United States Patent and Trademark Office OG Notices: 08 May 2007
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, Department of Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice relating to ex parte and inter partes
reexamination. The Office is designating 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 simplifying 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 revising the rules to
prohibit supplemental patent owner responses to an Office action in an
inter partes reexamination proceeding without a showing of sufficient
cause. Finally, the Office is making miscellaneous clarifying changes
as to terminology and applicability of the reexamination rules. The
Office is not implementing its proposal (that was set forth in the
proposed rule making) to newly provide for a patent owner reply to a
request for reexamination, prior to the Office's decision on the
request.
DATES: Effective Date: May 16, 2007.
Applicability Date: The changes in this final rule apply to any
reexamination proceeding (ex parte or inter partes) which is pending
before the Office as of May 16, 2007 and to any reexamination
proceeding which is filed after that date.
FOR FURTHER INFORMATION CONTACT: By telephone - Kenneth M. Schor, Senior
Legal Advisor at (571) 272-7710; 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 (e-mail) over the Internet addressed to
kenneth.schor@uspto.gov.
SUPPLEMENTARY INFORMATION: The Office is revising the rules of practice
relating to ex parte and inter partes reexamination as follows:
I: Designating 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, simplifying 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.
II: Prohibiting supplemental patent owner responses to an Office
action in an inter partes reexamination without a showing of sufficient
cause.
III: Making miscellaneous clarifying changes as to the terminology
and applicability of the reexamination rules, and correcting
inadvertent errors in the text of certain reexamination rules.
I. Reexamination Correspondence
Subpart 1 - The Patent Owner's Address of Record: Section 1.33(c)
has been revised to designate the correspondence address for the patent
to be reexamined, or being reexamined, as the correct address for all
notices, official letters, and other communications for patent owners
in reexamination proceedings. Prior to this revision to Sec. 1.33(c),
all notices, official letters, and other communications for patent
owners in a reexamination proceeding had been directed to the attorney
or agent of record in the patent file at the address listed on the
register of patent attorneys and agents maintained by the Office of
Enrollment and Discipline (OED) pursuant to Sec. 11.5 and Sec. 11.11
(hereinafter, the "attorney or agent of record register address").
The correspondence address for any pending reexamination proceeding
not having the same correspondence address as that of the patent is, by
way of this revision to Sec. 1.33(c), automatically changed to that of
the patent file - as of the effective date of this Notice. For any such
proceeding, it is strongly encouraged that the patent owner
affirmatively file a Notification of Change of Correspondence Address
in the reexamination proceeding and/or the patent to conform the
address of the proceeding with that of the patent and to clarify the
record as to which address should be used for correspondence. While the
correspondence address change for the reexamination proceeding is
automatically effected (by rule) even if the patent owner notification
is not filed, such a patent owner notification clarifies the record,
and addresses 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 revision to Sec. 1.33(c) is based on the following: (1) Prior
to the revision, the Office had received reexamination filings where
the request had been served on the patent owner at the correspondence
address under Sec. 1.33(a) that was the correct address for the
patent, rather than at the attorney or agent of record register address
that was the previously prescribed (prior to the present rule revision)
correspondence address in Sec. 1.33(c) for use in reexamination. This
occurred because the Sec. 1.33(a) address was, and is, the address
used for correspondence during the pendency of applications, as well as
post-grant correspondence in patents maturing from such applications.
(2) Further, even if a potential reexamination requester realized that the
attorney or agent of record register address was the proper patent owner's
address to use, patent practitioners occasionally move from one firm to
another, and a potential reexamination requester was then faced with two
(or more) Sec. 1.33(c) addresses for the practitioners of record; the
requester then had to decide which practitioner to serve. (3) Finally, the
"attorney or agent of record register address" might not be kept up-
to-date. In this regard, the OED 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. On the other hand, a
practitioner or patent owner was, and is, likely to be inclined to keep
the Sec. 1.33(a) address up-to-date for prompt receipt of notices
regarding the patent. Thus, the correspondence address for the patent
provides a better or more reliable option for the patent owner's
address than does the address in the register of patent attorneys and
agents maintained by OED pursuant to Sec. 11.5 and Sec. 11.11 (which
was the reexamination address for the patent owner called for by Sec.
1.33(c) prior to the present revision of Sec. 1.33(c)).
As was pointed out in the notice of proposed rule making (Revisions
and Technical Corrections Affecting Requirements for Ex Parte and Inter
Partes Reexamination, 71 FR 16072 (March 30, 2006) 1305 Off. Gaz. Pat.
Office 132 (April 25, 2006)), 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 or agents, 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 in
different states, mailing a notice related to a reexamination
proceeding for the patent to the OED register address of an attorney or
agent of record in the patented file, even the attorney or agent most
recently made of record, is likely to result in correspondence not
being received by the appropriate party (prior to the present rule
change, the notice would have been mailed to the first-listed attorney
or agent of record).
Since the correspondence address of the patent file is used for
maintenance fee correspondence where a fee address is not specified,
patent owners already have an incentive to keep the correspondence
address for a patent 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 was the case prior to the present revision of Sec.
1.33(c)), it is more reasonable to rely on the correspondence address
for the patent. The patentee is responsible for updating the
correspondence address for the patent, and if the patentee does not,
then the patentee appropriately bears 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 provides both a potential reexamination
requester and the Office with one simple address to work with, and the
requester and the Office should not be confused in the situations where
attorneys move from firm to firm (as that has become more common). The
correspondence address for the patent is available in public PAIR
(Patent Application Information Retrieval) at the Office's Web site
http://www.uspto.gov, so that a requester need only click on the address
button for the patent, and he/she will know what address to use.
Subpart 2 - Reexamination correspondence addressed to the Office:
Section 1.1(c) is revised to prescribe 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 correspondence to the
Office of the General Counsel pursuant to Sec. 1.1(a)(3) and Sec.
1.302(c).
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. As per that rule making, the mail stop for ex parte
reexamination proceedings could only be used for the original request
papers for ex parte reexamination. The new mail stop for inter partes
reexamination, on the other hand, was to be used for 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 still 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, the filing of ex parte reexamination
papers is now simplified by revising Sec. 1.1(c) to require the use of
"Mail Stop Ex Parte Reexam" for the filing of all ex parte
reexamination papers (original request papers and all subsequent
correspondence), other than correspondence to the Office of the General
Counsel pursuant to Sec. 1.1(a)(3) and Sec. 1.302(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.
