by patent owner in ex parte reexamination;
amendment by patent owner in ex parte or inter partes reexamination;
inventorship change in ex parte or inter partes reexamination.
(a) Unless otherwise authorized, no statement or other response by
the patent owner in an ex parte reexamination proceeding shall be filed
prior to the determinations made in accordance with Sec. 1.515 or
Sec. 1.520. If a premature statement or other response is filed by the
patent owner, it will not be acknowledged or considered in making the
determination, and it will be returned or discarded (at the Office's
option).
* * * * *
(k) Amendments not effective until certificate. Although the Office
actions will treat proposed amendments as though they have been
entered, the proposed amendments will not be effective until the
reexamination certificate is issued and published.
* * * * *
12. Section 1.550 is amended by revising paragraph (d) to read as
follows:
Sec. 1.550 Conduct of ex parte reexamination proceedings.
* * * * *
(d) If the patent owner fails to file a timely and appropriate
response to any Office action or any written statement of an interview
required under Sec. 1.560(b), the prosecution in the ex parte
reexamination proceeding will be a terminated prosecution, and the
Director will proceed to issue and publish a certificate concluding the
reexamination proceeding under Sec. 1.570 in accordance with the last
action of the Office.
* * * * *
13. Section 1.565 is amended by revising its paragraphs (c) and
(d), to read as follows:
Sec. 1.565 Concurrent office proceedings which include an ex parte
reexamination proceeding.
* * * * *
(c) If ex parte reexamination is ordered while a prior ex parte
reexamination proceeding is pending and prosecution in the prior ex
parte reexamination proceeding has not been terminated, the ex parte
reexamination proceedings will usually be merged and result in the
issuance and publication of a single certificate under Sec. 1.570. For
merger of inter partes reexamination proceedings, see Sec. 1.989(a).
For merger of ex parte reexamination and inter partes reexamination
proceedings, see Sec. 1.989(b).
(d) If a reissue application and an ex parte reexamination
proceeding on which an order pursuant to Sec. 1.525 has been mailed
are pending concurrently on a patent, a decision will usually be made
to merge the two proceedings or to suspend one of the two proceedings.
Where merger of a reissue application and an ex parte reexamination
proceeding is ordered, the merged examination will be conducted in
accordance with Secs. 1.171 through 1.179, and the patent owner
will be required to place and maintain the same claims in the reissue
application and the ex parte reexamination proceeding during the
pendency of the merged proceeding. The examiner's actions and responses
by the patent owner in a merged proceeding will apply to both the
reissue application and the ex parte reexamination proceeding and will
be physically entered into both files. Any ex parte reexamination
proceeding merged with a reissue application shall be concluded by the
grant of the reissued patent. For merger of a reissue application and
an inter partes reexamination, see Sec. 1.991.
* * * * *
14. Section 1.570 is amended by revising its heading and paragraphs
(a), (b) and (d), to read as follows:
Sec. 1.570 Issuance and publication of ex parte reexamination
certificate concludes ex parte reexamination proceeding.
(a) To conclude an ex parte reexamination proceeding, the Director
will issue and publish an ex parte reexamination certificate in
accordance with 35 U.S.C. 307 setting forth the results of the ex parte
reexamination proceeding and the content of the patent following the ex
parte reexamination proceeding.
(b) An ex parte reexamination certificate will be issued and
published in each patent in which an ex parte reexamination proceeding
has been ordered under Sec. 1.525 and has not been merged with any
inter partes reexamination proceeding pursuant to Sec. 1.989(a). Any
statutory disclaimer filed by the patent owner will be made part of the
ex parte reexamination certificate.
* * * * *
(d) If an ex parte reexamination certificate has been issued and
published which cancels all of the claims of the patent, no further
Office proceedings will be conducted with that patent or any reissue
applications or any reexamination requests relating thereto.
* * * * *
15. Section 1.902 is revised to read as follows:
Sec. 1.902 Processing of prior art citations during an inter partes
reexamination proceeding.
Citations by the patent owner in accordance with Sec. 1.933 and by
an inter partes reexamination third party requester under Sec. 1.915
or Sec. 1.948 will be entered in the inter partes reexamination file.
The entry in the patent file of other citations submitted after the
date of an order for reexamination pursuant to Sec. 1.931 by persons
other than the patent owner, or the third party requester under either
Sec. 1.913 or Sec. 1.948, will be delayed until the inter partes
reexamination proceeding has been concluded by the issuance and
publication of a reexamination certificate. See Sec. 1.502 for
processing of prior art citations in patent and reexamination files
during an ex parte reexamination proceeding filed under Sec. 1.510
16. Section 1.915 is amended by revising paragraphs (b)(6) and (c)
as follows:
Sec. 1.915 Content of request for inter partes reexamination.
* * * * *
(b) * * *
(6) A certification in accordance with Sec. 1.248(b) by the third
party requester that a copy of the request has been served in its
entirety on the patent owner at the address as provided for in Sec.
