| Reexamination |
Referenced Items (117, 118, 119, 120, 121, 122, 123, 124, 125, 126, 127) |
(126) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
RIN 0651-AB04
Rules to Implement Optional Inter Partes
Reexamination Proceedings
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The U.S. Patent and Trademark Office (the Office) is amending
its rules of practice in patent cases to provide revised procedures for
the reexamination of patents and thereby implement certain provisions
of the American Inventors Protection Act of 1999. The American
Inventors Protection Act of 1999 included an amendment to the Patent
Act to authorize the extension of reexamination proceedings via an
optional inter partes (multiparty) reexamination procedure in addition
to the present ex parte (single party) reexamination procedure as a
means for improving the quality of United States patents. The Office
intends, through this amendment of its rules, to provide patent owners
and the public with guidance on the procedures that the Office will
follow in conducting optional inter partes reexamination proceedings in
addition to the present ex parte reexamination proceedings.
The American Inventors Protection Act of 1999 also made other
miscellaneous changes to the Patent Act which relate to reexamination,
and it is intended that this amendment of the Office's rules will
implement those changes relating to reexamination.
DATES: Effective Date: February 5, 2001.
FOR FURTHER INFORMATION CONTACT: Kenneth M. Schor or Gerald A. Dost,
Senior Legal Advisors. Kenneth M. Schor may be contacted (a) by
telephone at (703) 305-1616; (b) by mail addressed to: U.S. Patent and
Trademark Office, Box Comments--Patents, Commissioner for Patents,
Washington, D.C. 20231, marked to the attention of Kenneth M. Schor;
(c) by facsimile transmission to (703) 872-9408, marked to the
attention of Kenneth M. Schor; or (d) by electronic mail message over
the Internet addressed to reexam.rules@uspto.gov and titled "Inter
Partes Reexamination." Gerald A. Dost may be contacted (a) by
telephone at (703) 305-1616; (b) by mail addressed to: U.S. Patent and
Trademark Office, Box Comments--Patents, Commissioner for Patents,
Washington, D.C. 20231, marked to the attention of Gerald A. Dost; (c)
by facsimile transmission to (703) 308-6916, marked to the attention of
Gerald A. Dost; or (d) by electronic mail message over the Internet
addressed to reexam.rules@uspto.gov and titled
"Inter Partes Reexamination."
SUPPLEMENTARY INFORMATION:
Background
This final rule sets forth distinct procedures directed toward
determining and improving the quality and reliability of United States
patents. The procedures provide for the optional inter partes
reexamination procedures in addition to the present ex parte
reexamination procedures for the reexamination of patents as provided
for by the American Inventors Protection Act of 1999 as part of the
conference report (H. Rep. 106-479) on H.R. 3194, Consolidated
Appropriations Act, Fiscal Year 2000. The text of the American
Inventors Protection Act of 1999, is contained in title IV of S. 1948,
the Intellectual Property and Communications Omnibus Reform Act of 1999
(Public Law 106-113), the Act which is incorporated by reference in
Division B of the conference report. The procedures also provide for
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implementation of other miscellaneous changes to the reexamination of
patents also provided for in Public Law 106-113.
In August 1995, the Office published proposed rules in anticipation
of H.R. 1732, 104th Cong., 1st Sess. (1995), a predecessor of the
present inter partes reexamination statute. H.R. 1732 did not, however,
mature into a statute. The August 1995 Notice of Proposed Rulemaking
entitled "Rules of Practice in Patent Cases; Reexamination
Proceedings," was published in the Federal Register at 60 FR 41035
(August 11, 1995) and in the Official Gazette at 1177 Off. Gaz. Pat.
Office 130 (August 22, 1995). Sixteen sets of written comments were
received in response to the August 1995 Notice of Proposed Rulemaking.
A public hearing was held at 9:30 a.m. on September 20, 1995. Eight
individuals offered oral comments at the hearing.
In response to the 1999 Public Law 106-113, a notice of proposed
rulemaking was published in the Federal Register on April 6, 2000, at
65 FR 18154-18186, and in the Official Gazette on May 23, 2000, at 1234
O.G. 93-123. The 2000 notice of proposed rulemaking addressed, and took
into consideration, the comments received in response to the 1995
proposed rules. A public hearing was not held.
Discussion of General Issues Involved
This final rule is in response to Public Law 106-113, the Act which
resulted from suggestions and comments to the Administration by the
public, bar groups, and the August 1992 Advisory Commission on Patent
Law Reform suggesting more participation in the reexamination
proceeding by third party requesters. Under the inter partes
reexamination rules set forth in this final rule notice, third party
requesters will have greater opportunity to participate in
reexamination proceedings in keeping with the spirit and intent of the
new law. At the same time, participation will be limited to minimize
the costs and other effects of reexamination requests on patentees,
especially individuals and small businesses.
Ex parte reexamination proceedings filed under chapter 30 of 35
U.S.C. (both before and after the effective date, November 29, 1999, of
the new law) will continue to be governed by 37 CFR 1.510-1.570. The
final rules for optional inter partes reexamination proceedings under
chapter 31 of 35 U.S.C. have been numbered 37 CFR 1.902-1.997.
The effective date of the statute with respect to the optional
inter partes reexamination proceedings as well as to the existing ex
parte reexamination proceedings is complex. With the exception of the
amendments to 35 U.S.C. 41(a)(7) directed to the revival of terminated
ex parte and inter partes reexamination proceedings, the new statute
and the conforming amendments to the present statute take effect on the
date of enactment, November 29, 1999. The changes, however, only apply
to a reexamination of a patent that issues from an original application
which was filed in the United States on or after November 29, 1999.
Thus, for inter partes reexaminations, the effective date language (in
section 4608 of S. 1948) limits the applicability of the new inter
partes reexamination chapter 31 of 35 U.S.C., and that of the
conforming amendments to 35 U.S.C. 134, 141, 143 and 145, to any patent
that issues from an original application filed in the United States on
or after November 29, 1999, the effective date of Public Law 106-113.
For ex parte reexaminations filed under chapter 30 of 35 U.S.C., the
conforming amendments to 35 U.S.C. 134, 141, 143 and 145, apply only to
those ex parte reexamination proceedings filed under Sec. 1.510 for
patents that issue from an original application that is filed in the
United States on or after November 29, 1999. The conforming amendments
to 35 U.S.C. 134, 141, 143 and 145, correspondingly, will not apply to
ex parte reexamination proceedings filed under Sec. 1.510 for
patents that issue from an original application filed in the
United States prior to November 29, 1999. An "original application"
filed in the United States prior to November 29, 1999, is defined in
the notice entitled "Guidelines Concerning the Implementation of
Changes to 35 U.S.C. 102(g) and 103(c) and the Interpretation of
the Term `Original Application' in the American Inventors Protection
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Act of 1999" which notice was published in the Official
Gazette at 1233 Off. Gaz. Pat. Office 54 (April 11, 2000). The
phrase "original application" is interpreted to encompass utility,
plant and design applications, including first filed applications,
continuations, divisionals, continuations-in-part, continued
prosecution applications and the national stage phase of international
applications. Therefore, the optional inter partes reexamination, and
the application of the conforming amendments to 35 U.S.C. 134, 141, 143
and 145 for both inter partes and ex parte reexamination proceedings is
applicable to patents which issue from all applications (except for
reissue applications) filed on or after November 29, 1999. A patent
which issues from an application filed prior to November 29, 1999, with
a request for continued examination (defined in section 4403 of the
Act) made on or after May 29, 2000, however, is not eligible for the
optional inter partes reexamination procedure nor application of the
conforming amendments discussed above, because a request for continued
examination is not a filing of an application.
The conforming amendments also amend 35 U.S.C. 41(a)(7) to include
the words "any reexamination proceeding" under the "unintentional"
revival provisions of the statute to provide the patent owner with a
remedy for an unintentio "any reexamination proceeding" clearly make
this section applicable to both ex parte reexaminations and inter
partes reexaminations. The effective date of this amendment to 35
U.S.C. 41(a)(7) is one year after the date of enactment of the Act, or
November 29, 2000. See section 4608 of S. 1948. Thus, as of November
29, 2000, any ex parte or inter partes reexamination filed before, on,
or after November 29, 2000, is subject to the "unintentional" revival
provisions of the statute.
Regarding the reexamination fee, 35 U.S.C. 41(d) requires the
Commissioner of the United States Patent and Trademark Office (the
Commissioner) to set the fee for the new optional inter partes
reexamination at a level which will recover the estimated average cost
of the reexamination proceeding to the Office. The estimated average
cost is $8,800 for an inter partes reexamination proceeding. The
difference in the cost between an ex parte reexamination ($2,520) and
an inter partes reexamination ($8,800) takes into account that the
Office will expend substantially more resources for examination,
supervision, training, etc., where the third party requester
participates in an inter partes reexamination proceeding, and takes
into account the additional processing steps that are expected during
an inter partes reexamination proceeding.
Discussion of the Major Specific Issues Involved (1999 Statute)
The rules relating to inter partes reexamination proceedings are
directed to the provisions set forth in chapter 31 of title 35 of the
United States Code (35 U.S.C. 311-318). This Chapter provides for the
filing of requests for inter partes reexamination, decisions on such
requests, inter partes reexamination, appeal from inter partes
reexamination decisions, and the issuance of a certificate at the
termination of the inter partes reexamination proceedings.
This final rule contains a number of changes to the text of the
rules that were proposed for comment. The significant changes (as
opposed to grammatical corrections) are discussed below. Familiarity
with the Notice of Proposed Rulemaking is assumed.
Section 4732 of the American Inventors Protection Act of 1999
changed (among other things) the title "Commissioner" to
"Director." In the Notice of Proposed Rulemaking the title
"Commissioner" was revised to read "Director" in the current rules,
or portions of the current rules, that were proposed to be amended; and
in the proposed new rules the new title "Director" was used in place
of the former title "Commissioner." In this final rule, however, the
title "Commissioner" is not being changed to "Director" where it
appears in the current rules of practice involved in this final rule,
and the title "Commissioner" and not "Director" is used in the new
rules adopted in this final rule. This is because legislation is
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pending before Congress that (if enacted) would restore the former
title "Commissioner." See Intellectual Property Technical Amendments
Act of 2000, H.R. 4870, 106th Cong. (2000).
The USPTO received 10 sets of written comments (from Intellectual
Property Organizations, Law Firms, Businesses and Patent Practitioners)
in response to the Notice of Proposed Rulemaking. The written comments
have been analyzed. General comments are addressed as a group
separately from the specific rules. Comments directed to specific rules
and the response to each comment are provided with the discussion of
the specific rule. Comments in support of proposed rules generally have
not been reported in the responses to comments section.
Discussion of General Comments
General Comment 1: Examiner Assignment (selection of examiner)
Two comments were received directed to the selection of the
examiner who will be assigned the inter partes reexamination. One
comment suggested that the "rules" rather than policy should provide
that an inter partes reexamination be handled by an examiner other than
the one who originally examined the application.
The second comment expressed support for the Office's announced
intention to adopt a policy that a different examiner, other than those
actually involved in the examination and issuing of the patent, will be
assigned the inter partes reexamination.
Response to General Comment 1
The Office's intention to adopt a policy that a different examiner,
other than those actually involved in the examination and issuing of
the patent, will be assigned the inter partes reexamination was
announced in the proposed rules. See Notice of proposed rulemaking,
Rules to Implement Optional Inter Partes Reexamination Proceedings, 65
FR 18154, 18157-58 (April 6, 2000), 1234 OG 93, 96 (May 23, 2000),
Response to Issue 4, first paragraph. As noted therein, studies
conducted by the Office as to the selection of the examiner have not
shown any examiner bias irrespective of whether the same or a different
examiner handles the reexamination. The same examiner should not be
biased toward confirming patentability, because a reexamination is not
a rehash of old issues, but rather, the resolution of a new question of
patentability. In spite of these findings, the Office is, for the most
part, adopting the comments suggesting assignment of the reexamination
to an examiner other than the one who originally examined and issued
the patent. The new policy is being adopted in order to eliminate any
perception by the public of bias by the original examiner who handled
the patent. The change in the manner of examiner selection, however,
will be implemented as a matter of policy,
rather than by rule change. Specific guidance as to policies, practice
and procedure as they will apply to examiner selection in inter partes
reexamination proceedings will be forthcoming in a separate Official
Gazette notice to be published in conjunction with the final rules on
inter partes reexamination.
General Comment 2: Panel Review of Examiner Actions
Two comments were received directed to the review of the examiner's
actions during the examination process. One comment expressed support
for the Office's announced intention to adopt a policy to hold a panel
review of the examiner's proposed action at selected times during the
examination. The comment suggested that such a review, however, be
conducted of each action by the examiner that includes an action on the
merits of the claims rather than the announced intention of holding
such a review just prior to the decision to order reexamination and at
the close of prosecution.
The second comment expressed support for the proposed policy for
better review of the (single) examiner's decision during the
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reexamination. The comment, however, erroneously identified the
announced change in policy as a rule proposal.
Response to General Comment 2
The Office's intention to adopt a policy to hold a patentability
review conference (panel review) during the examination process was
announced in the proposed rules. See Notice of proposed rulemaking,
Rules to Implement Optional Inter Partes Reexamination Proceedings, 65
FR 18154, 18158 (April 6, 2000), 1234 OG 93, 96 (May 23, 2000),
Response to Issue 4, last paragraph. It was noted therein that, in
order to provide a thorough review by a team of examiners, a practice
was being considered to hold a panel review just prior to when the
decision on the request for reexamination (order/denial) is issued and
at the close of prosecution (i.e., just prior to "allowance" of the
reexamination or just prior to issuing a right of appeal notice and
final rejection). The panel review would be similar to the appeal
conference review done in an application on appeal to the Board of
Patent Appeals and Interferences. Upon reconsideration, it has been
decided that a panel review will not be conducted just prior to the
decision on the request for reexamination (order/denial) and just prior
to the "allowance" of the reexamination, i.e., issuance of a Notice
of Intent to Issue a Reexamination Certificate (NIRC). A panel review
is not necessary at the time of the initial determination to order/deny
the request for inter partes reexamination. If reexamination is
ordered, prosecution proceeds, and both the patent owner and the third
party requester will have the opportunity to address the position of
the examiner set forth in the first Office action. Further,
patentability panel reviews will be conducted later in the examination
of the case. If the reexamination request is denied, the third party
requester has the opportunity under Sec. 1.927 to request a de novo
review by the TC Group Director of the examiner's decision denying
reexamination. A panel review is not necessary at the time of the
"allowance" of the reexamination because the "allowance" of the
reexamination in an inter partes reexamination proceeding is
essentially a ministerial act performed (a) after patent owner fails to
respond to an Office action and no claims have been found patentable,
(b) after a "right of appeal notice and final rejection" is issued,
where neither party timely appeals (or the appeal is dismissed), or (c)
after a final decision by the Board of Patent Appeals and Interferences
or the court where no further appeal is timely taken. Accordingly, no
panel review is needed just prior to the decision on the request for
reexamination (order/denial) and just prior to issuance of the NIRC.
Rather, the two panel reviews will be held at the critical stages of
the proceeding or just prior to issuing an action closing prosecution
and just prior to issuing a right of appeal notice and final rejection.
Specific guidance as to policies, practice and procedure as they will
apply to panel review of examiner's actions in inter partes
reexamination proceedings will be forthcoming in a separate Official
Gazette Notice to be published in conjunction with the final rules on
inter partes reexamination.
It should further be noted that appeal conferences are already
mandatory in ex parte reexamination proceedings just prior to issuance
of an examiner's answer to an appeal to the Board of Patent Appeals and
Interferences. Such appeal conferences will also be mandatory in inter
partes reexamination proceedings. The two patentability panel reviews
coupled with the appeal conference will provide three instances of
multi-examiner reviews available in any inter partes reexamination
proceeding which is prosecuted to the appeal stage.
As to the first comment's suggestion that a panel review be
conducted of "each" action by the examiner that includes an action on
the merits of the claims, the Office plans to provide oversight by a
legal advisor for each such action (as discussed below in general
comment 3) in order to ensure that the examiner addresses each issue
presented by parties to the proceeding. This oversight, coupled with
the three multi-examiner reviews available in any inter partes
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reexamination proceeding which is prosecuted to the appeal stage,
should ensure a high-quality, multi-dimensional examination of the
proceeding.