II. To Prohibit Supplemental Patent Owner Responses to an Office Action
Without a Showing of Sufficient Cause
The Office is amending 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 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
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, provides that "the Office may enter" a supplemental response to
an Office action under certain conditions. Whether or not the
supplemental response should be entered, based on the individual
circumstances for submission of a supplemental response is 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, Sec. 1.945 has been 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 must 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 was not presented together with the
original response to the Office action; and (3) a compelling reason to
enter the supplemental response. It is to be noted that in some
instances, where there is a clear basis for the supplemental response,
this three-prong showing may be easily satisfied. Thus, for example,
the patent claim text may have been incorrectly reproduced, where a
patent claim is amended in the original response. In such an instance,
the patent owner need only point to the Sec. 1.111(a)(2)(i)(E)
provision for correction of informalities (e.g., typographical errors),
and state that the incorrect reproduction of the claim was not noted in
the preparation of the original response. The compelling reason to
enter the supplemental response is implicit in such a statement, as the
record for the proceeding certainly must be corrected as to the
incorrect reproduction of the claim.
This revision permits 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 provides
both the Office and the requester with notice of patent owner's reasons
for desiring entry, and it permits the requester to rebut patent
owner's stated position.
It is to be noted that any requester comments filed after a patent
owner response to an Office action must be filed "within 30 days after
the date of service of the patent owner's response." 35 U.S.C.
314(b)(2). Thus, where the patent owner files a supplemental response
to an Office action, the requester would be well advised to file any
comments deemed appropriate within 30 days after the date of service of
the patent owner's supplemental response to preserve requester's
comment right, in the event the Office exercises its discretion to
enter the supplemental response. (The requester's comments may address
whether the patent owner showing is adequate, in addition to addressing
the merits of the supplemental response.) If the patent owner's
supplemental response is not entered by the Office, then both the
supplemental response, and any comments following that supplemental
response, will either be returned to parties or discarded as the Office
chooses in its sole discretion. If the supplemental response and/or
comments were scanned into the electronic Image File Wrapper (IFW) for
the reexamination proceeding, and thus, the papers cannot be physically
returned or discarded, then the supplemental response and/or comments
entries will be marked "closed" and "non-public," and they will not
constitute part of the record of the reexamination proceeding. Such
papers will not display in the Office's image file wrapper that is made
available to the public, patent owners, and representatives of patent
owners, i.e., they will not display in PAIR (Patent Application
Information Retrieval) at the Office's Web site http://www.uspto.gov.
III. Clarifying Changes as to Reexamination Rule Terminology and
Applicability, and Correction of Inadvertent Errors in the Text of
Certain Reexamination Rules
The Office is making miscellaneous clarifying changes as to the
terminology and applicability of the reexamination rules. The rule
changes of sub-parts 1 and 2 below were originally 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) (proposed rule)
(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 then re-presented those proposals in
Revisions and Technical Corrections Affecting Requirements for Ex Parte
and Inter Partes Reexamination, 71 FR 16072 (March 30, 2006) 1305 Off.
Gaz. Pat. Office 132 (April 25, 2006) (proposed rule) after further
consideration and in view of the changes 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 the changes set forth in sub-parts 1 and 2, remains as
originally proposed in the Strategic Plan Proposed Rule.
The four types (sub-parts) of revisions are explained as follows:
Sub-part 1. The rules are amended to clarify that "conclusion" of
a reexamination "proceeding" takes place when the reexamination
certificate is issued and published, while "termination" of the
"prosecution" of the proceeding takes place when the patent owner
fails to file a timely response in an ex parte or inter partes
reexamination proceeding, or a Notice of Intent to Issue Reexamination
Certificate (NIRC) is issued, whichever occurs first. This distinction
is important, because a reexamination prosecution that 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 that has been concluded is not subject to being reopened.
After the reexamination proceeding has been concluded, the Office is
not permitted to reinstate the identical ground of rejection in a
subsequent reexamination proceeding, when the same question of
patentability raised by the prior art in the concluded proceeding is
the basis of the rejection. See section 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.
Each of the Notice of Intent to Issue Reexamination Certificate
cover sheet forms (ex parte reexamination Form PTOL 469 and inter
partes reexamination Form PTOL 2068) specifically states (in its
opening sentence) 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 are 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: "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). 35 U.S.C. 316 contains an analogous statement for inter partes
reexamination. 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" 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 (and
publication) of the reexamination certificate; at that point these
proceedings are concluded.
The above changes are directed to Secs. 1.502, 1.530(l)(2),
1.550, 1.565(d), 1.570, 1.902, 1.953, 1.957, 1.958, 1.979, 1.991,
1.997, and 41.4.
Sub-part 2. The reexamination rules are revised to state that the
reexamination certificate is "issued and published." Prior to this
revision, the rules referred to the issuance of the reexamination
certificate, but failed to refer to the publication of the certificate.
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). 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 that has been reexamined.
Accordingly, the titles of Secs. 1.570 and 1.997, as well as
paragraphs (b) and (d), are now 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 are likewise revised. These changes are 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.
Sub-part 3. In Sec. 1.137, the introductory text of paragraphs (a)
and (b) previously stated "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-part, 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). Accordingly, the
introductory text of Sec. 1.137(a), and that of Sec. 1.137(b), is now
revised to provide for the situation where the prosecution is
"limited" pursuant to Sec. 1.957(c) (and the prosecution of the
reexamination is not "terminated"). Also, Sec. 1.137(e) is revised
consistently with Sec. 1.137(a) and Sec. 1.137(b). Further,
conforming changes are made to Secs. 1.8 and 41.4, which are
revised to contain language that tracks that of Secs. 1.137(a) and
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) "limited" scope of prosecution to the scope of the
claims found patentable is the language deemed better suited for use in
the rules.