1.33(c) by facsimile transmission, personal service (courier) or
overnight delivery. The name and address of the party served must be
indicated. If service was not possible, a duplicate copy must be
supplied to the Office. A filing date will not be granted to the
request until the certification is received, or the Office serves the
supplied duplicate copy on the patent owner.
* * * * *
(c) If an inter partes request is filed by an attorney or agent
identifying another party on whose behalf the request is being filed,
the attorney or agent must have a power of attorney from that party or
be acting in a representative capacity pursuant to Sec. 1.34.
* * * * *
17. A new Sec. 1.921 is added to read as follows:
Sec. 1.921 Patent owner reply to third party request for inter partes
reexamination.
(a) A reply to a third party inter partes reexamination request
under Sec. 1.915 may be filed by the patent owner within thirty days
from the date of service of the request on the patent owner. This
thirty-day period is not extendable. Any such reply to the request by
the patent owner must be served upon the third party requester in
accordance with Sec. 1.248.
(b) The reply to the request must not exceed fifty pages in length
excluding evidence and reference materials such as prior art
references, must be in accordance with the requirements of Sec. 1.52,
and must not include any proposed amendment of the claims.
(c) The reply will be considered only to the extent that it relates
to the issues raised in the request for reexamination. If a reply to
the request is not timely filed, fails to comply with paragraph (b) of
this section, or fails to include a certification that the reply was
served upon the requester in accordance with Sec. 1.248, the reply
will be returned to the patent owner or discarded (at the Office's
option) without consideration and without an opportunity to file a
supplemental reply.
(d) The third party requester may not file a paper responsive to
the patent owner reply to the request, and any such paper will be
returned to the requester or discarded (at the Office's option) without
consideration.
18. Section 1.923 is revised to read as follows:
Sec. 1.923 Examiner's determination on the request for inter partes
reexamination.
Within three months following the filing date of a request for
inter partes reexamination under Sec. 1.915, the examiner will
consider the request and any patent owner reply under Sec. 1.921 and
determine whether or not a substantial new question of patentability
affecting any claim of the patent is raised by the request and the
prior art citation. The examiner's determination will be based on the
claims in effect at the time of the determination, will become a part
of the official file of the patent, and will be mailed to the patent
owner at the address as provided for in Sec. 1.33(c) and to the third
party requester. If the examiner determines that no substantial new
question of patentability is present, the examiner shall refuse the
request and shall not order inter partes reexamination.
19. Section 1.945 is revised to read as follows:
Sec. 1.945 Response to Office action by patent owner in inter partes
reexamination.
(a) The patent owner will be given at least thirty days to file a
response to any Office action on the merits of the inter partes
reexamination.
(b) Any supplemental response to the Office action will be entered
only where the supplemental response is accompanied by a showing of
sufficient cause why the supplemental response should be entered. The
showing of sufficient cause must include:
(1) An explanation of how the requirements of Sec. 1.111(a)(2)(i)
are satisfied;
(2) An explanation of why the supplemental response could not have
been presented together with the original response to the Office
action; and
(3) A compelling reason to enter the supplemental response.
20. Section 1.953 is amended by revising paragraphs (b) and (c) to
read as follows:
Sec. 1.953 Examiner's Right of Appeal Notice in inter partes
reexamination.
* * * * *
(b) Expedited Right of Appeal Notice: At any time after the patent
owner's response to the initial Office action on the merits in an inter
partes reexamination, the patent owner and all third party requesters
may stipulate that the issues are appropriate for a final action, which
would include a final rejection and/or a final determination favorable
to patentability, and may request the issuance of a Right of Appeal
Notice. The request must have the concurrence of the patent owner and
all third party requesters present in the proceeding and must identify
all of the appealable issues and the positions of the patent owner and
all third party requesters on those issues. If the examiner determines
that no other issues are present or should be raised, a Right of Appeal
Notice limited to the identified issues shall be issued.
(c) The Right of Appeal Notice shall be a final action, which
comprises a final rejection setting forth each ground of rejection and/
or final decision favorable to patentability including each determination
not to make a proposed rejection, an identification of the status of each
claim, and the reasons for decisions favorable to patentability and/or the
grounds of rejection for each claim. No amendment can be made in response
to the Right of Appeal Notice. The Right of Appeal Notice shall set a one-
month time period for either party to appeal. If no notice of appeal is
filed, prosecution in the inter partes reexamination proceeding will be
terminated, and the Director will proceed to issue and publish a
certificate under Sec. 1.997 in accordance with the Right of Appeal
Notice.
21. The undesignated center heading immediately preceding Sec.
1.956 is revised to read as follows:
Extensions of Time, Terminating of Reexamination Prosecution, and
Petitions to Revive in Inter Partes Reexamination
22. Section 1.957 is amended by revising paragraph (b) to read as
follows:
Sec. 1.957 Failure to file a timely, appropriate or complete response
or comment in inter partes reexamination.