As to the second comment supporting the "rule proposal" for
better review of the examiner's decisions, it should be noted that a
"rule" was not proposed for implementation of this practice. The
Notice of Proposed Rulemaking stated the practice would be implemented
as a matter of policy rather than by rule.
General Comment 3: Where Reexamination is Conducted in Office
Three comments were directed to where in the Office, and by whom,
the reexamination will be conducted. The first comment suggested that
the inter partes reexamination proceeding should be conducted by a
council system comprising experienced examiners.
The second comment suggested that a special Reexamination Corps be
established for conducting the inter partes reexamination proceeding.
The examiners in the special Reexamination Corps would have an
independent status such as that of the members of the Board of Patent
Appeals and Interferences.
The third comment expressed support for the Office's announced
intention to consider the creation of a special group of legal advisors
to assist the patent examiner in an inter partes reexamination
proceeding.
Response to General Comment 3
As to the first and second comments suggesting a council system of
multiple examiners, or a special "Board" status for the examiner, the
comments are not adopted in view of the Office's intention to provide
oversight by legal advisors as set forth below.
The third comment supports oversight of the examiners by legal
advisors consistent with the Office's intention as announced in the
proposed rules. See Notice of Proposed Rulemaking, Rules to Implement
Optional Inter Partes Reexamination Proceedings, 65 FR 18154, 18158
(April 6, 2000), 1234 OG 93, 96 (May 23, 2000), Response to Issue 4,
second paragraph. As noted therein, the Office is considering the
creation of a special group/unit having legal advisors trained in inter
partes reexamination procedures to oversee the examination of the inter
partes reexamination by the patent examiner in the examining group. For
technical expertise, an examiner selected from the examining group will
be assigned the reexamination. The advantage of providing oversight to
ensure timely, full, and appropriate treatment of all issues is that it
will include (a) an examiner familiar with the technology to make the
patentability decisions, and (b) legal advisors to provide uniformity
of the reexamination practice and procedure. Specific guidance as to
policies, practice and procedure as they will apply to policy oversight
of examiner's actions in inter partes reexamination proceedings will be
forthcoming in a separate Official Gazette notice to be published in
conjunction with the final rules on inter partes reexamination.
General Comment 4: Definition of the Statutory Term "Privies"
One comment was received directed to the statutory term
"privies." The term is used in 35 U.S.C. 317 to dictate which parties
are prohibited from filing a reexamination, based upon action by other
parties with whom they are in privity. The comment states that this
important statutory term is not defined in either the statute or the
rules, and is dangerously ambiguous without a definition.
Response to General Comment 4
To the extent that the comment proposed that "privies" be defined
in the rules package, it is not adopted. The Office, as the sole agency
that administers the patent statute, properly interprets statutory
language in the first instance, subject to review by the courts. The
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question of whether a party is a privy must be decided on a case-by-
case basis, evaluating all the facts and circumstances of each
individual situation. It would not be appropriate at this time to
provide an "all encompassing" definition, that might not account for
facts which could arise in the future, which facts cannot be
anticipated.
It should be noted that the Office generally will not have a need
to resolve the factual issue of whether or not one party is a privy of
another party. Section 1.915(b)(7) requires a third party requester to
certify that the estoppel provisions of Sec. 1.907 do not prohibit the
filing of the inter partes reexamination request, and the Office does
not intend to look beyond this required certification. It is only in
the rare instance where a challenge to the accuracy of the
certification is raised by the patent owner, that the question would
then need to be addressed.
General Comment 5: Incorporation of Certain Case Law Into the Rules
One comment asked whether the rules would codify the case law
relating to claim construction, claim scope, the burden of establishing
facts and the burden of persuasion (and their standards) as they apply
to reexamination.
Response to General Comment 5
The comment is not adopted. The rules will not state how the Office
should view claim construction, claim scope, the burden of establishing
facts and the burden of persuasion (and their standards) in
reexamination. Rather, the Office's view of these issues and other like
issues will continue to track the case law which is a continually
evolving body of law. Instructions to the examiner on these issues will
continue to be provided in Official Gazette Notices and in the Manual
of Patent Examining Procedure.
Discussion of Specific Rules and Response to Comments
Section 1.4(a)(2) is being amended to include inter partes
reexamination under Secs. 1.902-1.997. No comment was received on this
section. It is adopted as proposed.
Section 1.6(d)(5) is being amended to include filing a request for
inter partes reexamination under Sec. 1.913 as an exception to the use
of facsimile transmission. No comment was received on this section. It
is adopted as proposed.
The Notice of Proposed Rulemaking included a proposed amendment to
Sec. 1.17 to implement Sec. 4605(a) of the American Inventors
Protection Act of 1999. This proposed amendment has, however, already
been made in the final rule to implement eighteen-month publication of
patent applications. See Changes to Implement Eighteen-Month
Publication of Patent Applications, Final Rule, 65 FR 57024 (September
20, 2000); 1239 Off. Gaz. Pat. Office 63 (October 10, 2000).
Accordingly, it is no longer necessary to make that amendment of the
rule in the present inter partes reexamination rule package. Section
1.17 was amended in the final rule to implement eighteen-month
publication so that the title includes a reference to reexamination to
clearly indicate that the enumerated fees may apply to reexaminations
as well as to patent applications. Section 1.17(l) was amended to
reflect the fact that in the case of reexaminations, petitions for
revival of a reexamination proceeding terminated for an unavoidable
failure of the patent owner to timely respond will require the fees of
$55 for a small entity and $110 for a large entity. Also, Sec. 1.17(m)
was amended to reflect the fact that in the case of reexaminations,
petitions for revival of a reexamination proceeding terminated for an
unintentional failure to timely respond will require the fees of $605
for a small entity and $1,210 for a large entity. Note, however, that
the unintentional revival provisions of the statute are not effective
in any reexamination until November 29, 2000. No comment was received
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on this section. Sections 1.17(l) and (m) as proposed in the Notice of
Proposed Rulemaking for the present rule package were adopted in the
final rule to implement eighteen-month publication of patent
applications.
Section 1.20(c) is being amended to reflect the fact that a request
for an ex parte reexamination under Sec. 1.510(a) will require a filing
fee of $2,520; and that a request for an inter partes reexamination
under Sec. 1.915(a) will require a filing fee of $8,800. For any
request for inter partes reexamination filed prior to the effective
date of this final rule, the request must be accompanied by the
$2,520.00 fee for a request for reexamination set forth in Sec. 1.20(c)
(as in effect prior to the effective date of this final rule). The
$6,280.00 balance of the $8,800.00 fee set forth in Sec. 1.20(c)(2)
will be due on the effective date of this final rule in any inter
partes reexamination still pending on the effective date of this final
rule. Three comments were received and directed to this section.
Comments: The first comment noted that the Office reduced the
filing fee of $11,000, proposed in the 1995 proposed rules, to $8,800
in the 2000 Notice of Proposed Rulemaking, but gave no explanation for
the reduction. The comment opines that the reason for the reduction was
the many objections to the high fee. The comment recommends that the
Office consider further reducing the fee or at least make arrangements
for conducting a review of the actual costs involved in inter partes
reexaminations after the procedure has been in effect for a reasonable
amount of time.
The second comment suggested that considering the advantages and
disadvantages to the third party requester involved in reexamination,
the inter partes reexamination is not significantly more advantageous
to the third party requester than is ex parte reexamination. The
comment noted the difference between the $2,520 fee for ex parte
reexamination and the $8,800 fee for inter partes and opined that the
high fee will severely curtail the use of inter
partes reexamination. The comment suggested the third party requester
should not be burdened with the full cost of inter partes
reexamination, and that an appropriate reexamination filing fee would
be less than $4,000.
The third comment suggested the $8,800 inter partes reexamination
filing fee will be an effective barrier to an intended aim of inter
partes reexamination, i.e., to provide a viable alternative to the
great cost and uncertainty of patent litigation.
Response to Comment: The first comment speculates as to why the
filing fee was reduced from $11,000 as proposed in the 1995 Notice of
Proposed Rulemaking to $8,800 as proposed in the 2000 Notice of
Proposed Rulemaking. The fee was readjusted when, upon further
analysis, the Office realized that the proposed $11,000 fee should not
have included projected costs incurred by the Board of Patent Appeals
and Interferences and the Solicitor's Office. Appeal fees are set by
statute under 35 U.S.C. 41(a)(6) and thus are not cost recoverable as
part of the reexamination filing fee under 35 U.S.C. 41(d).
Accordingly, the proposed filing fee was adjusted downwardly.
As to the first comment suggesting re-evaluating the filing fee
after the procedure has been in effect for a reasonable amount of time,
this is required by statute. Section 4606 of S. 1948 requires the
Commissioner, not later than November 29, 2004, to submit to the
Congress a report evaluating whether the inter partes reexamination
proceedings established by this legislation is inequitable to any of
the parties. Such evaluation would include an analysis of the filing
fee, and its burden on the third party requester.
The second comment suggests (1) that the third party requester
should not be burdened with the full cost of the inter partes
reexamination, and (2) that a reduced fee of less than $4,000 be set.
The statute, however, requires that the third party requester pay the
reexamination filing fee established by the Commissioner in accordance
with 35 U.S.C. 41(d). Further, the reexamination fees must under 35
U.S.C. 41(d) fully recover the cost of the reexamination and the full
amount of the estimated fee must be charged.
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As to the second and third comments asserting that the high fee
would severely curtail the use of inter partes reexamination, it is
noted that the overall costs of requesting and participating in an
inter partes reexamination would include, in addition to the $8,800
filing fee, the attorney/agent fees throughout the proceeding
(including appeal costs) and other prosecution-related costs (testing,
declarations, etc.). Inter partes reexaminations will be hotly-
contested, adversarial proceedings. The estoppel provisions of the
statute will maximize the third party requester's incentives to prevail
in the reexamination. The overall cost of such proceedings to the third
party requester could easily reach $50,000 to $150,000, the amount
varying depending on variables such as parties, number of claims, type
of evidence needed, etc. The $8,800 filing fee is not perceived to be
excessive in light of the potential overall cost of an inter partes
reexamination proceeding, and thus the filing fee would not in itself
be a deterrent to the filing of a request for inter partes
reexamination. In those instances where a member of the public deems
the $8,800 cost of an inter partes reexamination too high for his or
her needs or purposes, the filing of an ex parte reexamination remains
available at a relatively low filing fee of $2,520. The comments are
not adopted, and the section is adopted as proposed.
Section 1.25(b), which provides for charging fees to deposit
accounts, is being amended to include a reference to inter partes
reexaminations under Sec. 1.913. No comment was received on this
section. It is adopted as proposed.
Section 1.26 is being amended so as to reflect the refund to the
reexamination requester where the Commissioner decides not to institute
a reexamination proceeding. For ex parte reexaminations filed under
Sec. 1.510, a refund of $1,690 will be made to the reexamination
requester. For inter partes reexaminations filed under Sec. 1.913, a
refund of $7,970 will be made to the reexamination requester. In both
cases, $830 of the filing fee will be retained, which amount reflects
the estimated average cost of the reexamination proceeding through the
denial of the reexamination request. No comment was received on this
section. It is adopted as proposed.
Section 1.112 is being amended to also provide that after the
patent owner response under Sec. 1.945 and the third party requester
comments under Sec. 1.947, the patent undergoing inter partes
reexamination will be reconsidered and again examined. Section 1.112 is
being further amended so that the last sentence reflects the fact that
in the case of inter partes reexaminations, the right to reply may be
limited by an action closing prosecution under Sec. 1.949 (prior to the
final action) or by a right of appeal notice under Sec. 1.953 (which is
a final action). No comment was received on this section. It is adopted
as proposed.
Sections 1.113 and 1.116. Section 1.113, which provides for a final
rejection or action, is being amended to limit its applicability to
applications and ex parte reexaminations filed under Sec. 1.510. For
final rejections or actions in an inter partes reexamination filed
under Sec. 1.913, new Sec. 1.953 will control. Section 1.116 is being
amended so that the title includes a reference to an action closing
prosecution and a right of appeal notice in inter partes
reexaminations. Section 1.116(b), which provides for amendments after
final action, is being amended to apply to amendments filed by the
patent owner after an action closing prosecution in inter partes
reexaminations filed under Sec. 1.913. Also, Sec. 1.116(b) is being
amended to preclude amendments after the right of appeal notice under
Sec. 1.953 except as provided for in Sec. 1.116(d). Section 1.116(d),
which provides for amendments after the decision on appeal, is being
amended to provide for amendments after the decision on appeal in an
inter partes reexamination. One comment was directed to these sections.
Comment: The comment notes that the proposed amendments to
Secs. 1.113 and 1.116 are based on a version of those rules that is no
longer in effect. Sections 1.113 and 1.116 were amended by virtue of
the May 29, 2000 interim rule published March 20, 2000, at 65 FR 14865
to refer, inter alia, to the new Sec. 1.114 and requests for continued
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examination. The comment suggests that it is not the intent of the
reexamination rules to obviate the changes made by the May 29, 2000,
interim rule and therefore the changes made by the reexamination rules
should be based on the language of Secs. 1.113 and 1.116 as amended by
the interim rule of May 29, 2000.
Response to Comment: The comment is adopted. The final rules of
this package have been revised to amend the most current version of the
rules of practice.
Section 1.121(i), which provides for the manner of making
amendments to the description and claims in reexamination proceedings,
is being amended to specify that such amendments are made in accordance
with Secs. 1.530(d)--(j) in both ex parte reexaminations filed under
Sec. 1.510 and inter partes reexaminations filed under Sec. 1.913. No
comment was received on this section. It is adopted as proposed, other
than to change the subsection designations for conformance with the
most current version of the rules of practice as needed.
Sections 1.136(a)(2) and (b), which provide for filing extensions
of time in applications, are being amended to make it clear that
Sec. 1.956 is controlling for extensions of time in inter partes
reexaminations. No comment was received on this section. It is adopted
as proposed.
The notice of proposed rulemaking included a proposed amendment to
Sec. 1.137 to implement Sec. 4605(a) of the American Inventors
Protection Act of 1999. This proposed amendment has, however, already
been made in the final rule to implement eighteen-month publication of
patent applications. See Changes to Implement Eighteen-Month
Publication of Patent Applications, Final Rule, 65 FR 57024 (September
20, 2000); 1239 Off. Gaz. Pat. Office 63 (October 10, 2000).
Accordingly, it is no longer necessary to make that amendment of the
rule in the present inter partes reexamination rule package. Section
1.137, which provides for revival of abandoned applications or lapsed
patents, was amended in the final rule to implement eighteen-month
publication to provide for revival of ex parte reexamination
proceedings terminated under Sec. 1.550(d), for revival of inter partes
reexamination proceedings terminated under Sec. 1.957(b), or for
revival of rejected claims terminated under Sec. 1.957(c) in an inter
partes reexamination proceeding where further prosecution has been
limited to claims found allowable at the time of the failure to
respond.
In the final rule to implement eighteen-month publication, the
title was amended to include a terminated reexamination proceeding.
Section 1.137(a) was amended to include revival of unavoidably
terminated reexamination proceedings. The unavoidable delay provisions
of 35 U.S.C. 133 are imported into, and are applicable to,
reexamination proceedings by 35 U.S.C. 305 and 314. See In re Katrapat,
6 USPQ2d 1863, 1865 (Comm'r Pat. 1988). Section 1.137(b) was amended to
provide for revival of unintentionally terminated reexamination
proceedings. The unintentional delay fee provisions of 35 U.S.C.
41(a)(7) are imported into and are applicable to all reexamination
proceedings by section 4605 of S. 1948. Note that these changes pertain
to all reexaminations (i.e., both ex parte reexaminations filed under
Sec. 1.510 and inter partes reexaminations filed under Sec. 1.913) and
were stated by statute to become effective on November 29, 2000 (one
year after enactment of the statute). Section 1.137(d) was amended to
provide that extensions of time for requesting reconsideration of a
decision dismissing or denying a petition requesting revival of a
terminated reexamination proceeding under Secs. 1.137(a) or (b) must be
filed under Sec. 1.550(c) for a terminated ex parte reexamination
proceeding, or under Sec. 1.956 for a terminated inter partes
reexamination proceeding. No comment was received on this section.