Sub-part 4. Section 1.8(b) is revised to explicitly provide a
remedy for an inter partes reexamination proceeding where
correspondence was mailed or transmitted in accordance with paragraph
Sec. 1.8(a) by a patent owner, and 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." Pursuant to the
previous version of Sec. 1.8(b), a remedy was 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 [was] held to be
abandoned or the proceeding is dismissed, terminated, or decided with
prejudice." [Emphasis added.] It could have appeared that Sec. 1.8(b)
did not apply to the Sec. 1.957(c) scenario where prosecution is
"limited" rather than "terminated." Therefore, Sec. 1.8(b) is
revised to explicitly apply the Sec. 1.8(b) remedy in the Sec.
1.957(c) scenario as well.
In addition, the certificate of mailing and transmission is
available to a third party requester filing papers in an inter partes
reexamination. See MPEP 2624 and 2666.05. Just as a Sec. 1.8(b) remedy
is (and was) provided for the patent owner in the Sec. 1.957(b) and
Sec. 1.957(c) scenarios, Sec. 1.8(b) is now revised to explicitly
provide a remedy for the requester in the Sec. 1.957(a) scenario.
Sub-part 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. Revisions of some of the
reexamination rules referring to these sections were inadvertently not
made, and have now been made via this Notice. Further, Secs.
1.510(f) and 1.915(c) are revised to change Sec. 1.34(a) to Sec.
1.34, to update the two 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).
In addition, in the final rule Clarification of Filing Date
Requirements for Ex Parte and Inter Partes Reexamination Proceedings,
71 FR 44219 (Aug. 4, 2006) (final rule), the following errors appear.
At page 44222, it is stated:
"If after receiving a `Notice of Failure to Comply with * * *
Reexamination Request Filing Requirements,' the requester does not
remedy the defects in the request papers that are pointed out, then
the request papers will not be given a filing date, and a control
number will not be assigned * * *. If any identified non-compliant
item has not been corrected, then a filing date (and a control
number) will not be assigned to the request papers."
[Emphasis added]
The Office will, however, be assigning control numbers and receipt
dates to requests for reexamination that are not compliant with the
reexamination filing date requirements. Thus, the text should read, and
is hereby corrected to read:
"If after receiving a `Notice of Failure to Comply with * * *
Reexamination Request Filing Requirements,' the requester does not
remedy the defects in the request papers that are pointed out, then
the request papers will not be given a filing date. The simplest
case * * *. If any identified non-compliant item has not been
corrected, then a filing date will not be assigned to the request
papers."
Comments Received: The Office published a notice proposing the
changes to ex parte and inter partes reexamination practice for
comment. See Revisions and Technical Corrections Affecting Requirements
for Ex Parte and Inter Partes Reexamination, 71 FR 16072 (March 30,
2006) 1305 Off. Gaz. Pat. Office 132 (April 25, 2006) (hereinafter, the
"Revisions and Technical Corrections proposed rule"). In response to
the Revisions and Technical Corrections proposed rule, the Office
received four sets of written comments - one from an intellectual
property organization, two from corporations, and one from a law firm.
There were no comments received from individual patent practitioners or
others.
The following four proposals were set forth in the Revisions and
Technical Corrections proposed rule:
Proposal I: To newly 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
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.
After reviewing the comments, this notice of final rule making: (a)
Adopts Proposals II - IV of the Revisions and Technical Corrections
proposed rule for revision of the rules of practice, while making only
stylistic and non-substantive changes to the relevant rules, which
changes are discussed below, and (b) does not adopt Proposal I of the
Revisions and Technical Corrections proposed rule.
The comments taking issue with the proposals, and the Office's
responses to those comments, now follow. Comments generally in support
of a change that has been adopted are only discussed in some instances.
I. Comments as to Proposal I of the Revisions and Technical Corrections
Proposed Rule
Proposal I, as set forth in the Revisions and Technical Corrections
proposed rule, was to newly provide for a patent owner reply to a
request for reexamination, prior to the Office's decision on the
request. Comments against implementing the proposal in any form, were
advanced by a major intellectual property organization and one of the
two corporations that commented on the proposal. One comment, which was
advanced by the other corporation that commented, was in favor of
implementing the proposal even more liberally in favor of the patent
owner than was proposed.
1. The corporate comment in favor of implementation of Proposal I:
This comment states that commenter believes this proposed rule change
allows for greater input from involved parties before an Examiner
determines whether reexamination should be declared, and that the
greater input would further the goal of a fair and efficient, well-
informed reexamination. The comment further states that the proposed
rule change would allow patentees to inform the Patent Office of facts
that may bear upon the decision on the reexamination
request, such as the outcome of litigation involving prior art
submitted to the Patent Office with the request, and other relevant
factors.
The comment then goes on to request "further clarification and
certain modifications to the proposed rule change." The commenter
urges that patent owner's reply to a Director-ordered examination
should be allowed. The commenter asserts that the discarding/returning
of a non-compliant patent owner reply to a request for reexamination
(without a chance for re-submission) seems unduly harsh, and is unlike
other Office rules that allow a submission to be corrected if not in
proper form. The commenter further requests that various options as to
relief from the 50-page limit for the reply be implemented. Finally,
the commenter suggests implementation of the Electronic Filing System
(EFS) to expedite submission of the reply to the request.
2. The intellectual property organization comment opposed to
implementation of Proposal I: The commenter points out that evidence
has not been proffered to suggest a need for a patent owner to have an
opportunity to reply to a request for reexamination before a decision
has been made by the Office. It is asserted that no evidence has been
advanced as to granted reexaminations that should not have been granted
based on incomplete/inaccurate information, or because of the allegedly
low statutory threshold of a "substantial new question of
patentability" to order reexamination, or because of an examiner
inexperienced in reexamination practices. The commenter later provides
a statistical analysis to show that the Office's reexamination
statistics do not justify implementation of Proposal I without such
evidence.
The comment states that the Office has made a substantial
improvement in the handling of reexamination proceedings by creating
the new Central Reexamination Unit (CRU) dedicated to these
proceedings, resulting in better management of reexamination
proceedings, more timely, detailed and thorough Office actions, and an
increase of the quality of the work product. Given this, it seems
premature to introduce the opportunity for a patent owner to file a
reply before the Office makes a decision on the request before it is
determined that the expertise being applied in the new reexamination
unit will not avoid or at least minimize any problem that is
identified. In addition, there is a concern that placing additional and
perhaps unnecessary burdens on the new CRU will inhibit either the
quality or special dispatch of the work being performed by the CRU.