* * * * *
(b) If no claims are found patentable, and the patent owner fails
to file a timely and appropriate response in an inter partes
reexamination proceeding, the prosecution in the reexamination
proceeding will be a terminated prosecution and the Director will
proceed to issue and publish a certificate concluding the reexamination
proceeding under Sec. 1.997 in accordance with the last action of the
Office.
* * * * *
23. Section 1.958 is amended by revising its heading to read as
follows:
Sec. 1.958 Petition to revive inter partes reexamination prosecution
terminated for lack of patent owner response.
* * * * *
24. Section 1.979 is amended by revising its heading and paragraph
(b) to read as follows:
Sec. 1.979 Return of Jurisdiction from the Board of Patent Appeals
and Interferences; termination of appeal proceedings.
* * * * *
(b) Upon judgment in the appeal before the Board of Patent Appeals
and Interferences, if no further appeal has been taken (Sec. 1.983),
the prosecution in the inter partes reexamination proceeding will be
terminated and the Director will issue and publish a certificate under
Sec. 1.997 concluding the proceeding. If an appeal to the U.S. Court
of Appeals for the Federal Circuit has been filed, that appeal is
considered terminated when the mandate is issued by the Court.
25. Section 1.983 is amended by revising paragraph (a) 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. 41.81, 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.
* * * * *
26. Section 1.989 is amended by revising paragraph (a) to read as
follows:
Sec. 1.989 Merger of concurrent reexamination proceedings.
(a) If any reexamination is ordered while a prior inter partes
reexamination proceeding is pending for the same patent and prosecution
in the prior inter partes reexamination proceeding has not been
terminated, a decision may be made to merge the two proceedings or to
suspend one of the two proceedings. Where merger is ordered, the merged
examination will normally result in the issuance and publication of a
single reexamination certificate under Sec. 1.997.
* * * * *
27. Section 1.991 is revised to read as follows:
Sec. 1.991 Merger of concurrent reissue application and inter partes
reexamination proceeding.
If a reissue application and an inter partes reexamination
proceeding on which an order pursuant to Sec. 1.931 has been mailed
are pending concurrently on a patent, a decision may be made to merge
the two proceedings or to suspend one of the two proceedings. Where
merger of a reissue application and an inter partes reexamination
proceeding is ordered, the merged proceeding will be conducted in
accordance with Secs. 1.171 through 1.179, and the patent owner
will be required to place and maintain the same claims in the reissue
application and the inter partes reexamination proceeding during the
pendency of the merged proceeding. In a merged proceeding the third
party requester may participate to the extent provided under Secs.
1.902 through 1.997 and 41.60-41.81, except that such participation
shall be limited to issues within the scope of inter partes
reexamination. The examiner's actions and any responses by the patent
owner or third party requester in a merged proceeding will apply to
both the reissue application and the inter partes reexamination
proceeding and be physically entered into both files. Any inter partes
reexamination proceeding merged with a reissue application shall be
concluded by the grant of the reissued patent.
28. Section 1.997 is amended by revising its heading and paragraphs
(a), (b), and (d) to read as follows:
Sec. 1.997 Issuance and publication of inter partes reexamination
certificate concludes inter partes reexamination proceeding.
(a) To conclude an inter partes reexamination proceeding, the
Director will issue and publish an inter partes reexamination
certificate in accordance with 35 U.S.C. 316 setting forth the results
of the inter partes reexamination proceeding and the content of the
patent following the inter partes reexamination proceeding.
(b) A certificate will be issued and published in each patent in
which an inter partes reexamination proceeding has been ordered under
Sec. 1.931. Any statutory disclaimer filed by the patent owner will be
made part of the certificate.
* * * * *
(d) If a certificate has been issued and published which cancels
all of the claims of the patent, no further Office proceedings will be
conducted with that patent or any reissue applications or any
reexamination requests relating thereto.
* * * * *
PART 41 - PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
29. The authority citation for 37 CFR part 41 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 135.
30. Section 41.4 is amended by revising paragraph (b) to read as
follows:
Sec. 41.4 Timeliness.
* * * * *
(b) Late filings.
(1) A late filing that results in either an application becoming
abandoned or a reexamination prosecution becoming terminated under
Secs. 1.550(d) or 1.957(b) of this title or limited under Sec.
1.957(c) of this title may be revived as set forth in Sec. 1.137 of
this title.
(2) A late filing that does not result in either an application
becoming abandoned or a reexamination prosecution becoming terminated
under Secs. 1.550(d) or 1.957(b) of this title or
limited under Sec. 1.957(c) of this title will be excused upon a
showing of excusable neglect or a Board determination that
consideration on the merits would be in the interest of justice.
* * * * *
March 22, 2006 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office