Section 1.137 was adopted in the final rule to implement eighteen-month
publication of patent applications in the manner as proposed in the
notice of proposed rulemaking for the present rule package.
Sections 1.181(a) and (c) are being amended to reflect the fact
that a petition thereunder may be filed in both ex parte and inter
partes reexamination proceedings. No comment was received on this
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section. It is adopted as proposed.
Section 1.191, which provides for appeal to the Board of Patent
Appeals and Interferences by the patent owner from any decision adverse
to patentability, is being amended so as to be applicable to
applications and ex parte reexaminations filed under Sec. 1.510 but not
to inter partes reexamination proceedings filed under Sec. 1.913.
Specifically, Sec. 1.191 points out that appeals to the Board of Patent
Appeals and Interferences in inter partes reexamination proceedings
filed under Sec. 1.913 are controlled by Secs. 1.959 through 1.981, and
that Secs. 1.191 through 1.198 are not applicable to appeals in inter
partes reexamination proceedings filed under Sec. 1.913. No comment was
received on this section. It is adopted as proposed.
Section 1.191 is further being amended to distinguish between (1)
ex parte reexamination proceedings filed under Sec. 1.510 for
reexamination of patents that issued from an original application filed
prior to November 29, 1999 (where an appeal is permitted when claims
have been twice or finally rejected), and (2) ex parte reexamination
proceedings filed for reexamination of patents that issued from an
original application filed on or after November 29, 1999 (where an
appeal is only possible when claims have been finally rejected and is
not possible where claims have been twice rejected but not finally
rejected). This date distinction is necessitated by the effective date
of the conforming amendments made to 35 U.S.C. 134 in S. 1948 being
keyed to the original filing date of the application which issued as
the patent under reexamination. The effective date language in section
4608 of S. 1948 limits the applicability of the conforming amendments
to 35 U.S.C. 134, 141, 143 and 145, to a reexamination of a patent that
issues from an original application which is filed on or after November
29, 1999. Thus, the conforming amendments to 35 U.S.C. 134, 141, 143
and 145 apply only to those ex parte reexamination proceedings filed
under Sec. 1.510 for patents that issue from an original application
which is filed on or after November 29, 1999. The conforming amendments
do not apply to ex parte reexamination proceedings filed under
Sec. 1.510 for patents that have issued or will issue from an original
application which was filed prior to November 29, 1999. No comment was
received on this section. It is adopted as proposed.
Section 1.301, which provides for appeal by the patent owner in a
reexamination proceeding to the U.S. Court of Appeals for the Federal
Circuit, is being amended to be applicable to ex parte reexamination
proceedings filed under Sec. 1.510 and also to indicate, that for inter
partes reexamination proceedings filed under Sec. 1.913, Sec. 1.983 is
controlling. No comment was received on this section. It is adopted as
proposed.
Section 1.303(a) and (b), which provide for remedy by civil action
under 35 U.S.C. 145 for the patent owner in a reexamination proceeding,
are being amended so as to be applicable only to ex parte reexaminations
under Sec. 1.510 for patents that issue from an original application
which is prior to November 29, 1999. This date distinction is necessitated
for reasons analogous to those set forth in the discussion of Sec. 1.191
above. Section 1.303 is further amended by adding a new subsection (d) to
clearly note that no remedy by civil action under 35 U.S.C. 145 is
available to the patent owner for ex parte reexamination proceedings
under Sec. 1.510 for patents that issue from an original application which
is on or after November 29, 1999, and for any inter partes reexamination
proceedings under Sec. 1.913. No comment was received on this section.
It is adopted as proposed.
Section 1.304, which provides for the time for appeal by the patent
owner in a reexamination proceeding to the U.S. Court of Appeals for
the Federal Circuit, is being amended so as to make it applicable to
inter partes reexamination proceedings under Sec. 1.913. No comment was
received on this section. It is adopted as proposed.
The section heading (title) to subpart D and the undesignated
center headings for subpart D are being amended by inserting "Ex
Parte" before "Reexamination" to provide that the reexamination
rules in this subpart generally apply to ex parte reexamination
proceedings. Where an ex parte rule also applies to inter partes
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reexamination, it is explicitly incorporated by reference into the
inter partes reexamination rules, e.g., Sec. 1.933 (patent owner duty
of disclosure) incorporates Sec. 1.555; and Sec. 1.943 (requirement of
responses, comments and briefs) incorporates Sec. 1.52. No comment was
received on these changes. They are adopted as proposed.
Section 1.501(a), which provides for citations of prior art in
patent files, is being amended to provide that a citation shall be
entered in the patent file except as set forth in Sec. 1.502 (newly
created) and Sec. 1.902. Section 1.501(a) is further amended by
deleting the criteria for the processing of a prior art citation
during an ex parte reexamination, and moving that criteria to
Sec. 1.502 newly created for that purpose. One comment was received
directed to Sec. 1.501.
Comment: The comment suggests the Office should re-address the
prohibition on a third party from submitting prior art patents and
printed publications for entry into an ex parte reexamination
proceeding after the order to reexamine has been mailed with the
prohibition applying, even where the prior art was unavailable to a
third party requester at the time the ex parte request was filed, or
known only to another member of the public. The comment argues that the
present system which requires the third party to file another ex parte
request for reexamination (which includes the new prior art) and that
merger of the reexamination proceedings is a cumbersome, burdensome and
time-delaying system as compared to, for example, simply permitting the
entry of the new prior art and providing for one more reexamination
Office action and response for new prior art found to be relevant.
Response to Comment: When promulgating the reexamination rules in
1981, it was the position of the Office that an ex parte proceeding
best served the interests of all, and best complied with the intent of
the 1980 statute. To preserve the ex parte nature of the proceeding, it
was decided that consideration of citations of prior art submitted
after the reexamination order will be delayed until the reexamination
proceeding has terminated, unless the citation is submitted by the
patent owner or a third party requester in a separate reexamination
request or in a reply to the patent owner's statement. While the filing
of a separate request for reexamination can add some delay to the
proceeding, this delay would not be extensive. In contrast, permitting
a third party to file citations at any time for consideration by the
examiner could seriously delay the reexamination proceeding and
militate against the "special dispatch" requirement of the statute.
New Sec. 1.502 provides for the processing of prior art citations
submitted during an ex parte reexamination proceeding. The substance of
Sec. 1.502 was previously contained in Sec. 1.501(a), but was separated
out as a new section for clarity. Once ex parte reexamination has been
ordered, only citations by the patent owner under Sec. 1.555 and by a
third party requester in a filing under either Sec. 1.510 or Sec. 1.535
will be entered during the pendency of the reexamination proceeding.
Citations by other parties (who are not a party to the reexamination)
filed during the pendency of the reexamination proceeding will not be
entered into the patent file or the reexamination file until the
reexamination proceeding is concluded unless made as a part of a
request for reexamination under Sec. 1.510.
The titles of Secs. 1.510-1.570 are being amended by revising them
to be limited to ex parte reexamination where applicable. No comment
was received on these changes. They are adopted as proposed.
Section 1.510(a) is being amended to limit the section to ex parte
reexamination proceedings. The notice of proposed rulemaking included a
proposed amendment to Sec. 1.510(b)(4) which relates to the contents of
the reexamination request. This proposed amendment has, however,
already been made in the final rule to implement the Patent Business
Goals. See Changes to Implement the Patent Business Goals, Final Rule,
65 FR 54604 (September 8, 2000); 1238 Off. Gaz. Pat. Office 77
(September 19, 2000). Section 1.510(b)(4) was amended to delete the
requirement of mounting the copy of the patent to be reexamined in
single column format. Instead, a copy of the entire patent including
the front face, drawings, and specification/claims (in double column
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format) for which reexamination is requested, and a copy of any
disclaimer, certificate of correction, or reexamination certificate
issued in the patent will be required. All copies must have each page
plainly written on only one side of a sheet of paper. Section
1.510(b)(4) is now being revised so that it applies to both ex parte
reexamination and inter partes reexamination proceedings. No comment
was received on this section. It is adopted as proposed.
Sections 1.515, 1.520, 1.525, 1.530, 1.535, and 1.540 are being
amended to recite the reexamination as "ex parte" reexamination where
appropriate, to eliminate any potential for confusion. No comment was
received on these changes. They are adopted as proposed.
Section 1.530(d) is being revised so that it (and Secs. 1.530(e)-
(k)) apply to both ex parte reexamination and inter partes
reexamination proceedings. No comment was received on this section. It
is adopted as proposed.
A new Sec. 1.530(l), directed to correction of inventorship of a
patent, was added in the final rules to implement the Patent Business
Goals. See Changes to Implement the Patent Business Goals, Final Rule,
65 FR 54604 (September 8, 2000); 1238 Off. Gaz. Pat. Office 77
(September 19, 2000). Section 1.530(l) is now being revised so that it
applies to both ex parte reexamination and inter partes reexamination
proceedings. Section 1.530(l) is also being revised to state "on
petition of all the parties set forth in Sec. 1.324(b)(1)-(3)" rather
than "on petition of all the parties" to make it clear that all
"parties" to the proceeding (e.g., an inter partes reexamination
third party requester) need not, and should not, join in the petition
to correct inventorship.
Section 1.550, which provides for the conduct of the reexamination
proceeding, is being amended to limit the section to ex parte
reexamination proceedings filed under Sec. 1.510. In addition,
Sec. 1.550(d) is being amended to clarify that the failure to file a
written statement of an interview as required under Sec. 1.560(b) shall
be the basis for terminating a reexamination proceeding. Section
1.550(e)(1) specifically provides for the revival of terminated ex
parte reexamination proceedings under the unavoidable delay provisions
of Sec. 1.137(a). The unavoidable delay provisions of 35 U.S.C. 133 are
imported into and are applicable to ex parte reexamination proceedings
by 35 U.S.C. 305. Section 1.550(e)(2) provides for the revival of
terminated ex parte reexamination proceedings under the
"unintentional" provisions of Sec. 1.137(b). The unintentional delay
fee provisions of 35 U.S.C. 41(a)(7) are imported into and are
applicable to ex parte and inter partes reexamination proceedings by
section 4605 of S. 1948. Note, however, that the unintentional delay
provisions of 35 U.S.C. 41(a)(7) only become effective in reexamination
proceedings on November 29, 2000 (one year after enactment of the
statute). No comment was received on this section. It is adopted as
proposed.
Section 1.552, which provides for the scope of reexamination in ex
parte reexamination, is being amended to limit the section to ex parte
reexamination proceedings filed under Sec. 1.510. In addition,
Sec. 1.552(a) and (b) are being amended to more clearly
specify that all of the claims (new claims and amended patent claims)
will be examined on the basis of patents or printed publications and,
with respect to subject matter added or deleted in the reexamination
proceeding, on the basis of the requirements of 35 U.S.C. 112. Sections
1.552 and 1.906 of the present rule package were drafted to parallel
the text of Sec. 1.906 as it was presented in the August 1995 Notice of
Proposed Rulemaking entitled "Rules of Practice in Patent Cases;
Reexamination Proceedings." Section 1.552(c) is further being amended
to preclude the examiner from independently discovering and noting
issues other than those indicated in Secs. 1.552(a) and (b). In this
regard, Sec. 1.552(c) is being amended by changing the phrase "If such
questions are discovered during a reexamination proceeding," to now
read "If such issues are raised by the patent owner or third party
requester." The examiner should only note an issue under Sec. 1.552(c)
after careful consideration, and should only note the raised issue
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once. Patent owners could then file a reissue application if they wish
such issue to be resolved. It would not be appropriate for the examiner
sua sponte to raise issues directed to the patentability of a claim of
a patent which may not be resolved in the reexamination. No comment was
received on this section. It is adopted as proposed.
Section 1.555, which sets forth the patent owner's duty of
disclosure in reexamination, is being amended to clearly apply to both
ex parte and inter partes reexaminations. In addition, Sec. 1.552(c) is
being amended to preclude the examiner from independently discovering
and noting issues relating to patent owner's compliance with its duty
of disclosure. In this regard, Sec. 1.552(c) is being amended by
changing the phrase "If questions of compliance with this section are
discovered during a reexamination proceeding, * * *" to now read "If
questions of compliance with this section are raised by the patent
owner or third party requester during a reexamination proceeding,
* * * ." It would not be appropriate for the examiner sua sponte to raise
issues directed to the issue of patent owner's compliance with its duty
of disclosure which may not be resolved in the reexamination. No
comment was received on this section. It is adopted as proposed.
Section 1.560, which provides for interviews in reexamination
proceedings, is being amended to limit the section to ex parte
reexamination proceedings filed under Sec. 1.510. Note, however, that
there will be no interviews which address the issues of the proceeding
permitted in inter partes reexamination proceedings under Sec. 1.913.
See Sec. 1.955. In addition, Sec. 1.560(b) is being amended to clarify
that the patent owner must file a written statement of an interview
after an interview is held. The written statement may be filed either
as a separate paper within one month after the date of the interview,
or as a separate part of a response to an outstanding Office action,
whichever is later. One comment was received and directed to this
section.
Comment: The comment suggests that when reexamination is requested
by a third party, there is usually litigation directed to the patent
for which reexamination is requested involving severely conflicting
interests between the patent owner and the third party requester. The
comment asserts that during reexamination, the examiner is required to
maintain neutrality, and therefore the scope of the interview should be
limited to that needed to deepen the examiner's understanding of the
technology and to clarify points of contention and that the examiner
should be prohibited from discussing amendment proposals during an
interview with the patent owner.
Response to Comment: The statute, 35 U.S.C. 305, provides that
reexamination will be conducted according to the procedures established
for initial examination under the provisions of sections 132 and 133 of
this title. In a very real sense, the intent of reexamination is to
start over and reexamine the patent and examine new and amended claims
as they would have been examined in the original application of the
patent. Section 132 permits the patent owner to propose amendments to
the claims which will be reexamined by the examiner. The procedures
established for initial examination under section 132 permit the patent
owner to propose amendments either by written response or during an
interview with the examiner. See section 713.01 of the Manual of Patent
Examining Procedure which provides guidance as to the submission of
amendments in conjunction with interviews, and the rationale therefor.
In both cases, the examiner is obligated to consider such amendment
proposals when conducting his or her examination of the claims in light
of the prior art. The comment is not adopted, and the section is
adopted as proposed.
Section 1.565, which provides for concurrent Office proceedings, is
being amended to limit the reexamination proceedings of the section to
ex parte reexamination proceedings filedunder Sec. 1.510. In addition,
Sec. 1.565(e) is being amended to change "examiner-in-chief" to
"administrative patent judge" to reflect the current title. Also, the
appropriate references for concurrent proceedings which include an
inter partes reexamination proceeding have been added. Section 1.565(c)
is being amended to make it clear that after prosecution has been
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terminated in a pending reexamination proceeding (e.g., by the issuance
of a Notice of Intent to Issue a Reexamination Certificate) there is no
right of merger of any subsequently filed reexamination request. No
comment was received on this section. It is adopted as proposed.
Section 1.570 is being amended to recite the reexamination as "ex
parte" reexamination where appropriate, to eliminate any potential for
confusion. No comment was received on this section. It is adopted as
proposed.
A new title Subpart H--Inter Partes Reexamination of Patents
(Applicable to any Patent that Issues from an Original Application Filed
has been added which provides that the reexamination rules in this subpart
generally apply to inter partes reexamination proceedings on patents
having a filing date on or after November 29, 1999. Some of the inter
partes reexamination rules specifically incorporate ex parte
reexamination rules, e.g., Sec. 1.943 (requirement of responses,
comments and briefs) incorporates Sec. 1.52, and Sec. 1.933 (patent
owner duty of disclosure) incorporates Sec. 1.555. One comment was
received directed to this section.
Comment: The comment suggested that the heading "Subpart H
Reexamination of Patents" as proposed in the Notice of Proposed
Rulemaking be amended to add "(Applicable to Patents having an
Original United States Filing date On or After November 29, 1999)."
The comment notes that the effective date of the statute with respect
to optional inter partes reexamination is complex, and it would be
helpful to practitioners and those considering inter partes
reexamination if they are clearly advised of what patents are subject
to such proceedings.