The comment identifies a "significant concern with the proposed
practice * * * that it has the potential to significantly alter the
balance between the patent owner and a third party in ex parte
reexaminations in further favor of the patent owner." The comment
continues, - "The ex parte reexamination proceeding is recognized as
being one that is biased heavily in favor of the patent owner by
excluding participation by the third party after the request is filed
(unless the patent owner files a statement after the request is granted
that would trigger only one additional opportunity for the third party
to reply to any statement filed by the patent owner) * * *. [U]nder the
proposal, the patent owner effectively would have an opportunity to
file a patent owner's statement before the PTO decision on the request
and thereafter exclude the third party from further participation in
the proceeding by simply not filing any patent owner's statement." The
comment concludes that the Office "should not bias the ex parte
proceeding in further favor of the patent owner, and should not take
steps that will create additional and unnecessary burdens on the
reexamination unit that are likely to further weaken the incentives for
third parties to provide useful information relevant to patentability
to the [Office]." The commenter then adds that "[e]ven in an inter
partes proceeding, we are not aware of any justification for
unnecessarily adding to the burdens of the reexamination unit or
providing opportunities for the patent owner to delay the initiation of
inter partes reexamination."
3. The corporate comment opposed to implementation of Proposal I:
The comment points out some generally favorable aspects of Proposal I,
but counters with a recognition that "the impact of the issuance and
enforcement of potentially invalid patents [is] so detrimental to the
public as to warrant giving the requester every opportunity to proffer
prior art to the Office for its consideration even though some
inefficiencies may result." Commenter expresses a concern that
"permitting the patent owner to respond to the requester's comments
before a reexamination determination is made" could "have the
additional unintended affect [sic, effect] of going beyond merely
addressing whether or not there is a substantial new question of
patentability, thus discouraging third party requesters from using the
reexamination process." The commenter notes the potential that the
proposal "will delay the issuance of orders because of the time spent
by the examiner in reviewing the patent owner's comments. It will also
begin an unofficial `mini' reexamination proceeding before the examiner
actually has made a decision to order reexamination. That is, it will
be difficult for the examiner to avoid considering why the subject
matter as claimed was not anticipated or rendered obvious by the prior
art cited in the request in view of the patent owner's reply before the
order granting reexamination is made. This will result in the
discouraging of third party requester's [sic] from utilizing the
reexamination process because of the perception that the Office may
unintentionally address `the merits' rather than merely determining
whether or not the requester raised a substantial new question of
patentability." The commenter expresses a final concern that
"allowing patent owner comments may actually cause an increase in
petition filings. Ultimately, this churn between the Office and the
requester could create a different source of Office delays as well as
expense for the requester before the order even issues." The commenter
further states: "Particularly for requests worthy of proceeding to
reexamination, the Office should take care to ensure that patent
owner's response does not delay issuance of the order and reexamination
process."
Proposal I is not adopted for the detailed reasons set forth in the
intellectual property organization and corporate comments opposed to
implementation of Proposal I. Reexamination practice will, however, in
the future be re-evaluated to determine whether this proposal should be
reconsidered at a later date.
The corporate comment opposed to implementation of Proposal I
provided suggestions to address some of its concerns, and these will
now be addressed. The suggestions include strictly limiting the patent
owner's response with review to ensure that the patent owner does not
"comment on the merits, rather than just the issue of whether a new
question of patentability is raised" and "placing a high burden on
the patent holder to overcome a request, such as by clear and
convincing evidence." Such suggestions, however, would unduly
complicate and prolong the reexamination proceeding with a requirement
for a highly subjective determination as to what would be, or would not
be, prohibited in a patent owner's direct reply to a reexamination
request.
The commenter that favored implementing Proposal I suggested
implementing the proposal more liberally in favor of the patent owner
than was proposed by the Office. Such points are, however, moot, as the
proposal is not being adopted. The following is also added with respect
to the suggestions made. As to the assertion that the discarding/
returning of a non-compliant patent owner reply without a chance for
re-submission is unlike other Office rules that allow a submission to
be corrected if not in proper form, in this instance there is a three-
month statutory period running against the Office to decide the
request. A reply correction cycle would make it unduly burdensome for
the Office to comply with the three-month statutory mandate. As to the
various options as to liberalizing the 50-page limit for the reply
suggested by commenter, this too would impact on the Office's ability
to comply with the three-month statutory mandate.
As to the suggestion for a patent owner reply to a Director-ordered
reexamination, the following is observed: After reexamination is
ordered at the initiative of the USPTO Director, the patent owner does
in fact have the right to reply via a patent owner's statement under
Sec. 1.530. This right of "reply" takes place before the proceeding
enters into the examination stage, and is essentially what the
commenter is requesting. As to a notification to patent owner prior to
reexamination being ordered at the initiative of the USPTO Director,
which the commenter also refers to, there is no official proceeding at
that point in which to notify the patent owner of the intent to
initiate a reexamination. Also, if such a notice of intent to initiate
a reexamination were issued as suggested by the commenter, that would
be tantamount to ordering reexamination since a substantial new
question of patentability would be needed in each case. The effect
would be the same as initiating reexamination followed by a patent
owner's statement under Sec. 1.530 filed prior to the examination
stage of the proceeding, which is provided for in the current practice.
Further, the suggestion also is subject to the above-discussed concerns
raised in the intellectual property organization and corporate comments
opposed to implementation of Proposal I.
II. Comments as to Proposal II of the Revisions and Technical
Corrections Proposed Rule
Proposal II, as set forth in the Revisions and Technical
Corrections proposed rule, was to prohibit a supplemental patent owner
response to an Office action (which can be filed to address a third
party requester's comments on patent owner's initial response to an
Office action) without an adequate showing of sufficient cause for
entry. This would be implemented by revising Sec. 1.945. Three
comments addressed this proposal.
1. The law firm comment expresses a belief that the proposed
revision to Sec. 1.945 would achieve the Office's purpose of (1)
providing assistance to the Office in exercising its discretion to
enter supplemental replies pursuant to Sec. 1.111(a)(2) in inter
partes reexamination proceedings, and (2) discouraging patent owners
from filing superfluous supplemental replies that delay the
proceedings. The commenter, however, raises certain concerns as to the
proposal.
Commenter correctly points out that, pursuant to the proposal, 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. The commenter then asserts that an explanation of why the
supplemental response "could not" have been presented together with
the original response is not workable. The commenter suggests use of
"was not" in place of "could not" to address the concern. This
point is well taken and is adopted. Once the patent owner explains why
the supplemental response "was not" presented together with the
original response, the Office can evaluate the reason in terms of the
equities it provides. Thus, if the patent owner was reasonably not
aware of a certain fact or circumstance that generated patent owner's
basis for the supplemental response, that will be a factor to be
balanced against the delay in the proceeding and additional resources
to be expended by the requester and the Office.
Commenter also asserts that there is no guidance of what would be a
"compelling reason" to enter the supplemental response.
This point is addressed here in terms of equities. A patent owner
would need to show that its position would be prejudiced by the lack of
entry of a supplemental response in a way that cannot be addressed
later in the proceeding, and that the adverse effect on patent owner is
significant enough to counter-balance the delay in the proceeding and
additional resources to be expended by the requester and the Office.
Thus, if the patent owner simply was not aware of an argument, or even
rebuttal art, that the requester submitted in commenting on the Office
action and patent owner's response, a supplemental response will not be
entered for the purpose of addressing the argument, or rebuttal art.
The purpose of the response is to respond to the Office action, not to
reply to the requester or to reshape the patent owner's response after
obtaining requester's input. Likewise, if the purpose of the
supplemental response is merely to reconfigure claims without making a
material change to the substance, or to add some claims for additional
scope of protection, such would not provide a compelling reason.
2. The intellectual property organization comment supports
implementation of Proposal II. Commenter, however, requests
clarification as follows: "If a patent owner files a supplemental
response to a PTO action in an inter partes reexamination proceeding,
we understand that it must be accompanied by a showing of sufficient
cause. We further understand that the filing of that supplemental
response, whether or not accompanied by an appropriate showing and
whether or not the PTO ultimately enters the supplemental response,
will trigger an opportunity for the third party to file written
comments that may address both the supplemental response and any
showing of sufficient cause. Please confirm whether our understanding
is correct."
In response, the following is provided. It is mandated by statute
that any requester comments filed after a patent owner response to an
Office action must be filed "within 30 days after the date of service
of the patent owner's response." 35 U.S.C. 314(b)(2). Thus, where the
patent owner files a supplemental response to an Office action, the
requester would be well advised to file any comments deemed appropriate
(to address the merits and/or showing of sufficient cause) within 30
days after the date of service of the patent owner's supplemental
response, in case the Office exercises its discretion to enter the
supplemental response. If the supplemental response is not entered,
both the supplemental response and any comments following that
supplemental response will either be returned to parties or discarded
as the Office chooses in its sole discretion. If the supplemental
response and/or comments were scanned into the electronic Image File
Wrapper (IFW) for the reexamination proceeding, and thus, the papers
cannot be physically returned or discarded, then the
supplemental response and/or comments entries will be marked "closed"
and "non-public," and they will not constitute part of the record of
the reexamination proceeding. Such papers will not display in the
Office's image file wrapper that is made available to the public,
patent owners, and representatives of patent owners, i.e., they will
not display in PAIR at the Office's Web site http://www.uspto.gov.
3. One of the two corporate comments opposes Proposal II. Commenter
states that " `compelling reasons' for entering a supplemental reply
is not the standard set by sections 111(a)(2)(i)(A)-(F), and no
justification has been suggested for why a patentee should be subjected
to such an obstacle. We submit that the undefined but presumably
considerable `compelling reason' standard is unnecessary, and will
unfairly prevent patentees from presenting information to the Patent
Office that will assist in achieving a correct outcome in
reexaminations. This will reduce the quality and reliability of
reexamination decisions, and thus this proposed rule should not be
implemented."
The comment is noted, but it is not persuasive in view of the
following: Sections 1.111(a)(2)(i)(A) through (a)(2)(i)(F) were
implemented with a focus on applications for patents, in which the
prosecution is ex parte. For reexamination, however, there is a unique
statutory mandate for special dispatch, which calls for measures to
minimize delays in the proceeding. In an ex parte reexamination
proceeding, delay brought about by a supplemental patent owner response
can be acceptable where the delay is insignificant, in order to achieve
the benefits to which the commenter alludes. In inter partes
reexamination, however, each time the patent owner supplementally
responds, the requester may, be statute, respond within a given time
period; the Office must then process a whole new set of papers for the
parties. Accordingly, the delay in inter partes reexamination is
magnified, when the patent owner supplementally responds. The potential
for extension of the prosecution each time the patent owner files a
supplemental patent owner response is unique to inter partes
reexamination, and will not be permitted without sufficient cause
having been shown.
The Office has been receiving supplemental patent owner responses
purporting to meet the conditions of Sec. 1.111(a)(2)(i)(F), which
have resulted in undue delays in the proceedings, requiring the Office
to evaluate whether such supplemental responses comply with any of the
provisions of Secs. 1.111(a)(2)(i)(A) through (a)(2)(i)(F).
Furthermore, the reexamination statute gives the third party
requester an absolute right to file comments on the patent owner's
response. Accordingly, the Office is forced to evaluate two sets of
papers from each party, causing yet further delay. In addition, the
Office has seen patent owners file multiple supplemental responses
causing dramatic delays in the administrative process (a typical
situation is discussed in the next paragraph). While it is not uncommon
for adverse parties to want to have "the last word," the Office needs
to set reasonable limits in order to control the administrative
process, as well as comply with the statutory mandate for special
dispatch in inter partes reexamination.