Response to Comment: The comment is adopted in part. The heading
has been amended to add "(Applicable to any Patent that Issues from an
Original Application Filed in the United States on or after November
29, 1999.)" This language more closely tracks the language of the
statute than does the language suggested in the comment.
New Sec. 1.902 provides for the processing of prior art citations
during an inter partes reexamination proceeding and is analogous to new
Sec. 1.502 which deals with prior art citations during an ex parte
reexamination proceeding. No comment was received on this section. It
is adopted as proposed.
New Sec. 1.903 provides that the patent owner and the third party
requester shall be sent copies of all Office actions, and that the
patent owner and the third party requester must serve copies of all
papers on all other parties in the inter partes reexamination
proceeding or they may be refused consideration by the Office. This is
analogous to the provisions of Sec. 1.550(e). No comment was received
on this section. It is adopted as proposed.
New Sec. 1.904 provides that a notice of the filing of an inter
partes reexamination request will be published in the Official Gazette
under Sec. 1.11(c) and that such a notice will be considered to be
constructive notice to the patent owner. No comment was received on
this section. It is adopted as proposed.
New Sec. 1.905 provides that, unless otherwise provided for, a
submission of papers by the public other than third party requesters in
an inter partes reexamination proceeding will not be considered in the
proceeding and will be treated in accordance with the requirements of a
prior art submission under Sec. 1.902 if it complies with the
requirements of Sec. 1.501. Submissions not in accordance with
Sec. 1.501 will be returned to the sender. No comment was received on
this section. It is adopted as proposed.
New Sec. 1.906 covers the scope of reexamination in an inter partes
reexamination proceeding. While it is not intended that examiners will
routinely complete a new search when conducting an inter partes
reexamination, examiners may conduct additional searches and cite and
apply additional prior patents and printed publications when they
consider it appropriate and beneficial to do so. Section 1.906(a)
provides that the examination is only on the basis of patents or
printed publications and, with respect to subject matter added or
deleted during the inter partes reexamination, on the basis of the
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requirements of 35 U.S.C. 112. Section 1.906(b) provides that claims in
a reexamination proceeding must not enlarge the scope of the claims of
the patent and must not introduce new matter. Section 1.906(c) provides
that issues relating to matters other than those indicated in
Secs. 1.906(a) and (b) of this section (e.g., on sale, public use, duty
of disclosure, etc.) will not be resolved in a reexamination
proceeding, but will be noted by the examiner as being an open issue in
the record if such issues are raised by the patent owner or the third
party requester. The examiner should only note an issue under
Sec. 1.906(c) after careful consideration, and should only raise the
noted issue once. Patent owners could then file a reissue application
if they wish such issue to be resolved. It would not be appropriate for
the examiner sua sponte to raise issues directed to the patentability
of a claim of a patent which may not be resolved in the reexamination.
No comment was received on this section. It is adopted as proposed.
New Sec. 1.907 sets forth prohibitions on the filing of an inter
partes reexamination request. The basis for this section is 35 U.S.C.
317. Under Sec. 1.907(a), once an order for an inter partes
reexamination has been issued, neither the third party requester, nor
any of its privies, may file a subsequent request for an inter partes
reexamination of the patent until an inter partes reexamination
certificate is issued, unless such filing is authorized by the
Commissioner. Under Sec. 1.907(b), once a final decision has been
entered against a party in a civil action that the party has not
sustained its burden of proving invalidity of any patent claim in suit,
then that party, and its privies, are thereafter precluded from
requesting an inter partes reexamination of any such patent claim on
the basis of issues which that party, or its privies, raised or could
have raised in such civil action; and an inter partes reexamination
requested by that party, or its privies, on the basis of such issues
may not thereafter be maintained by the Office. Under Sec. 1.907(c), if
a final decision in an inter partes reexamination proceeding instituted
by a third party requester is favorable to patentability of any patent
claim, then that party, or its privies, may not thereafter request an
inter partes reexamination of any such patent claim on the basis of
issues which that party, or its privies, raised or could have raised in
such inter partes reexamination proceeding. Two comments were received
directed to this section.
Comments: The first comment, directed to Sec. 1.907(b), suggests
that if the Office intends to determine on a case-by-case basis whether
the third party requester could have raised an issue in a civil action,
the phrase "or could have raised" should be deleted from
Sec. 1.907(b). The second comment directed to Secs. 1.907(b) and (c)
suggests that the words "could have raised" should be changed to
"had become or should have become known to that party upon reasonable
inquiry at the time the inter partes reexamination was ordered." The
comment argues the "could have raised" language would theoretically
bar a third party from requesting a new reexamination based on any
existing patent or printed publication, even those remotely located in
another file of the third party.
Response to Comments: As to the first comment, under
Sec. 1.915(b)(7), a third party requester is required to include a
certification that the estoppel provisions of Sec. 1.907 do not
prohibit the filing of the inter partes reexamination request. The
Office does not intend to look beyond that certification. The Office
does not plan to make a case-by-case determination. It is only in the
rare instance where a challenge to the accuracy of the certification is
raised by the patent owner, that the question would then need to be
addressed.
As to the second comment addressing Secs. 1.907(b) and (c), the
statute, 35 U.S.C. 317, recites "on the basis of issues which that
party or its privies raised or could have raised in such civil action
or inter partes reexamination proceeding." The rule merely tracks the
statutory language. Adoption of the suggested language would appear to
enlarge the scope of the statutory estoppel. The interpretation of the
statutory language is subject to statutory construction on a case-by-
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case basis depending on the particular facts of the individual case. As
noted above, the Office does not intend to make such a determination in
each reexamination, but will rely upon the certification by the third
party requester under Sec. 1.915(b)(7). The comments are not adopted,
and the section is adopted as proposed.
New Sec. 1.913 provides for any person (unless the estoppel
provisions of Sec. 1.907 apply) to file a request under 35 U.S.C. 311
for an inter partes reexamination of a patent which issued from an
original application filed on or after November 29, 1999. The time
period for filing such a request is limited to the period of enforceability
of the patent for which the request is filed. The language "other than the
patent owner or its privy" has been deleted from Sec. 1.913. One comment
was received addressed to this section.
Comment: Section 1.913, as proposed in the Notice of Proposed
Rulemaking, excluded the patent owner or its privies from those
persons who may file an inter partes request for reexamination.
The comment suggests the Office has exceeded its authority in
excluding the patent owner or its privies. The comment argues that
Congress intended that the patent owner could be
permitted to file an inter partes reexamination because 35 U.S.C.
311(c), which requires the Commissioner to send a copy of the request
to the patent owner, explicitly relieves the Commissioner of that
obligation when the inter partes requester is the patent owner. The
comment notes that a patent owner may feel the chances of staying a
pending litigation are increased by requesting an inter partes
reexamination, as compared to an ex parte reexamination, because of the
provisions of 35 U.S.C. 318 (stay of litigation).
Response to Comment: The Office does not agree with the statutory
interpretation presented in the comment. Portions of the language
contained in sections 311, 312, 314, and 317 of the 1999 statute which
suggests that the patent owner may file an inter partes request for
reexamination are regarded as inadvertent legislative drafting errors
created through the evolution of the final version of the 1999 statute.
The language of the 1980 ex parte reexamination statute, which was used
as the basis for the 1999 statute, includes language which permits
either the patent owner or a third party to file a request for ex parte
reexamination. The earlier versions of the 1999 statute merely proposed
to amend the 1980 statute by making the ex parte reexamination more
inter partes in nature. The final version of the 1999 statute was re-
drafted at the last moment and for the first time created separate ex
parte (chapter 30) and inter partes (chapter 31) reexamination statutes
by modeling the inter partes practice on the ex parte practice. The
drafters, however, inadvertently did not remove the language of the
1980 statute directed to patent owner filings of reexamination
requests, even though an inter partes procedure is clearly
inappropriate for a reexamination initiated by a patent owner. Note
further that legislation is pending before Congress in which the noted
language has been deleted or changed. See the Intellectual Property
Technical Amendments Act of 2000, H.R. 4870, 106th Cong. (2000), which
clearly limits the parties who may file an inter partes request for
reexamination to be third parties other than the patent owner.
Accordingly, the Office does not agree with the comment that the
statute permits a patent owner to file an inter partes reexamination
request.
In the interest of being consistent with the statute, the phrase
"other than the patent owner or its privies" has been deleted from
the section. The change is being made solely for the purpose of more
closely following the language of the statute.
New Sec. 1.915(a) requires payment of the fee for requesting an
inter partes reexamination which is set forth in Sec. 1.20(c)(2).
Section 1.915(b) indicates what each request for inter partes
reexamination must include. The requirements are analogous to the
requirements of Sec. 1.510(b) for filing an ex parte reexamination
request with the most notable difference being that the third party
requester must be identified in an inter partes reexamination request.
Section 1.915(c) indicates that requests for an inter partes
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reexamination may be filed by attorneys or agents on behalf of a third
party requester, but it is noted that the real party in interest must
be identified. Section 1.915(d) provides that if the request for inter
partes reexamination does not meet all the requirements of
Sec. 1.915(b), the third party requester may be given an opportunity to
complete the inter partes reexamination request to avoid having the
proceeding vacated. One comment was received directed to this section.
Comment: The comment noted that Sec. 1.915(b)(8) requires any
person requesting inter partes reexamination to specify the "real
party in interest" in a statement. The comment asks whether this
language coupled with the requirement of Sec. 1.915(c) prohibits an
attorney filing the request from being the real party in interest.
Response to Comment: Section 1.915(c) requires an attorney or agent
who files a request for inter partes reexamination on behalf of another
party to have a power of attorney or to be acting in a representative
capacity under Sec. 1.34(a). Section 1.915(c) does not preclude an
attorney from filing a request for inter partes reexamination on behalf
of himself or herself as the real party in interest. The section is
adopted as proposed.
New Sec. 1.919 indicates that the date on which the entire fee for
a request for inter partes reexamination is received will be considered
to be the filing date of the request for inter partes reexamination. No
comment was received on this section. It is adopted as proposed.
New Sec. 1.923 provides for a determination by the examiner as to
whether the request has presented a substantial new question of
patentability under 35 U.S.C. 312 and requires that the determination
be made within three months of the filing date of the request. One
comment was received directed to this section.
Comment: The comment notes that section 4607 of S. 1948 provides
that a third party who requests inter partes reexamination is estopped
from challenging at a later time, in any civil action, any fact
determined "during the process of" such reexamination. Section 1.923
provides that if the examiner determines no substantial new question of
patentability is present, the examiner will deny the request and not
order reexamination. The comment argues that facts determined in the
decision ordering or denying reexamination are not facts determined
"during the process of" such reexamination because a decision denying
reexamination is not a decision made after full submission of all of
the evidence and arguments. The comment suggests that the following
sentence should be added at the end of the section in order to clearly
point this out: "Such determination does not constitute a finding of
fact under the estoppel provisions of Section 4607."
Response to Comment: Whether or not facts determined in deciding to
deny or order reexamination are facts "determined during the process
of such reexamination" is a question to be answered by the Federal
courts. By statute, the estoppel arises in a civil action, not in an
Office proceeding. The comment is not adopted, and the section is
adopted as proposed.
New Sec. 1.925 provides for a refund under Sec. 1.26(c) of a
portion of the filing fee if inter partes reexamination is not ordered.
See the discussion of Sec. 1.26(c) above as to the amount of the
refund. No comment was received on this section. It is adopted as
proposed.
New Sec. 1.927 provides for review by petition to the Commissioner
of a decision denying inter partes reexamination. No comment was
received on this section. It is adopted as proposed.
New Sec. 1.931 provides for ordering inter partes reexamination
where a substantial new question of patentability has been found
pursuant to Sec. 1.923. Section 1.931(b) places a limitation on the
selection of the examiner by the Office in that the same examiner whose
decision denying inter partes reexamination was reversed on petition
filed under Sec. 1.927 ordinarily will not conduct the inter partes
reexamination ordered in the decision granting the petition. No comment
was received on this section. It is adopted as proposed.
New Sec. 1.933 covers the duty of disclosure by a patent owner in
an inter partes reexamination proceeding. The rule provides that the
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patent owner's duty in an inter partes reexamination proceeding is the
same as the duty in an ex parte reexamination proceeding set forth in
Sec. 1.555(a) and (b), and is satisfied by filing a paper in compliance
with Sec. 1.555(a) and (b). In addition, Sec. 1.933(b) is being amended
to preclude the examiner from independently raising and noting issues
relating to patent owner's compliance with its duty of disclosure. In
this regard, Sec. 1.933(b) is being amended by changing the phrase "If
questions of compliance with this section are discovered during a
reexamination proceeding, * * *" to now read "If questions of
compliance with this section are raised by the patent owner or third
party requester during a reexamination proceeding, * * *" It would not
be appropriate for the examiner sua sponte to raise issues directed to
the issue of patent owner's compliance with its duty of disclosure
which may not be resolved in the reexamination. No comment was received
on this section. It is adopted as amended.
New Sec. 1.935 provides that the initial Office action on the
merits will usually accompany the inter partes reexamination order.
When reexamination is ordered, the initial paper from the examiner will
normally comprise two parts. The first part will address the issue as
to whether the cited art raises a substantial new question of
patentability (SNQ). If the examiner determines that the prior art does
raise an SNQ, reexamination will be ordered. In this situation, a
second part of the initial Office action would usually be issued, which
would address the patentability issues and will constitute the first
Office action on the merits. If the examiner determines that the cited
art does not raise an SNQ, reexamination is denied. No patentability
question would be addressed by the examiner. One comment was received
directed to this section. (This comment was also addressed to
Sec. 1.945 relating to patent owner's response to Office actions. The
discussion below relates to both Secs. 1.935 and 1.945.)
Comment: The comment notes that if the examiner refuses to adopt a
ground of rejection proposed by the third party, the patent owner is
not required to address this issue prior to the appeal stage.
Consequently, if the refusal to adopt the ground of rejection is
reversed on appeal to the Board of Patent Appeals and Interferences
(Board), at that time the patent owner is given an opportunity to amend
the claim. The comment suggests that, prior to the appeal stage, the
patent owner should be required to respond to all of the issues raised
by the requester. The comment points out that if this suggestion is
implemented, the opportunity for amendment after the Board decision and
the need for remand would then become unnecessary, even if the Board
adopts any ground proposed by the third party requester.
Response to Comment: The patent owner has no legal compulsion to
amend a claim based solely on a ground of rejection raised by the third
party requester. Only after the ground of rejection is adopted by the
examiner or the Board of Patent Appeals and Interferences must the
patent owner consider amending the claim. The comment is not adopted,
and Sec. 1.935 is adopted as proposed. (See discussion of Sec. 1.945.)
New Sec. 1.937 covers the basic items relating to the conduct of inter
partes reexamination proceedings. Section 1.937(a) provides that, in
accordance with 35 U.S.C. 314(c), unless otherwise provided by the
Commissioner for good cause, all inter partes reexamination proceedings
will be conducted with special dispatch. Section 1.937(b) provides that
all inter partes reexamination proceedings will be conducted according
to the procedures established for initial examination under
Secs. 1.104-1.116. These proceedings will generally follow the
procedures for examining patent applications. Section 1.937(c) provides
that all communications between the Office and the parties to the inter
partes reexamination which are directed to the merits of the proceeding
must be in writing and filed with the Office for entry into the record
of the proceeding. No comment was received on this section. It is
adopted as proposed.
New Sec. 1.939 provides for the return of unauthorized papers
filed in an inter partes reexamination, and provides that, unless otherwise
authorized, no paper shall be filed , by any party, in an inter partes
reexamination before the initial Office action on the merits. No
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comment was received on this section. It is adopted as proposed.
New Sec. 1.941 provides that amendments made by the patent owner in
an inter partes reexamination must be made in accordance with the
requirements of Secs. 1.530(d)-(k) and 1.943. No comment was received
on this section. It is adopted as proposed.
New Sec. 1.943(a) provides that the form of responses, briefs,
appendices, and other papers must be in accordance with Sec. 1.52.
Section 1.943(b) establishes page limits for responses by the patent
owner and written comments by the third party requester (other than
briefs). Amendments, appendices of claims, and reference materials such
as prior art references would not be included in the page count.
Section 1.943(c) provides for page limits and total word limits for
briefs. No comment was received on this section. It is adopted as
proposed.
New Sec. 1.945 provides that a patent owner will be given at least
30 days to respond to any Office action on the merits. While the Office
ordinarily intends to set a two-month period for the patent owner to
respond to an Office action on the merits, the minimum period set will
always be at least 30 days. One comment was received directed to this
section. This comment was also addressed to Sec. 1.935 relating to the
patent owner's response to the initial Office action. The comment is
not adopted, and Sec. 1.945 is adopted as proposed.
New Sec. 1.947 provides that each time a patent owner files a
response to any Office action on the merits, the third party requester
may once file written comments if those comments are received in the
Office within a period of 30 days from the date of service of the
patent owner's response. Since 35 U.S.C. 314(b)(3) statutorily imposes
this period for third party requester comments, this time period cannot
be extended. Thus, any third party comments received in the Office
after expiration of 30 days from the date of service of the patent
owner's response shall be considered to be untimely and unauthorized,
and thus will be returned to the third party in accordance with
Sec. 1.939. Three comments were received directed to this section.
Comments: The first and second comments suggest that it will be
difficult for a foreign third party requester to timely comment within
a period of 30 days from the date of service of the patent owner's
response. The first comment suggests that a third party comment period
of 60 days should be set. The second comment suggests that some way
should be devised for receiving a substantial extension to the 30-day
period.
The third comment suggests that it is unfair for the patent owner
to not be able to respond to the third party comments and thereby have
the last word. The comment suggests that the patent owner should have
the right of last comment.
Response to Comments: As to the first comment, the statute (35
U.S.C. 314(b)(3)) specifically requires that the third party requester
comments be received by the Office within 30 days after the date of
service of the patent owner's response to an Office action. The rules
cannot provide a period for comments that would give the third party
more time to comment than that explicitly stated in the statute.
As to the second comment, because the statute specifically requires
that third party requester comments be received by the Office within 30
days after the date of service of a patent owner's response to the Office
action, the rules cannot extend the period for comments in order to
give the third party more time in which to file the written comments.
The Office recognizes the shortness of this time period. While no
relief can be granted by enlarging or extending the statutory 30-day
period, a measure of relief has been granted to the third party
requester in that the rule is being amended to provide that the date of
Office "receipt" of third party requester comments will be construed
to be the date of mailing if the provisions of Sec. 1.8 are complied
with when submitting the written comments.
As to the third comment, providing the patent owner with an
opportunity to reply to third party comments would unduly prolong the
pendency of the proceeding, contrary to the "special dispatch"
required by 35 U.S.C. 314(c). It should also be noted that an owner
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response to the third party comments could be considered a
(supplemental) patent owner response to the Office action which would
trigger a further right to third party comment under 35 U.S.C.
316(b)(3) and thus create an endless cycle. The comments are not
adopted. The rule is adopted as proposed, but amended as indicated
above.
New Sec. 1.948 provides that third party requester prior art
submissions as defined under Sec. 1.501 may be filed after the inter
partes reexamination order only if they are submitted as part of a
comments submission under Secs. 1.947 or 1.951(b), and are limited to:
(1) Prior art necessary to rebut a finding of fact made by the
examiner; (2) prior art necessary to rebut a position taken by the
patent owner in a response; or (3) prior art which for the first time
became known or available to the third party requester after the filing
of the inter partes request for reexamination where a discussion of the
pertinency of each reference to the patentability of at least one claim
is included. Limiting later filed prior art submissions to newly
discovered or newly available prior art (except when used for rebuttal
purposes) will encourage the third party requester to submit all known
pertinent prior art along with the initial request for inter partes
reexamination. Later submission of previously known or available prior
art would only be permissible to rebut a position taken by the examiner
or the patent owner, or through the filing of an ex parte reexamination
request which, if ordered, would be merged with the inter partes
reexamination proceeding.
Permitting the third party requester to timely submit newly
discovered or previously unavailable prior art during the inter partes
reexamination proceeding will obviate the need for the third party
requester to file an ex parte request for reexamination. To prevent
harassment of the patent owner due to frequent submissions of prior art
citations during a reexamination proceeding, such submissions may only
be filed together with written comments by the third party requester in
response to a patent owner response to an Office action on the merits,
or after an action closing prosecution. No comment was received on this
section. The conjunction "and" has been replaced by "or" in the
recitation "Secs. 1.947, 1.951(a), or 1.951(d)" for grammatical
clarity. The reference to Sec. 1.951(a) has been deleted and
Sec. 1.951(d) has been changed to Sec. 1.951(b) to reflect the changes
made to Sec. 1.951 pursuant to the comments. The section is adopted as
amended.
New Sec. 1.949 provides for the close of prosecution on the second
or subsequent Office action which precedes a final action, a final
rejection and/or a final decision favorable to patentability. The
distinction between a final action and an action closing prosecution is
important, since appeal rights to the Board of Patent Appeals and
Interferences under 35 U.S.C. 134 (b) and (c) mature only with a final
action. One comment was received directed to this section.
Comment: The comment suggests that the examiner should be precluded
from closing prosecution whenever a new ground of rejection is made,
irrespective of whether a prior amendment made the new ground
necessary. The comment argues that a reexamination is different from an
application where the applicant is permitted to refile the application
and introduce new claims, evidence and argument, because the patent
owner in a reexamination cannot abandon the reexamination and file a
continuing proceeding.
Response to Comment: The third party request for reexamination sets
forth the grounds of rejections raised by the third party requester.
The initial Office action on the merits addresses the grounds and
arguments raised in the request, and sets forth the examiner's grounds
of rejection including those raised by the third party requester and
those raised by the examiner. The Office action also includes the
examiner's reasons for not adopting other grounds of rejection proposed
by the third party requester. Patent owner may consider and respond to
the initial Office action, and provide amended claims ranging from the
broadest claim patent owner considers to be patentable over the prior
art to the narrowest claim patent owner is willing to accept. Thus,
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prior to the close of prosecution, the issues are well developed,
patent owner is aware of the issues and positions of the third party
requester and the examiner, and patent owner has the right to present
evidence and argument in light of the third party arguments and the
examiner's rejections and to present amended claims. While patent owner
may not refile a reexamination after the close of prosecution and
"start over" as can be done in a regular application after a final
rejection, the reexamination rules do not leave the patent owner
without any relief at this stage of the proceeding. In this regard,
after the close of prosecution the patent owner may file comments and/
or amendments under Sec. 1.951 which will be governed by the standards
of Sec. 1.116. Under Sec. 1.116(c), amendments may be admitted upon a
showing of good and sufficient reasons why they are necessary and were
not earlier presented. This strikes a balance between timely presenting
amendments and providing relief when warranted. It also provides for an
orderly and timely proceeding under the special dispatch requirement of
the statute. In addition, the statute does not preclude the patent
owner from filing an ex parte request for reexamination with amended
claims and/or new evidence. Once ordered, the reexamination proceedings
would be merged, and the newly submitted material would be addressed in
the merged proceeding. The comment is not adopted, and the section is
adopted as proposed.
New Sec. 1.951 sets forth the options available to the parties
after an Office action closing prosecution. Under Sec. 1.951(a), the
patent owner may once file comments limited to issues raised in the
action closing prosecution, which comments may also include proposed
amendments (subject to the criteria of Sec. 1.116 as to whether or not
the amendments shall be admitted). Under Sec. 1.951(b), when the patent
owner does file comments, the third party requester may once file
comments in response to the patent owner's comments. One comment was
received directed to this section.
Comment: Section 1.951 as proposed in the Notice of Proposed
Rulemaking included subsections (a)-(d). Proposed subsection (a)
permitted the third party requester to once file comments limited to
issues raised in the action closing prosecution. Proposed subsection
(b) permitted the patent owner to once file comments in response to the
third party requester's comments. Simultaneously to the filing of these
submissions, proposed subsection (c) permitted the
patent owner to once file comments limited to issues raised in the
action closing prosecution, and proposed subsection (d) permitted the
third party requester to once file comments in response to the patent
owner's comments. The comment suggests that the comments filed by the
third party requester under proposed Sec. 1.951(a) after the close of
prosecution do not comply with the statute because they are not filed
in reply to a patent owner's response to an Office action on the
merits. The comment asserts that such "direct" requester comments are
not consistent with the statute as the statute makes it clear that the
third party requester's right to comment only matures with the filing
of a patent owner response to an Office action on the merits, and
nowhere in the statute does it permit third party requester comments
without there first being a patent owner response.
Response to Comment: The comment has been adopted. Proposed
subsection (a) which permitted the third party requester to once file
comments limited to issues raised in the action closing prosecution,
and proposed subsection (b) which permitted the patent owner to once
file comments in response to the third party requester comments have
been deleted. Proposed subsections (c) and (d) have been re-named (a)
and (b), respectively. The purpose of proposed subsections (a) and (b)
was to provide the third party requester an opportunity to better focus
the issues prior to filing an appeal. Such issues may now be addressed
by the requester after appeal in the appellant brief which, if
persuasive, will result in the examiner adopting requester's arguments
and reopening prosecution, if appropriate. While waiting until after
appeal to permit "direct" third party requester arguments may result
in protracting the proceeding, such direct third party input is
consistent with the statute which permits the third party requester to
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appeal any final decision favorable to patentability, and be a party to
any appeal taken by the patent owner to the Board of Patent Appeals and
Interferences. 35 U.S.C. 315(a) and (b). The comment is adopted as
amended.
New Sec. 1.953 provides for issuance of a right of appeal notice.
Section 1.953(a) provides that, following the responses or expiration
of the time for response in Sec. 1.951, the examiner may issue a right
of appeal notice which shall include a final rejection and/or final
decision favorable to patentability in accordance with 35 U.S.C. 134.
The intent of limiting the appeal rights until after the examiner
issues a right of appeal notice is to specifically preclude the
possibility of one party attempting to appeal prematurely while
prosecution before the examiner is being continued by the other party.
Section 1.953(b) provides that any time after 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 decision favorable to patentability, and may request the
issuance of a right of appeal notice. 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. The request
for an expedited notice will enable the parties to accelerate the inter
partes reexamination proceeding. Section 1.953(c) provides that the
right of appeal notice shall be a final action, which would include a
final rejection and/or a final decision favorable to patentability, and
prohibits amendments under Sec. 1.116 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 appeal is filed, amination proceeding will be terminated, and the Commissioner will
proceed to issue a certificate under Sec. 1.997 in accordance with the
right of appeal notice. No comment was received on this section. It is
adopted as proposed.
New Sec. 1.955 provides that interviews which discuss the merits of
the proceeding will not be permitted in inter partes reexamination
proceedings. Thus, in an inter partes reexamination proceeding, no
separate ex parte interviews will be permitted, and no inter partes
interviews will be permitted; nor will an informal amendment be
accepted as that would be tantamount to an ex parte interview. All
communications between the Office and the patent owner which are
directed to the merits of the proceeding must be in writing and filed
with the Office for entry into the record of the proceeding. The Office
has reconsidered its initial position, taken in the August 11, 1995,
Notice of Proposed Rulemaking, to permit owner-initiated interviews in
which the patent owner and the third party requester would participate.
Accordingly, neither the patent owner nor the third party requester in
an inter partes reexamination is permitted to initiate, or participate
in, an ex parte interview or an inter partes interview which discusses
the merits of the proceeding. Four comments were received directed to
this section.
Comments: The first comment asserts that because the inter partes
reexamination may result in the cancellation of patent claims or the
estoppel of one or more third party defenses in a civil action, the
examiner should have access to all matters that may be necessary to
reach a decision, including the testimony of experts, particularly in
the face of cross-examination. Further, the comment suggests that the
patent owner is forced into an inter partes reexamination and should
not be deprived of patent rights without due process of law. The
comment suggests that interviews should be provided during which each
party should be permitted to present its case orally to the examiner,
to present its experts and to question the other party and the other
party's experts in front of the examiner, and that the examiner, in
turn, should have the opportunity to question both parties and their
experts.
The second comment recognizes the concerns of the Office but
concludes that since the rule could be waived in appropriate
circumstances, the rule does not amount to an absolute prohibition. The
comment suggests interviews be permitted, particularly if they could be
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handled through the assistance of a special group of legal advisors
trained in conducting inter partes hearings. The comment further
suggests a rule be imposed that any oral or electronic contact with
Office officials responsible for an inter partes proceeding be handled
through a conference call with all relevant parties represented.
The third comment suggests that it is unnecessary to ban interviews
across the board because an interview can be useful to help the
examiner understand the points of contention, particularly so when the
art is complex. If the presence of a third party requester would
complicate the interview, the examiner could simply interview the
parties separately. The comment suggests that since there are usually
severely conflicting interests between the patent owner and the third
party requester, the interview should be limited to deepening the
examiner's understanding of the technology and to clarifying points of
contention; the examiner should be prohibited from discussing amendment
proposals.
The fourth comment suggests that while the prohibition against
interviews would seem to be quite beneficial to the third party
requester, a countervailing problem for the examiner and the patent
owner will be an inability of the examiner to resolve complex
technological issues by direct questions and answers (in an interview).
The comment suggests that guidelines to the examiner on how to address
such issues in the form of written questions should
be provided in the Manual of Patent Examining Procedure (MPEP).
Response to Comments: The comments suggest various formats for
providing an interview including: a formal hearing format, interview
oversight by trained legal advisors, conference calls, separate
interviews for both parties, and limitations on the examiner from
discussing amendments during an interview. While the suggested formats
would tend to ease the problems associated with inter partes
interviews, the remaining problems would still outweigh the benefits of
an interview on the merits. No matter what the structure of the
interview, the presence of a third party requester (or a separate
interview with the requester) will complicate the reexamination
proceeding and significantly delay it. Past history has shown inter
partes interviews to be both resource intensive and unwieldy. Inter
partes interviews are difficult to arrange, conduct, and control.
Inevitable interaction between the patent owner's representative and
its experts, the third party's representative and its experts, the
examiner, and the "senior level official" would be difficult to
regulate and control. Recording the substance of the interview would be
difficult, and providing cross-transcripts would result in delay and
complications. In addition, the time to arrange and conduct the
interview would greatly extend the inter partes proceeding time line,
which would be clearly contrary to the "special dispatch" required by
35 U.S.C. 314(c) for the inter partes reexamination proceeding. The
suggestion as to providing guidelines on instructing the examiner on
how to draft written questions is a matter to be addressed in a future
MPEP revision. The comments are not adopted, and the section is adopted
as proposed.
New Sec. 1.956 relates to patent owner extensions of time for
responding to a requirement of the Office in inter partes reexamination
proceedings. As in ex parte reexamination practice, a patent owner may
only obtain an extension of time for sufficient cause, and the request
for such extension must be filed on or before the end of the period for
response. Note that the time for the third party requester to file
comments to patent owner responses may not be extended, as set forth in
Sec. 1.947. No comment was received on this section. It is adopted as
proposed.
New Sec. 1.957(a) provides that a third party requester's
submission in inter partes reexamination may be refused consideration
if it is untimely or is inappropriate. Sections 1.957(b) and (c) relate
to the patent owner's failure to timely or appropriately respond in
inter partes reexamination proceedings. In this event, if no claims are
found patentable, the proceeding shall be terminated and a
reexamination certificate shall be issued. If claims are found
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patentable, further prosecution shall be limited to the patentable
claims, and any additional claims that do not expand the scope of the
patentable claims. New Sec. 1.957(d) provides that when the action by
the patent owner is a bona fide attempt to respond and to advance the
case, and is substantially a complete response to the Office action,
but consideration of some matter or compliance with some requirement
has been inadvertently omitted, an opportunity to explain and supply
the omission may be given. No comment was received on this section. It
is adopted as proposed.
New Sec. 1.958(a) provides for the revival of terminated inter
partes reexamination proceedings under the unavoidable delay provisions
of Sec. 1.137(a). The unavoidable delay provisions of 35 U.S.C. 133 are
imported into and are applicable to inter partes reexamination
proceedings under 35 U.S.C. 314. New Sec. 1.958(b) provides for the
revival of terminated inter partes reexamination proceedings under the
unintentional provisions of Sec. 1.137(b). The unintentional delay fee
provisions of 35 U.S.C. 41(a)(7) are imported into and are applicable
to inter partes reexamination proceedings under section 4605 of S.