A typical situation is as follows. A patent owner wishes to respond
to the requester's comments on the patent owner's response, and the
patent owner thus files a supplemental response to address the
requester's comments. The requester may then choose to supplementally
comment on patent owner's supplemental response. Multiple iterations of
patent owner responses addressing requester comments followed by
further requester comments may then take place. The Office has
experienced this situation in a number of proceedings, and the Office
has needed to address each set of supplemental responses and
supplemental comments - to first ascertain why patent owner filed the
supplemental response and the equities presented by the parties, and
then to decide whether to either close from public view (or return) the
papers, or to enter them, and the Office must perform all the attendant
processing. The present rule revision requires the patent owner to
state, up front, the basis for seeking entry of a supplemental
response, and it gives the requester an opportunity for rebuttal. This
provides the Office with a mechanism for immediately weeding out any
inappropriate supplemental response. Also, the requirement that patent
owner provide the basis for entry will alert the patent owner to
situations where no appropriate basis exists, such that patent owner
will realize it should not make a submission. This will save (a) the
patent owner the effort of making the submission, only to have it
returned, (b) the requester the effort of making a supplemental
comment, only to have it returned, and (c) the Office from having to
expend the resources to address and process the submissions.
It is further to be noted that, in a litigation setting, the courts
have established controls to limit the extent of briefing, and the
Office is likewise justified in limiting the parties' responses to an
Office action. Moreover, regardless of how many patent owner responses
are permitted, it should be noted that the inter partes reexamination
statute (35 U.S.C. 314) specifically contemplates that the requester
has the right to respond to every patent owner submission, thereby
giving the requester "the last word." There is no intent in the
statute to provide the patent owner with a chance to file a "last
word" supplemental response to address the requester's comments.
Indeed, 35 U.S.C. 314(b)(2) ends the iteration of addressing the Office
action by stating that "the third-party requester shall have one
opportunity to file written comments addressing issues raised by the
action of the Office or the patent owner's response thereto." As a
final point, 35 U.S.C. 314(b)(1) provides the patent owner with the
ability to respond to what the Office action says, not to the
requester's comments, and that continues to be available in the
proceeding. Such is the statutory framework for providing prosecution
by parties, while, at the same time, maintaining the requirement for
special dispatch in the inter partes reexamination proceeding.
Proposal II has been adopted in revised form - an explanation is
required as to why the supplemental response "was not" presented
together with the original response to the Office action, rather than
the proposed explanation of why the supplemental response "could not"
have been presented.
III. Comments as to Proposal III of the Revisions and Technical
Corrections Proposed Rule
The second part of Proposal III, as set forth in the Revisions and
Technical Corrections, was 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. No issues were raised by the comments as
to that part of Proposal III.
The first part of Proposal III, as set forth in the Revisions and
Technical Corrections proposed rule, was to designate the
correspondence address for the patent as the correct address for all
notices, official letters, and other communications for patent owners
in a reexamination. It was that part of Proposal III that was commented
upon.
1. One of the corporate comments supports the Proposal II rule
change as to the designation of the correspondence address for the
patent as the correct address for communications for patent owners in a
reexamination, and recognizes the need to ease the burden on the Office
in corresponding with patent owners in reexamination proceedings.
Commenter, however, strongly encourages the Office to promptly post all
correspondence electronically since "the correspondence address will
be the only address used for mailings by the Office" under the
proposal, "and no double correspondence will be sent."
In response, all correspondence for a reexamination proceeding is
in fact promptly posted electronically in the Office's Image File
Wrapper (IFW) for that proceeding, and is available via the Office's
public PAIR (Patent Application Information Retrieval) system. One of
the benefits resulting from the Office's somewhat recent creation of
the Central Reexamination Unit is that reexamination correspondence is
now mailed by a central unit dedicated solely to reexamination, which
is in a position to ensure prompt entry of correspondence into the IFW.
2. The intellectual property organization comment likewise supports
Proposal III. Commenter, however, identifies a concern that "the
Office states that it will automatically change the correspondence
address to that of the patent file." Commenter suggests that, despite
the rule revision, the correspondence address of the patent owner and
any third party, should be maintained by the Office as "whatever
correspondence address has been established," and "a specific
requirement of the patent owner to comply with the adopted regulation"
should be made. This suggestion is presented to reduce "the risk of
termination of the prosecution of a reexamination proceeding by sending
correspondence to the patent owner at an address different than has
already been established in the pending reexamination proceeding."
This suggestion is not adopted; however, for inter partes
reexamination proceedings, an accommodation will be made by the Office
as is discussed below. Retaining the old attorney or agent of record
register address as that of the patent owner's correspondence address
in the face of the rule change which mandates otherwise can only lead
to uncertainty and confusion. This would result in a situation where
some correspondence addresses are done one way and others are done
another way. Third party requesters would be placed in a quandary as to
which address to serve. The same would be true for parties serving
papers under MPEP 2286 or 2686 (notifications of existence of prior or
concurrent proceedings). Retaining the address used for correspondence
in the reexamination proceeding different from that used during the
pendency of applications (as well as post-grant correspondence in
patents maturing from such applications) will also make it difficult
for members of the public reviewing the patent and its associated files
and materials. Furthermore, searching out all the instances where the
correspondence address would be in need of a change in view of the
"adopted regulation" in order to send the suggested "specific
requirement of the patent owner to comply with the adopted regulation"
would place a huge and undue burden on Office resources. The ex parte
reexamination data captured by the Office through Sept. 30, 2006, will
be used to illustrate this. There are 1,944 ex parte reexamination
proceedings pending. The Office would need to check to see which of the
8,252 total ex parte reexamination proceedings are the 1,944 pending
reexamination proceedings. Then, Notices would need to be sent out for
all of them, and the Office would also need to do the PALM work. For
inter partes reexamination proceedings, however, there are
approximately 200 pending proceedings. Accordingly, the Office intends
to issue, in the near future, a notice in all pending inter partes
reexamination proceedings, notifying the parties about this rule change
and the patent owner's correct address. It is to be noted that
requester paper service on patent owner occurs far more often in inter
partes reexamination, than such service on patent owner in ex parte
reexamination. Thus, the major impact of commenter's concern in this
area has been addressed.
IV. Proposal IV has been adopted as it was proposed - none of the
comments took issue with any aspect of this proposal.
Section-by-Section Discussion
Section 1.1: Section 1.1(c)(1) is amended to provide for use of
"Mail Stop Ex Parte Reexam" for the filing of all ex parte
reexamination papers other than certain correspondence to the Office of
the General Counsel. Paragraph (c)(1) of Sec. 1.1(c) has been changed
from its prior reading "Requests for ex parte reexamination (original
request papers only) should be additionally marked `Mail Stop Ex Parte
Reexam' " to now 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 amended 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 Sec.