1948. Note, however, the unintentional delay fee provisions of 35
U.S.C. 41(a)(7) only become effective in reexamination proceedings on
November 29, 2000 (one year after enactment of statute). No comment was
received on this section. It is adopted as proposed.
New Sec. 1.959 relates to appeals and cross appeals to the Board of
Patent Appeals and Interferences in inter partes reexamination
proceedings. Both patent owners and third party requesters are given
appeal rights in accordance with 35 U.S.C. 315. No comment was received
on this section. It is adopted as proposed.
New Sec. 1.961 relates to time of transfer of the jurisdiction of
the appeal over to the Board of Patent Appeals and Interferences in
inter partes reexamination proceedings. No comment was received on this
section. It is adopted as proposed.
New Sec. 1.962 relates to the definition of appellant and
respondent in inter partes reexamination proceedings. No comment was
received on this section. It is adopted as proposed.
New Sec. 1.963 relates to the time periods for filing briefs in
inter partes reexamination proceedings. No comment was received on this
section. It is adopted as proposed.
New Sec. 1.965 relates to the requirements of the appellant brief
in inter partes reexamination proceedings. No comment was received on
this section. It is adopted as proposed.
New Sec. 1.967 relates to the requirements of the respondent brief
in inter partes reexamination proceedings. No comment was received on
this section. It is adopted as proposed.
New Sec. 1.969 relates to the examiner's answer. An examiner's
answer may not include a new ground of rejection nor a new decision
favorable to patentability. In either case (if there is to be a new
ground of rejection or a new decision favorable to patentability),
prosecution should be reopened. One comment was received directed to
this section.
Comment: The comment questioned whether the examiner's answer
should be optional especially when the appeal is by the patent owner.
Response to Comment: Although Sec. 1.969(a) indicates that an
examiner's answer "may" be furnished, common practice as set out in
the procedure of the Manual of Patent Examining Procedure, is to
furnish an examiner's answer. When an appeal goes forward, an
examiner's answer will be mandatory. If the examiner, however, changes
his or her position to issue a new ground of rejection or (when the
third party participates in the appeal) to make a new finding of
patentability, an examiner's answer would not be issued and prosecution
would be reopened. The word "may" is used to cover those situations
where prosecution is reopened and an examiner's answer is not issued.
The word "may" does not authorize an examiner to send a proceeding to
the Board of Patent Appeals and Interferences without issuing an
examiner's answer. Section 1.969(c) is being modified by deleting
"Where a third party requester is a party to the appeal" and a new
Sec. 1.969(d) is being added which provides clarification that any new
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ground of rejection or new determination not to make a proposed
rejection must be made in an action reopening prosecution in accordance
with the discussion of proposed Sec. 1.969 in the notice of proposed
rulemaking. The comment is not adopted and the section is adopted as
modified in new Sec. 1.969(d).
New Sec. 1.971 gives any appellant one opportunity to file a
rebuttal brief following the examiner's answer. The rebuttal brief
filed by an appellant who is the patent owner is limited to the issues
raised in the examiner's answer and/or in any respondent brief.
The rebuttal brief filed by an appellant who is a third party
requester is limited to the issues raised in the examiner's answer
and/or in the patent owner's respondent brief. The rebuttal brief of a
third party requester may not be directed to the respondent brief of
any other third party requester. No new ground of rejection can be
proposed by a third party requester appellant. One comment was received
directed to this section.
Comment: The comment, notes that the time for filing the rebuttal
brief is within one month of the examiner's answer and suggests that
since the examiner's answer is not required by the rules, tying one
deadline date to another date for an event that may never occur may
create a problem.
Response to Comment: Although Sec. 1.969(a) indicates that an
examiner's answer "may" be furnished, common practice as set out in
the procedure of the Manual of Patent Examining Procedure, is to
furnish an examiner's answer. When an appeal goes forward, an
examiner's answer will be mandatory. See the discussion set forth in
response to the comment on Sec. 1.969 above. The comment is not adopted
and the section is adopted as proposed.
New Sec. 1.973 relates to the oral hearing in inter partes
reexamination proceedings. One comment was received directed to this
section.
Comment: The comment points out that the request for oral hearing
may be filed "within one month of the examiner's answer," and that
the rules provide that the examiner "may" issue an examiner's answer
under 1.969(a). The comment questions what happens if the examiner does
not issue an examiner's answer? The comment suggests the rule should be
modified to provide that a request for oral hearing be due "within two
months after the date of the examiner's answer or the period within
which the examiner's answer must be furnished."
Response to Comment: Although Sec. 1.969(a) indicates that an
examiner's answer "may" be furnished, common practice as set out in
the procedure of the Manual of Patent Examining Procedure, is to
furnish an examiner's answer. When an appeal goes forward, an
examiner's answer will be mandatory. See the discussion set forth in
response to the comment on Sec. 1.969 above. The comment is not adopted
and the section is adopted as proposed.
New Sec. 1.975 relates to affidavits or declarations after appeal
in inter partes reexamination proceedings. No comment was received on
this section. It is adopted as proposed.
New Sec. 1.977 relates to the decision by the Board of Patent
Appeals and Interferences (Board) in inter partes reexamination
proceedings. This section generally tracks Sec. 1.196 which governs the
Board's decision in an appeal in an application. Section 1.977(a)
provides that a reversal of an examiner's decision favorable to
patentability (i.e., the reversal of the examiner's decision not to
make a rejection proposed by the third party requester) constitutes a
decision adverse to patentability which will be set forth as a new
ground of rejection under Sec. 1.977(b). Section Sec. 1.977 as set
forth in the notice of proposed rulemaking included a Sec. 1.977(c)
which permitted the Board to include a statement that a claim may be
allowable in amended form if newly revised as proposed by the Board.
Proposed Sec. 1.977(c), however, has been deleted in light of the
comment and discussion that follows.
Comment: The comment notes that under 1.977(c), as proposed, the
Board of Patent Appeals and Interferences (Board) may suggest an
amendment for allowing a claim. The comment suggests that procedures
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would be too complicated to implement in the inter partes proceeding.
Response to Comment: The comment is adopted. Providing for patent
owner and third party comment on a Board determination of the
patentability of a hypothetical amended claim appears to be unduly
complicated so late in the proceedings. Section 1.977(c) as proposed in
the notice of proposed rulemaking has been deleted. Sections 1.977(d)-
(h) as proposed in the notice of proposed rulemaking have been
redesignated Secs. 1.977(c)-(g), respectively, and references to these
subsections in other sections have been revised to reflect these
changes.
New Sec. 1.979 relates to the procedure following the decision or
dismissal by the Board of Patent Appeals and Interferences in inter
partes reexamination proceedings. No comment was received on this
section. It is adopted as proposed.
New Sec. 1.981 relates to the procedure for the reopening of
prosecution following the decision by the Board of Patent Appeals and
Interferences in inter partes reexamination proceedings. No comment was
received on this section. It is adopted as proposed.
New Sec. 1.983 relates to the patent owner's right to appeal to the
United States Court of Appeals for the Federal Circuit in inter partes
reexamination proceedings. Under 35 U.S.C. 141, the patent owner in
inter partes reexamination proceedings may appeal the decision of the
Board of Patent Appeals and Interferences only to the United States
Court of Appeals for the Federal Circuit. Under 35 U.S.C. 134(c), the
third party requester in inter partes reexamination proceedings may not
appeal the decision of the Board of Patent Appeals and Interferences.
No comment was received on this section. It is adopted as proposed.
New Sec. 1.985 relates to notification of prior or concurrent
proceedings in inter partes reexamination proceedings. Section 1.985(a)
requires the patent owner to notify the Office of any prior or
concurrent proceeding involving the patent under inter partes
reexamination. Section 1.985(b) permits any member of the public to
notify the Office of any prior or concurrent proceeding involving the
patent under inter partes reexamination. Such notice, however, must be
limited to merely providing notice without discussion of the issues in
the inter partes reexamination. Any notice that includes a discussion
of the issues will be returned to the sender. No comment was received
on this section. It is adopted as proposed.
New Sec. 1.987 provides that when a patent involved in an inter
partes reexamination is concurrently involved in litigation, the
Commissioner shall determine whether or not to suspend the inter partes
reexamination proceeding. No comment was received on this section. It
is adopted as proposed.
New Sec. 1.989 relates to the merger of concurrent reexamination
proceedings. One comment was received directed to this section.
Comment: The comment suggests that if a third party requester in an
inter partes reexamination files a subsequent ex parte reexamination
request, the proceedings should not be merged, but rather the ex parte
reexamination should be stayed. The comment argues that a third party
requester in an inter partes reexamination should not be permitted to
end-run the prohibition of 35 U.S.C. 317(a) (which prohibits a
subsequent inter partes reexamination during the pendency of an ongoing
inter partes reexamination) by filing a subsequent ex parte
reexamination request.
Response to Comment: As to the suggestion that the subsequent ex
parte reexamination be stayed, this would be in direct violation of the
special dispatch requirement of the ex parte reexamination statute.
Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).
Moreover, the filing of an ex parte reexamination request by an inter
partes third party requester is not an "end-run" of the prohibition
of 35 U.S.C. 317(a), because the two
proceedings are of a different nature, and thus, the filing of the ex
parte reexamination is not the same as the filing of a second inter
partes reexamination. The comment is not adopted and the section is
adopted as proposed.
New Sec. 1.991 relates to the merger of a concurrent reissue
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application and an inter partes reexamination proceeding. Two comments
were received directed to this section.
Comments: The first comment suggests that if the patent owner is
permitted to request an interview in a merged reissue and inter partes
reexamination, then the third party requester should be permitted to do
so equally as well.
The second comment notes that the third party requester is
permitted by rule in a merged reexamination and reissue to participate
to the extent permitted by the reexamination rules and be limited to
issues within the scope of inter partes reexamination. The comment
questions whether this is realistic and asks (1) whether this
limitation precludes a third party from acting as a protestor in the
merged reissue application regarding the full scope of issues raised in
the merged proceeding; and (2) since the patent owner filed the
reissue, why should the third party be precluded from participating as
a protestor? The comment suggests a better approach would be to permit
the third party to comment on any issue, so long as it was in accord
with the procedures adopted for the conduct of the merged proceeding
for third parties or protestors.
Response to Comments: The first comment suggests that if the patent
owner is permitted to request an interview in a merged reissue and
inter partes reexamination, the Office should also permit the third
party requester to initiate an interview in the merged proceeding. The
suggestion is moot, since the patent owner will not be permitted to
request an interview in a merged reissue and inter partes reexamination
for the reasons set forth in the discussion of Sec. 1.955 above.
As to the second comment, the rule does not preclude the third
party requester from filing a protest under Sec. 1.291 in the reissue
application in the merged proceeding directed to any issue, including
issues other than those relating to patent and printed publications.
Such protests would be governed by the procedures adopted for
protestors set forth in Chapter 1900 of the Manual of Patent Examining
Procedure (MPEP). Participation in issues raised under Sec. 1.291 will
be governed by Sec. 1.291 and the procedures adopted for protestors in
MPEP 1901 through 1907. To the extent that the second comment would
permit the third party requester to "comment" (as opposed to filing a
protest) on any issue, so long as it was in accord with the procedures
adopted for the conduct of the merged proceeding for third parties or
protestors, the comment will not be adopted. The right to file a
protest is limited as stated in MPEP chapter 1900. Thus, the permitted
challenge to the patent on "any issue" is limited. To permit third
party requester "comments" on "any issue" would increase the
pendency of the proceeding contrary to special dispatch required by the
statute, and would permit harassment of the patent owner on "any
issue" in ways that the Chapter 1900 limitations on protest
submissions are designed to prevent (i.e., multiple submissions on the
same issue). The comments are not adopted.
New Sec. 1.993 relates to the suspension of a concurrent
interference or an inter partes reexamination proceeding. No comment
was received on this section. It is adopted as proposed.
New Sec. 1.995 relates to the third party requester's participation
rights being preserved in a merged proceeding. No comment was received
on this section. It is adopted as proposed.
New Sec. 1.997 provides for the issuance of the reexamination
certificate under 35 U.S.C. 316 after conclusion of an inter partes
reexamination proceeding. The certificate will cancel any patent claims
determined to be unpatentable, confirm any patent claims determined to
be patentable, and incorporate into the patent any amended or new
claims determined to be patentable. Once all of the claims have been
canceled from the patent, the patent ceases to be enforceable for any
purpose. Accordingly, any pending reissue proceeding or other Office
proceeding relating to a patent for which a certificate that canceled
all of the patent claims has been issued will be terminated. This
provides a degree of assurance to the public that patents with all the
claims canceled via inter partes reexamination proceedings will not
again be asserted. No comment was received on this section. It is
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adopted as proposed.
Classification
Regulatory Flexibility Act
The Chief Counsel for Regulation of the Department of Commerce
certified to the Chief Counsel for Advocacy, Small Business
Administration, that the changes in this notice will not have a
significant impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). This rulemaking
implements the provisions of title IV, subtitle F (Secs. 4601 through
4608) of the American Inventors Protection Act of 1999, which permits a
third party requester to participate more extensively during the
reexamination proceeding as well as giving them appeal rights. The
changes in this notice will provide procedures for a third party to
request optional inter partes reexamination of a patent. The new inter
partes proceedings are similar to the ex parte proceedings, although
they are more complicated procedurally to accommodate the presence of
the third party.
Taking into account the overall similarities and additional
complexity, it is reasonable to assume that a similar proportion of
small entities will request inter partes reexamination as have
requested ex parte reexamination. Furthermore, it is anticipated that
inter partes reexamination requests will be filed by third party
requesters, while patent owners will continue to file ex parte
reexamination requests. Approximately 400 ex parte reexamination
filings have been received each year since 1992, of which 55 percent or
220 have been filed by third party requesters. Since the beginning of
the reexamination procedure, about 22.5 percent of the ex parte
reexamination requesters have been small entities. If all 220 of the
third party-filed reexamination requests were filed as requests for
inter partes reexaminations, approximately 50 requests (22.5%) would
come from small entities. The higher cost of the inter partes
reexamination fee ($8,800) compared to the ex parte reexamination fee
($2,520) reflects the greatly expanded participation available to the
third party requester. In the inter partes proceeding, the third party
requester has the right to comment on every response by the patent
owner to the USPTO, to be a party to any appeal by the patent owner to
the Board of Patent Appeals and Interferences, and to appeal any
determination of patentability to the Board of Patent Appeals and
Interferences. In the ex parte proceeding, the third party requester's
role is limited to the request for reexamination and a single reply to
the patent owner's response. The third party requester also has no
appeal rights in an ex parte reexamination. Therefore, the number of
small businesses affected by these proposed optional inter parte
reexamination rules is not significant, and the impact on each
business, considering the benefits of greater participation throughout
the inter partes proceeding, is not significant.
Executive Order 13132
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (August 4, 1999).
Executive Order 12866
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (September 30, 1993).
Paperwork Reduction Act
This notice of rulemaking 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.
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3501 et seq.). The collection of information involved in this notice of
rulemaking has been reviewed and previously approved by OMB under OMB
control number 0651-0033.
As required by the Paperwork Reduction Act of 1995 (44 U.S.C.
3507(d)), the U.S. Patent and Trademark Office has submitted an
information collection package to OMB for its review and approval of
the proposed information collections under OMB control number 0651-
0033. The U.S. Patent and Trademark Office is submitting this
information collection to OMB for its review and approval because this
notice of rulemaking will add the request for optional inter partes
reexamination of a patent to that collection.
The title, description, and respondent description of the
information collection is shown below with an estimate of the annual
reporting burdens. Included in this estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information. The principal impact of
the changes in this notice of rulemaking is to implement the changes to
Office practice necessitated by title IV, subtitle F (Secs. 4601
through 4608) of the American Inventors Protection Act of 1999 (enacted
into law by Sec. 1000(a)(9), division B, of Public Law 106-113).
OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
Type of Review: Approved through September of 2000.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 172,475.
Estimated Time Per Response: 0.3 hour.
Estimated Total Annual Burden Hours: 51,593.5 hours.
Needs and Uses: This collection of information is required to
administer the patent laws pursuant to title 35, U.S.C., concerning the
issuance of patents and related actions including correcting errors in
printed patents, refiling of patent applications, requesting
reexamination of a patent, and requesting a reissue patent to correct
an error in a patent. The affected public includes any individual or
institution whose application for a patent has been allowed or who
takes action as covered by the applicable rules.
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Office of Patent Legal
Administration, U.S. Patent and Trademark Office, Washington, D.C.
20231, or to the Office of Information and Regulatory Affairs of OMB,
New Executive Office Building, 725 17th St. NW, Room 10235, Washington,
DC 20503, Attention: Desk Officer for the U.S. Patent and Trademark
Office.
Notwithstanding any other provision of law, no person is required
to respond to or shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set out in the preamble and under the authority
given to the Commissioner of Patents and Trademarks by 35 U.S.C.
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2(b)(2), part 1 of title 37 CFR is amended as set forth below.
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 1.4(a)(2) is revised to read as follows:
Sec. 1.4 Nature of correspondence and signature requirements.
(a) * * *
(2) Correspondence in and relating to a particular application or
other proceeding in the Office. See particularly the rules relating to
the filing, processing, or other proceedings of national applications
in subpart B, Secs. 1.31 to 1.378; of international applications in
subpart C, Secs. 1.401 to 1.499; of ex parte reexaminations of patents
in subpart D, Secs. 1.501 to 1.570; of interferences in subpart E,
Secs. 1.601 to 1.690; of extension of patent term in subpart F,
Secs. 1.710 to 1.785; of inter partes reexaminations of patents in
subpart H, Secs. 1.902 to 1.997; and of trademark applications
Secs. 2.11 to 2.189.
* * * * *
3. Section 1.6(d)(5) is revised to read as follows:
Sec. 1.6 Receipt of Correspondence.
* * * * *
(d) * * *
(5) A request for reexamination under Sec. 1.510 or Sec. 1.913;
* * * * *
4. Section 1.20(c) is revised to read as follows:
Sec. 1.20 Post-issuance and reexamination fees.
* * * * *
(c) In reexamination proceedings
(1) For filing a request for ex parte reexamination
(Sec. 1.510(a))--$2,520.00
(2) For filing a request for inter partes reexamination
(Sec. 1.915(a))--$8,800.00
* * * * *
5. Section 1.25(b) is revised to read as follows:
Sec. 1.25 Deposit accounts.
* * * * *
(b) Filing, issue, appeal, international-type search report,
international application processing, petition, and post-issuance fees
may be charged against these accounts if sufficient funds are on
deposit to cover such fees. A general authorization to charge all fees,
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or only certain fees, set forth in Secs. 1.16 to 1.18 to a deposit
account containing sufficient funds may be filed in an individual
application, either for the entire pendency of the application or with
a particular paper filed. An authorization to charge a fee to a deposit
account will not be considered payment of the fee on the date the
authorization to charge the fee is effective as to the particular
fee to be charged unless sufficient funds are present in the account
to cover the fee. An authorization to charge fees under Sec. 1.16
in an application submitted under Sec. 1.494 or Sec. 1.495 will be
treated as an authorization to charge fees under Sec. 1.492.
An authorization to charge fees set forth in Sec. 1.18 to a deposit
account is subject to the provisions of Sec. 1.311(b). An authorization
to charge to a deposit account the fee for a request for reexamination
pursuant to Sec. 1.510 or Sec. 1.913 and any other fees required in a
reexamination proceeding in a patent may also be filed with the request
for reexamination.
6. Section 1.26(c) is revised to read as follows:
Sec. 1.26 Refunds.
* * * * *
(c) If the Commissioner decides not to institute a reexamination
proceeding, for ex parte reexaminations filed under Sec. 1.510, a
refund of $1,690 will be made to the reexamination requester. For inter
partes reexaminations filed under Sec. 1.913, a refund of $7,970 will
be made to the reexamination requester. The reexamination requester
should indicate the form in which any refund should be made (e.g., by
check, electronic funds transfer, credit to a deposit account, etc.).
Generally, reexamination refunds will be issued in the form that the
original payment was provided.
7. Section 1.112 is revised to read as follows:
Sec. 1.112 Reconsideration before final action.
After reply by applicant or patent owner (Sec. 1.111 or Sec. 1.945)
to a non-final action and any comments by an inter partes reexamination
requester (Sec. 1.947), the application or the patent under
reexamination will be reconsidered and again examined. The applicant,
or in the case of a reexamination proceeding the patent owner and any
third party requester, will be notified if claims are rejected,
objections or requirements made, or decisions favorable to
patentability are made, in the same manner as after the first
examination (Sec. 1.104). Applicant or patent owner may reply to such
Office action in the same manner provided in Sec. 1.111 or Sec. 1.945,
with or without amendment, unless such Office action indicates that it
is made final (Sec. 1.113) or an appeal (Sec. 1.191) has been taken
(Sec. 1.116), or in an inter partes reexamination, that it is an action
closing prosecution (Sec. 1.949) or a right of appeal notice
(Sec. 1.953).
8. Section 1.113(a) is revised to read as follows:
Sec. 1.113 Final rejection or action.
(a) On the second or any subsequent examination or consideration by
the examiner the rejection or other action may be made final, whereupon
applicant's, or for ex parte reexaminations filed under Sec. 1.510,
patent owner's reply is limited to appeal in the case of rejection of
any claim (Sec. 1.191), or to amendment as specified in Sec. 1.114 or
Sec. 1.116. Petition may be taken to the Commissioner in the case of
objections or requirements not involved in the rejection of any claim
(Sec. 1.181). Reply to a final rejection or action must comply with
Sec. 1.114 or paragraph (c) of this section. For final actions in an
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inter partes reexamination filed under Sec. 1.913, see Sec. 1.953.
* * * * *
9. Sections 1.116(b) and (d) are revised to read as follows:
Sec. 1.116 Amendments after final action, action closing prosecution,
right of appeal notice, or appeal.
* * * * *
(b) After a final rejection or other final action (Sec. 1.113) in
an application or in an ex parte reexamination filed under Sec. 1.510,
or an action closing prosecution (Sec. 1.949) in an inter partes
reexamination filed under Sec. 1.913, amendments may be made canceling
claims or complying with any requirement of form expressly set forth in
a previous Office action. Amendments presenting rejected claims in
better form for consideration on appeal may be admitted. The 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 application or patent under reexamination
from its condition as subject to appeal or to save the application from
abandonment under Sec. 1.135, or the reexamination from termination. No
amendment can be made in an inter partes reexamination proceeding after
the right of appeal notice under Sec. 1.953 except as provided for in
paragraph (d) of this section.
* * * * *
(d) No amendment can be made as a matter of right in appealed
cases. After decision on appeal, amendments can only be made as
provided in Secs. 1.198 and 1.981, or to carry into effect a
recommendation under Sec. 1.196 or Sec. 1.977.
10. Section 1.121(i) is revised to read as follows:
Sec. 1.121 Manner of making amendments.
* * * * *
(i) Amendments in reexamination proceedings: Any proposed amendment
to the description and claims in patents involved in reexamination
proceedings in both ex parte reexaminations filed under Sec. 1.510 and
inter partes reexaminations filed under Sec. 1.913 must be made in
accordance with Sec. 1.530(d)-(j).
11. Sections 1.136(a)(2) and (b) are revised to read as follows:
Sec. 1.136 Extensions of time.
(a) * * *
(2) The date on which the petition and the fee have been filed is
the date for purposes of determining the period of extension and the
corresponding amount of the fee. The expiration of the time period is
determined by the amount of the fee paid. A reply must be filed prior
to the expiration of the period of extension to avoid abandonment of
the application (Sec. 1.135), but in no situation may an applicant
reply later than the maximum time period set by statute, or be granted
an extension of time under paragraph (b) of this section when the
provisions of this paragraph are available. See Sec. 1.136(b) for
extensions of time relating to proceedings pursuant to Secs. 1.193(b),
1.194, 1.196 or 1.197; Sec. 1.304 for extensions of time to appeal to
the U.S. Court of Appeals for the Federal Circuit or to commence a
civil action; Sec. 1.550(c) for extensions of time in ex parte
reexamination proceedings; Sec. 1.956 for extensions of time in inter
partes reexamination proceedings; and Sec. 1.645 for extensions of time
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in interference proceedings.
* * * * *
(b) When a reply cannot be filed within the time period set for
such reply and the provisions of paragraph (a) of this section are not
available, the period for reply will be extended only for sufficient
cause and for a reasonable time specified. Any request for an extension
of time under this paragraph must be filed on or before the day on
which such reply is due, but the mere filing of such a request will not
affect any extension under this paragraph. In no situation can any
extension carry the date on which reply is due beyond the maximum time
period set by statute. See Sec. 1.304 for extensions of time to appeal
to the U.S. Court of Appeals for the Federal Circuit or to commence a
civil action; Sec. 1.645 for extensions of time in interference
proceedings; Sec. 1.550(c) for extensions of time in ex parte
reexamination proceedings; and Sec. 1.956 for extensions of time in
inter partes reexamination proceedings.
* * * * *
12. Sections 1.181(a) and (c) are revised to read as follows:
Sec. 1.181 Petition to the Commissioner.
(a) Petition may be taken to the Commissioner:
(1) From any action or requirement of any examiner in the ex parte
prosecution of an application, or in the ex parte or inter partes
prosecution of a reexamination proceeding which is not subject to
appeal to the Board of Patent Appeals and Interferences or to the
court;
(2) In cases in which a statute or the rules specify that the
matter is to be determined directly by or reviewed by the Commissioner;
and
(3) To invoke the supervisory authority of the Commissioner in
appropriate circumstances. For petitions in interferences, see
Sec. 1.644.
* * * * *
(c) When a petition is taken from an action or requirement of an
examiner in the ex parte prosecution of an application, or in the ex
parte or inter partes prosecution of a reexamination proceeding, it may
be required that there have been a proper request for reconsideration
(Sec. 1.111) and a repeated action by the examiner. The examiner may be
directed by the Commissioner to furnish a written statement, within a
specified time, setting forth the reasons for his or her decision upon
the matters averred in the petition, supplying a copy to the petitioner.
* * * * *
13. Section 1.191(a) is revised to read as follows:
Sec. 1.191 Appeal to Board of Patent Appeals and Interferences.
(a) Every applicant for a patent or for reissue of a patent, and
every owner of a patent under ex parte reexamination filed under
Sec. 1.510 for a patent that issued from an original application filed
in the United States before November 29, 1999, any of whose claims has
been twice or finally (Sec. 1.113) rejected, may appeal from the
decision of the examiner to the Board of Patent Appeals and
Interferences by filing a notice of appeal and the fee set forth in
Sec. 1.17(b) within the time period provided under Secs. 1.134 and
1.136 for reply. Notwithstanding the above, for an ex parte reexamination
proceeding filed under Sec. 1.510 for a patent that issued from an original
application filed in the United States on or after November 29, 1999,
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no appeal may be filed until the claims have
been finally rejected (Sec. 1.113). Appeals to the Board of Patent
Appeals and Interferences in inter partes reexamination proceedings filed
under Sec. 1.913 are controlled by Secs. 1.959 through 1.981. Sections
1.191 through 1.198 are not applicable to appeals in inter partes
reexamination proceedings filed under Sec. 1.913.
* * * * *
14. Section 1.301 is revised to read as follows:
Sec. 1.301 Appeal to U.S. Court of Appeals for the Federal Circuit.
Any applicant or any owner of a patent involved in any ex parte
reexamination proceeding filed under Sec. 1.510, dissatisfied with the
decision of the Board of Patent Appeals and Interferences, and any
party to an interference dissatisfied with the decision of the Board of
Patent Appeals and Interferences, may appeal to the U.S. Court of
Appeals for the Federal Circuit. The appellant must take the following
steps in such an appeal: In the U. S. Patent and Trademark Office, file
a written notice of appeal directed to the Commissioner (see
Secs. 1.302 and 1.304); and in the Court, file a copy of the notice of
appeal and pay the fee for appeal as provided by the rules of the
Court. For inter partes reexamination proceedings filed under
Sec. 1.913, Sec. 1.983 is controlling.
15. Section 1.303 is amended by revising paragraphs (a) and (b) and
by adding a new paragraph (d) to read as follows:
Sec. 1.303 Civil action under 35 U.S.C. 145, 146, 306.
(a) Any applicant or any owner of a patent involved in an ex parte
reexamination proceeding filed under Sec. 1.510 for a patent that
issues from an original application filed in the United States before
November 29, 1999, dissatisfied with the decision of the Board of
Patent Appeals and Interferences, and any party to an interference
dissatisfied with the decision of the Board of Patent Appeals and
Interferences may, instead of appealing to the U.S. Court of Appeals
for the Federal Circuit (Sec. 1.301), have remedy by civil action under
35 U.S.C. 145 or 146, as appropriate. Such civil action must be
commenced within the time specified in Sec. 1.304.
(b) If an applicant in an ex parte case or an owner of a patent
involved in an ex parte reexamination proceeding filed under Sec. 1.510
for a patent that issues from an original application filed in the
United States before November 29, 1999, has taken an appeal to the U.S.
Court of Appeals for the Federal Circuit, he or she thereby waives his
or her right to proceed under 35 U.S.C. 145.
* * * * *
(d) For an ex parte reexamination proceeding filed under Sec. 1.510
for a patent that issues from an original application filed in the
United States on or after November 29, 1999, and for an inter partes
reexamination proceeding filed under Sec. 1.913, no remedy by civil
action under 35 U.S.C. 145 is available.
16. Sections 1.304(a)(1) and (a)(2) are revised to read as follows:
Sec. 1.304 Time for appeal or civil action.
(a)(1) The time for filing the notice of appeal to the U.S. Court
of Appeals for the Federal Circuit (Sec. 1.302) or for commencing a
civil action (Sec. 1.303) is two months from the date of the decision
of the Board of Patent Appeals and Interferences. If a request for
rehearing or reconsideration of the decision is filed within the time
period provided under Sec. 1.197(b), Sec. 1.658(b), or Sec. 1.979(a),
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the time for filing an appeal or commencing a civil action shall expire
two months after action on the request. In interferences the time for
filing a cross-appeal or cross-action expires:
(i) Fourteen days after service of the notice of appeal or the
summons and complaint; or
(ii) Two months after the date of decision of the Board of Patent
Appeals and Interferences, whichever is later.
(2) The time periods set forth in this section are not subject to
the provisions of Sec. 1.136, Sec. 1.550(c), Sec. 1.956, or
Sec. 1.645(a) or (b).
* * * * *
17. The section heading for subpart D is revised to read as
follows:
Subpart D--Ex Parte Reexamination of Patents
* * * * *
18. Section 1.501 is amended by revising paragraph (a) to read as
follows:
Sec. 1.501 Citation of prior art in patent files.
(a) At any time during the period of enforceability of a patent,
any person may cite, to the Office in writing, prior art consisting of
patents or printed publications which that person states to be
pertinent and applicable to the patent and believes to have a bearing
on the patentability of any claim of the patent. If the citation is
made by the patent owner, the explanation of pertinency and
applicability may include an explanation of how the claims differ from
the prior art. Such citations shall be entered in the patent file
except as set forth in Secs. 1.502 and 1.902.
* * * * *
19. New Sec. 1.502 is added 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 terminated. 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.
20. The undesignated center heading immediately preceding
Sec. 1.510 is revised as follows:
Request for Ex Parte Reexamination
21. Section 1.510 is amended by revising its heading and paragraph
(a) to read as follows:
Sec. 1.510 Request for ex parte reexamination.
(a) Any person may, at any time during the period of enforceability
of a patent, file a request for an ex parte reexamination by the Office
of any claim of the patent on the basis of prior art patents or printed
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publications cited under Sec. 1.501. The request must be accompanied by
the fee for requesting reexamination set in Sec. 1.20(c)(1).
* * * * *
22. Section 1.515 is amended by revising its heading and the text
to read as follows:
Sec. 1.515 Determination of the request for ex parte reexamination.
(a) Within three months following the filing date of a request for
an ex parte reexamination, an 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 cited therein, with or without consideration of other patents
or printed publications. The examiner's determination will be based on
the claims in effect at the time of the determination, will become a
part of the official file of the patent, and will be mailed to the
patent owner at the address as provided for in Sec. 1.33(c) and to the
person requesting reexamination.