1.550(d) and Sec. 1.957(b)) clarifies that the reexamination
proceeding is not concluded under Sec. 1.550(d) or Sec. 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's 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 revised to clarify that
a reexamination proceeding is not concluded under Sec. 1.550(d) or
Sec. 1.957(b), but rather, the prosecution of a reexamination is
terminated under Sec. 1.550(d) or Sec. 1.957(b), or reexamination
prosecution is limited under Sec. 1.957(c). No change is made as to
the fee amounts.
Section 1.33: Section 1.33(c) is revised to replace the prior
recitation of "the attorney or agent of record (see Sec. 1.32(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 Sec. 1.33(c) is now 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.
Section 1.137: Sections 1.137(a), (b), and (e) are amended to more
appropriately set forth the Sec. 1.550(d) and Sec. 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
now revised to recite "a reexamination prosecution becoming terminated
under Secs. 1.550(d) or 1.957(b)" (emphasis added), rather than
the previous recitation of "a reexamination proceeding becoming
terminated under Secs. 1.550(d) or 1.957(b)" (emphasis added). In
Sec. 1.137(e), "a terminated ex parte reexamination prosecution" and
"a terminated inter partes reexamination prosecution or an inter
partes reexamination limited as to further prosecution" are inserted
in place of the previous recitation of "a terminated ex parte
reexamination proceeding" and "a terminated inter partes
reexamination proceeding," respectively.
Sections 1.137(a), (b) and (e) are amended to clarify that the
reexamination proceedings under Sec. 1.957(c) referred to in Sec.
1.137 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 revised to recite that the
prosecution is "limited under Sec. 1.957(c)," rather than
"terminated." Section 1.137(e) is revised to also refer to
"revival" of "an inter partes reexamination limited as to further
prosecution." The heading of Sec. 1.137 is also revised to add
"limited."
Section 1.502: Section 1.502 is amended 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) that were filed
after the order of ex parte reexamination will be placed in the patent
file.
Section 1.510: Section 1.510(f) is revised to change Sec. 1.34(a)
to Sec. 1.34. This change updates the section to conform to 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 1.530: Section 1.530(a) is amended to provide for the
disposition of the unauthorized paper being explicitly set forth in the
Sec. 1.530(a), i.e., the paper will be returned or discarded at the
Office's option. This explicit recitation of the Office's discretion
was proposed at the last line of the discussion of Sec. 1.530(a) in
the Section-by-Section analysis of the proposed rule making notice and
was not commented on. If the unauthorized paper was scanned into the
electronic Image File Wrapper (IFW) for the reexamination proceeding,
and thus, the paper cannot be physically returned or discarded, then
the unauthorized paper entry will be marked "closed" and "non-
public," and it will not constitute part of the record of the
reexamination proceeding. Such papers will not display in the Office's
image file wrapper that is made available, via PAIR, to the public,
patent owners, and representatives of patent owners.
Section 1.530(k) is amended to state that proposed amendments in ex
parte or inter partes reexamination are not effective until the
reexamination certificate is both "issued and published" to conform
Sec. 1.530(k) with the language of 35 U.S.C. 307. Sections 1.530(l)(1)
and (l)(2) are amended to delete the references to "1.977" and add
instead "1.997." This corrects the prior reference to non-existent
Sec. 1.977. In addition, Sec. 1.530(l)(2) is revised to recite that
the reexamination proceeding is "concluded" by a reexamination
certificate under Sec. 1.570 or Sec. 1.997, as opposed to
"terminated," which applies to a reexamination prosecution.
Section 1.550: Section 1.550(d) is amended 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 * * *." 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 Notice of Intent to Issue
Reexamination Certificate (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) to the language of 35 U.S.C. 307.
Section 1.565: Section 1.565(c) is amended to set forth that merged
(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. Section
1.565(d) is further 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, "consolidated" in the prior
version of Sec. 1.565(c) is revised to now recite "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 was confusing. In addition, in Sec.
1.565(d), the prior recitation of "normally" is replaced by
"usually" ("normally" was an inadvertent inappropriate choice of
terminology). The same term ("usually") would be added to Sec.
1.565(c). As was pointed out in the Notice of Proposed Rule Making,
there are instances where the Office does not merge (consolidate) an
ongoing ex parte reexamination proceeding with a subsequent
reexamination or reissue proceeding, which are addressed on a case-by-
case basis. The following examples are again set forth. If the
prosecution in an ongoing ex parte reexamination proceeding has
terminated (e.g., a Notice of Intent to Issue Reexamination Certificate
has issued), the ex parte reexamination proceedings will generally not
be merged (consolidated) with a subsequent reexamination proceeding or
reissue application. 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 in reexamination) to "pull back" the ongoing ex parte
reexamination proceeding for merger with a subsequent reexamination
proceeding or reissue application. 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 first 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 without providing any benefit to the public (this would run
counter to the statutory mandate for "special dispatch" in
reexamination proceedings). 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, and is, reserved to the Office.
Section 1.570: The heading of Sec. 1.570 and Sec. 1.570(a) are
amended to make it clear that the issuance and publication of the ex
parte reexamination certificate "concludes" the reexamination
"proceeding." The failure to timely respond, or the issuance of the
NIRC, terminate prosecution, but do not conclude the reexamination
proceeding. For consistency with the language of 35 U.S.C. 307, Sec.
1.570, paragraphs (b) and (d), are amended to recite that the
reexamination certificate is both "issued and published."
Section 1.902: Section 1.902 is amended 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) that were filed
after the order of inter partes reexamination will be placed in the
patent file.
Section 1.915: Section 1.915(c) is revised to change the prior
recitation of "Sec. 1.34(a)" to Sec. 1.34. This change updates the
section to conform to 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 1.923: In the first sentence of Sec. 1.923, the prior
recitation of "Sec. 1.919" is 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: Prior to the present revision, Sec. 1.945 provided
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." Section 1.945 is now revised to address the filing of
a supplemental response to an Office action. Any supplemental response
to an 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 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 was not presented together with the original
response to the Office action; and (3) a compelling reason to enter the
supplemental response.
Where the patent owner files a supplemental response to an Office
action, the requester may file its comments under Sec. 1.947 within 30
days after the date of service of the patent owner's supplemental
response, in order to preserve requester's statutory comment right, in
the event the Office exercises its discretion to enter the supplemental
response. (The comments may address the merits of the proceeding and/or
the adequacy of the showing of sufficient cause why the supplemental
response should be entered.) If the requester fails to file comments,
and the Office enters the supplemental response after 30 days from its
filing, the requester will be statutorily barred from commenting at
this stage, because, pursuant to 35 U.S.C. 314(b)(2), any requester
comments filed after a patent owner response to an Office action must
be filed "within 30 days after the date of service of the patent
owner's response." If the requester files comments and the patent
owner's supplemental response is not entered by the Office, then both
the supplemental response, and any comments following that supplemental
response, will either be returned to the parties or discarded as the
Office chooses in its sole discretion. If the supplemental response
and/or comments were scanned into the electronic Image File Wrapper
(IFW) for the reexamination proceeding, and thus, the papers cannot be
physically returned or discarded, then the supplemental response and/or
comments entries will be marked "closed" and "non-public," and they
will not constitute part of the record of the reexamination proceeding.
Such papers will not display in the Office's image file wrapper that is
made available, via PAIR, to the public, patent owners, and
representatives of patent owners.
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 will 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. Indeed, 35 U.S.C. 314(b)(2) ends the iteration of
addressing the Office action by stating that "the third-party
requester shall have one opportunity to file written comments
addressing issues raised by the action of the Office or the patent
owner's response thereto."
As pointed out above, 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) adequately deals with patent owner supplemental
responses.
Section 1.953: The prior version of Sec. 1.953(b) stated: "Any
appeal by the parties shall be conducted in accordance with Secs.
1.959-1.983." This reference to Secs. 1.959 through 1.983 is not
correct, as some of the referenced rules had been deleted and others
added. Instead of revising the incorrect reference, the entire sentence
has been deleted as being out of place in Sec. 1.953, which is not
directed to the appeal process, but is rather directed to an Office
action notifying parties of the right to appeal. Section 1.953(c) is
amended to state that if a notice of appeal is not timely filed after a
Right of Appeal Notice (RAN), then "prosecution in the inter partes
reexamination proceeding will be terminated." This will not, however,
conclude the reexamination proceeding.
Section 1.956: The subheading preceding Sec. 1.956 is amended to
refer to termination of the prosecution of the reexamination, rather
than the termination or conclusion of the reexamination proceeding,
since termination of the prosecution of the reexamination is what the
sections that 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 amended 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) to the language of 35 U.S.C. 316.
Section 1.958: The heading of Sec. 1.958 is amended 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 amended 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." 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 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 makes 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), the prior incorrect reference to
Sec. 1.979(e) is changed to recite the correct reference: Sec. 41.81.
Section 1.989: Section 1.989(a) is 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, "and 41.60-41.81" is added to the
previously recited "Secs. 1.902 through 1.997," since Secs.
41.60-41.81 provide the requester with participation rights. Further,
Sec. 1.991 is 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 amended 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 revised to make its language consistent with
that of Sec. 1.570(a). For consistency with the language of 35 U.S.C.
316, Section 1.997, paragraphs (b) and (d), are amended to recite that
the reexamination certificate is both issued and published.
Section 41.4: Paragraph (b) of Sec. 41.4 is amended to (1) recite
to "a reexamination prosecution becoming terminated under Secs.
1.550(d) or 1.957(b)" rather than the prior recitation of "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 implemented 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 100 requests for
inter partes reexamination each year. The principal impact of the
changes in this final 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 final 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 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 implemented change for a supplemental patent owner's response
to an Office action in an inter partes reexamination.
Therefore, the changes implemented 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 final rule are to: (1) Prohibit supplemental patent owner
responses to an Office action in an inter partes reexamination without
a showing of sufficient cause, (2) 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 (3) 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).
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments 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 A. Clarke, Acting Director, Office of
Patent Legal Administration, Commissioner for Patents, P.O. 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
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 or limited
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 paragraph (f) to read as
follows:
Sec. 1.510 Request for ex parte reexamination.
* * * * *
(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. Section 1.530 is amended by revising paragraphs (a), (k) and (l) 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) Except 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, 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.
(l) Correction of inventorship in an ex parte or inter partes
reexamination proceeding.
(1) When it appears in a patent being reexamined that the correct
inventor or inventors were not named through error without deceptive
intention on the part of the actual inventor or inventors, the Director
may, on petition of all the parties set forth in Sec. 1.324(b)(1)-(3),
including the assignees, and satisfactory proof of the facts and
payment of the fee set forth in Sec. 1.20(b), or on order of a court
before which such matter is called in question, include in the
reexamination certificate to be issued under Sec. 1.570 or Sec. 1.997
an amendment naming only the actual inventor or inventors. The petition
must be submitted as part of the reexamination proceeding and must
satisfy the requirements of Sec. 1.324.
(2) Notwithstanding paragraph (1)(1) of this section, if a petition
to correct inventorship satisfying the requirements of Sec. 1.324 is
filed in a reexamination proceeding, and the reexamination proceeding
is concluded other than by a reexamination certificate under Sec.
1.570 or Sec. 1.997, a certificate of correction indicating the change
of inventorship stated in the petition will be issued upon request by
the patentee.
. 10. 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.
* * * * *
. 11. Section 1.565 is amended by revising 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.
* * * * *
. 12. 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.
* * * * *
. 13. 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.
. 14. Section 1.915 is amended by revising paragraph (c) to read as
follows:
Sec. 1.915 Content of request for inter partes reexamination.
* * * * *
(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.
* * * * *
. 15. 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 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.
. 16. 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 was not
presented together with the original response to the Office action; and
(3) A compelling reason to enter the supplemental response.
. 17. 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.
. 18. 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
. 19. 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.
* * * * *
. 20. 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.
* * * * *
. 21. 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.
. 22. 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.
* * * * *
. 23. 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.
* * * * *
. 24. 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 through 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.
. 25. 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
. 26. 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.
. 27. 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.
* * * * *
April 9, 2007 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office