(b) Where no substantial new question of patentability has been
found, a refund of a portion of the fee for requesting ex parte
reexamination will be made to the requester in accordance with
Sec. 1.26(c).
(c) The requester may seek review by a petition to the Commissioner
under Sec. 1.181 within one month of the mailing date of the examiner's
determination refusing ex parte reexamination. Any such petition must
comply with Sec. 1.181(b). If no petition is timely
filed or if the decision on petition affirms that no substantial new question of
patentability has been raised, the determination shall be final and
nonappealable.
23. Section 1.520 is amended by revising its heading and the text
to read as follows:
Sec. 1.520 Ex parte reexamination at the initiative of the
Commissioner.
The Commissioner, at any time during the period of enforceability
of a patent, may determine whether or not a substantial new question of
patentability is raised by patents or printed publications which have
been discovered by the Commissioner or which have been brought to the
Commissioner's attention, even though no request for reexamination has
been filed in accordance with Sec. 1.510 or Sec. 1.913. The
Commissioner may initiate ex parte reexamination without a request for
reexamination pursuant to Sec. 1.510 or Sec. 1.913. Normally requests
from outside the Office that the Commissioner undertake reexamination
on his own initiative will not be considered. Any determination to
initiate ex parte reexamination under this section 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).
24. The undesignated center heading following Sec. 1.520 is revised
to read as follows:
Ex Parte Reexamination
25. Section 1.525 is amended by revising its heading and the text
of paragraphs (a) and (b) to read as follows:
Sec. 1.525 Order for ex parte reexamination.
(a) If a substantial new question of patentability is found
pursuant to Sec. 1.515 or Sec. 1.520, the determination will include an
order for ex parte reexamination of the patent for resolution of the
question. If the order for ex parte reexamination resulted from a
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petition pursuant to Sec. 1.515(c), the ex parte reexamination will
ordinarily be conducted by an examiner other than the examiner
responsible for the initial determination under Sec. 1.515(a).
(b) The notice published in the Official Gazette under Sec. 1.11(c)
will be considered to be constructive notice and ex parte reexamination
will proceed.
26. Section 1.530 is amended by revising its heading and paragraphs
(a), (b), (c), (d) introductory text, 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.
(b) The order for ex parte reexamination will set a period of not
less than two months from the date of the order within which the patent
owner may file a statement on the new question of patentability,
including any proposed amendments the patent owner wishes to make.
(c) Any statement filed by the patent owner shall clearly point out
why the subject matter as claimed is not anticipated or rendered
obvious by the prior art patents or printed publications, either alone
or in any reasonable combinations. Where the reexamination request was
filed by a third party requester, any statement filed by the patent
owner must be served upon the ex parte reexamination requester in
accordance with Sec. 1.248.
(d) Making amendments in a reexamination proceeding. A proposed
amendment in an ex parte or an inter partes reexamination proceeding is
made by filing a paper directing that proposed specified changes be
made to the patent specification, including the claims, or to the
drawings. An amendment paper directing that proposed specified changes
be made in a reexamination proceeding may be submitted as an
accompaniment to a request filed by the patent owner in accordance with
Sec. 1.510(e), as part of a patent owner statement in accordance with
paragraph (b) of this section, or, where permitted, during the
prosecution of the reexamination proceeding pursuant to Sec. 1.550(a)
or Sec. 1.937.
* * * * *
(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 Commissioner 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. 1.977 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 the preceding 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 terminated other than by a reexamination
certificate under Sec. 1.570 or Sec. 1.977, a certificate of correction
indicating the change of inventorship stated in the petition will be
issued upon request by the patentee.
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27. Section 1.535 is revised to read as follows:
Sec. 1.535 Reply by third party requester in ex parte reexamination.
A reply to the patent owner's statement under Sec. 1.530 may be
filed by the ex parte reexamination requester within two months from
the date of service of the patent owner's statement. Any reply by the
ex parte requester must be served upon the patent owner in accordance
with Sec. 1.248. If the patent owner does not file a statement under
Sec. 1.530, no reply or other submission from the ex parte
reexamination requester will be considered.
28. Section 1.540 is revised to read as follows:
Sec. 1.540 Consideration of responses in ex parte reexamination.
The failure to timely file or serve the documents set forth in
Sec. 1.530 or in Sec. 1.535 may result in their being refused
consideration. No submissions other than the statement pursuant to
Sec. 1.530 and the reply by the ex parte reexamination requester
pursuant to Sec. 1.535 will be considered prior to examination.
29. Section 1.550 is revised to read as follows:
Sec. 1.550 Conduct of ex parte reexamination proceedings.
(a) All ex parte reexamination proceedings, including any appeals
to the Board of Patent Appeals and Interferences, will be conducted
with special dispatch within the Office. After issuance of the ex parte
reexamination order and expiration of the time for submitting any
responses, the examination will be conducted in accordance with
Secs. 1.104 through 1.116 and will result in the issuance of an ex
parte reexamination certificate under Sec. 1.570.
(b) The patent owner in an ex parte reexamination proceeding will
be given at least thirty days to respond to any Office action. In
response to any rejection, such response may include further statements
and/or proposed amendments or new claims to place the patent in a
condition where all claims, if amended as proposed, would be
patentable.
(c) The time for taking any action by a patent owner in an ex parte
reexamination proceeding will be extended only for sufficient cause and
for a reasonable time specified. Any request for such extension must be
filed on or before the day on which action by the patent owner is due,
but in no case will the mere filing of a request effect any extension.
See Sec. 1.304(a) for extensions of time for filing a notice of appeal
to the U. S. Court of Appeals for the Federal Circuit or for commencing
a civil action.
(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 ex parte reexamination proceeding
will be terminated, and the Commissioner will proceed to issue a
certificate under Sec. 1.570 in accordance with the last action of the
Office.
(e) If a response by the patent owner is not timely filed in the
Office,
(1) The delay in filing such response may be excused if it is shown
to the satisfaction of the Commissioner that the delay was unavoidable;
a petition to accept an unavoidably delayed response must be filed in
compliance with Sec. 1.137(a); or
(2) The response may nevertheless be accepted if the delay was
unintentional; a petition to accept an unintentionally delayed response
must be filed in compliance with Sec. 1.137(b).
(f) The reexamination requester will be sent copies of Office
actions issued during the ex parte reexamination proceeding. After
filing of a request for ex parte reexamination by a third party
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requester, any document filed by either the patent owner or the third
party requester must be served on the other party in the reexamination
proceeding in the manner provided by Sec. 1.248. The document must
reflect service or the document may be refused consideration by the
Office.
(g) The active participation of the ex parte reexamination
requester ends with the reply pursuant to Sec. 1.535, and no further
submissions on behalf of the reexamination requester will be
acknowledged or considered. Further, no submissions on behalf of any
third parties will be acknowledged or considered unless such
submissions are:
(1) in accordance with Sec. 1.510 or Sec. 1.535; or
(2) entered in the patent file prior to the date of the order for
ex parte reexamination pursuant to Sec. 1.525.
(h) Submissions by third parties, filed after the date of the order
for ex parte reexamination pursuant to Sec. 1.525, must meet the
requirements of and will be treated in accordance with Sec. 1.501(a).
30. Section 1.552 is revised to read as follows:
Sec. 1.552 Scope of reexamination in ex parte reexamination
proceedings.
(a) Claims in an ex parte reexamination proceeding will be examined
on the basis of patents or printed publications and, with respect to
subject matter added or deleted in the reexamination proceeding, on the
basis of the requirements of 35 U.S.C. 112.
(b) Claims in an ex parte reexamination proceeding will not be
permitted to enlarge the scope of the claims of the patent.
(c) Issues other than those indicated in paragraphs (a) and (b) of
this section will not be resolved in a reexamination proceeding. If
such issues are raised by the patent owner or third party requester
during a reexamination proceeding, the existence of such issues will be
noted by the examiner in the next Office action, in which case the
patent owner may consider the advisability of filing a reissue
application to have such issues considered and resolved.
31. Section 1.555 is amended by revising its heading and paragraph
(c) to read as follows:
Sec. 1.555 Information material to patentability in ex parte
reexamination and inter partes reexamination proceedings.
* * * * *
(c) The responsibility for compliance with this section rests upon
the individuals designated in paragraph (a) of this section and no
evaluation will be made by the Office in the reexamination proceeding
as to compliance with this section. If questions of compliance with
this section are raised by the patent owner or the third party
requester during a reexamination proceeding, they will be noted as
unresolved questions in accordance with Sec. 1.552(c).
32. Section 1.560 is revised to read as follows:
Sec. 1.560 Interviews in ex parte reexamination proceedings.
(a) Interviews in ex parte reexamination proceedings pending before
the Office between examiners and the owners of such patents or their
attorneys or agents of record must be conducted in the Office at such
times, within Office hours, as the respective examiners may designate.
Interviews will not be permitted at any other time or place without the
authority of the Commissioner. Interviews for the discussion of the
patentability of claims in patents involved in ex parte reexamination
proceedings will not be conducted prior to the first official action.
Interviews should be arranged in advance. Requests that reexamination
requesters participate in interviews with examiners will not be
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granted.
(b) In every instance of an interview with an examiner in an ex
parte reexamination proceeding, a complete written statement of the
reasons presented at the interview as warranting favorable action must
be filed by the patent owner. An interview does not remove the
necessity for response to Office actions as specified in Sec. 1.111.
Patent owner's response to an outstanding Office action after the
interview does not remove the necessity for filing the written
statement. The written statement must be filed as a separate part of a
response to an Office action outstanding at the time of the interview,
or as a separate paper within one month from the date of the interview,
whichever is later.
33. Section 1.565 is revised to read as follows:
Sec. 1.565 Concurrent office proceedings which include an ex parte
reexamination proceeding.
(a) In an ex parte reexamination proceeding before the Office, the
patent owner must inform the Office of any prior or concurrent
proceedings in which the patent is or was involved such as
interferences, reissues, ex parte reexaminations, inter partes
reexaminations, or litigation and the results of such proceedings. See
Sec. 1.985 for notification of prior or concurrent proceedings in an
inter partes reexamination proceeding.
(b) If a patent in the process of ex parte reexamination is or
becomes involved in litigation, the Commissioner shall determine
whether or not to suspend the reexamination. See Sec. 1.987 for inter
partes reexamination proceedings.
(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 be consolidated and result in the
issuance 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 normally 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 be
physically entered into both files. Any ex parte reexamination
proceeding merged with a reissue application shall be terminated by the
grant of the reissued patent. For merger of a reissue application and
an inter partes reexamination, see Sec. 1.991.
(e) If a patent in the process of ex parte reexamination is or
becomes involved in an interference, the Commissioner may suspend the
reexamination or the interference. The Commissioner will not consider a
request to suspend an interference unless a motion (Sec. 1.635) to
suspend the interference has been presented to, and denied by, an
administrative patent judge, and the request is filed within ten (10)
days of a decision by an administrative patent judge denying the motion
for suspension or such other time as the administrative patent judge
may set. For concurrent inter partes reexamination and interference of
a patent, see Sec. 1.993.
34. The undesignated center heading following Sec. 1.565 is revised
to read as follows:
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Ex Parte Reexamination Certificate
35. Section 1.570 is revised to read as follows:
Sec. 1.570 Issuance of ex parte reexamination certificate after ex
parte reexamination proceedings.
(a) Upon the conclusion of ex parte reexamination proceedings, the
Commissioner will issue 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 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.
(c) The ex parte reexamination certificate will be mailed on the
day of its date to the patent owner at the address as provided for in
Sec. 1.33(c). A copy of the ex parte reexamination certificate will
also be mailed to the requester of the ex parte reexamination
proceeding.
(d) If an ex parte reexamination certificate has been issued 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.
(e) If the ex parte reexamination proceeding is terminated by the
grant of a reissued patent as provided in Sec. 1.565(d), the reissued
patent will constitute the ex parte reexamination certificate required
by this section and 35 U.S.C. 307.
(f) A notice of the issuance of each ex parte reexamination
certificate under this section will be published in the Official
Gazette on its date of issuance.
36. A new subpart H is added to read as follows:
Subpart H--Inter Partes Reexamination of Patents That Issued
From an Original Application Filed in the United States on or After
November 29, 1999
Sec.
Prior Art Citations
1.902 Processing of prior art citations during an inter partes
reexamination proceeding.
Requirements for Inter Partes Reexamination Proceedings
1.903 Service of papers on parties in inter partes reexamination.
1.904 Notice of inter partes reexamination in Official Gazette.
1.905 Submission of papers by the public in inter partes
reexamination.
1.906 Scope of reexamination in inter partes reexamination
proceeding.
1.907 Inter partes reexamination prohibited.
1.913 Persons eligible to file request for inter partes
reexamination.
1.915 Content of request for inter partes reexamination.
1.919 Filing date of request for inter partes reexamination.
1.923 Examiner's determination on the request for inter partes
reexamination.
1.925 Partial refund if request for inter partes reexamination is
not ordered.
1.927 Petition to review refusal to order inter partes
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reexamination.
Inter Partes Reexamination of Patents
1.931 Order for inter partes reexamination.
Information Disclosure in Inter Partes Reexamination
1.933 Patent owner duty of disclosure in inter partes
reexamination proceedings.
Office Actions and Responses (Before the Examiner) in Inter Partes
Reexamination
1.935 Initial Office action usually accompanies order for inter
partes reexamination.
1.937 Conduct of inter partes reexamination.
1.939 Unauthorized papers in inter partes reexamination.
1.941 Amendments by patent owner in inter partes reexamination.
1.943 Requirements of responses, written comments, and briefs in
inter partes reexamination.
1.945 Response to Office action by patent owner in inter partes
reexamination.
1.947 Comments by third party requester to patent owner's response
in inter partes reexamination.
1.948 Limitations on submission of prior art by third party
requester following the order for inter partes reexamination.
1.949 Examiner's Office action closing prosecution in inter partes
reexamination.
1.951 Options after Office action closing prosecution in inter
partes reexamination.
1.953 Examiner's Right of Appeal Notice in inter partes
reexamination.
Interviews Prohibited in Inter Partes Reexamination
1.955 Interviews prohibited in inter partes reexamination
proceedings.
Extensions of Time, Termination of Proceedings, and Petitions To Revive
in Inter Partes Reexamination
1.956 Patent owner extensions of time in inter partes
reexamination.
1.957 Failure to file a timely, appropriate or complete response
or comment in inter partes reexamination.
1.958 Petition to revive terminated inter partes reexamination or
claims terminated for lack of patent owner response.
Appeal to the Board of Patent Appeals and Interferences in Inter Partes
Reexamination
1.959 Notice of appeal and cross appeal to Board of Patent Appeals
and Interferences in inter partes reexamination.
1.961 Jurisdiction over appeal in inter partes reexamination.
1.962 Appellant and respondent in inter partes reexamination
defined.
1.963 Time for filing briefs in inter partes reexamination.
1.965 Appellant's brief in inter partes reexamination.
1.967 Respondent's brief in inter partes reexamination.
1.969 Examiner's answer in inter partes reexamination.
1.971 Rebuttal brief in inter partes reexamination.
1.973 Oral hearing in inter partes reexamination.
1.975 Affidavits or declarations after appeal in inter partes
reexamination.
1.977 Decision by the Board of Patent Appeals and Interferences;
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remand to examiner in inter partes reexamination.
1.979 Action following decision by the
Board of Patent Appeals and Interferences or dismissal of appeal in
inter partes reexamination.
1.981 Reopening after decision by the Board of Patent Appeals and
Interferences in inter partes reexamination.
Patent Owner Appeal to the United States Court of Appeals for the
Federal Circuit in Inter Partes Reexamination
1.983 Patent owner appeal to the United States Court of Appeals
for the Federal Circuit in inter partes reexamination.
Concurrent Proceedings Involving Same Patent in InterPartes
Reexamination
1.985 Notification of prior or concurrent proceedings in inter
partes reexamination.
1.987 Suspension of inter partes reexamination proceeding due to
litigation.
1.989 Merger of concurrent reexamination proceedings.
1.991 Merger of concurrent reissue application and inter partes
reexamination proceeding.
1.993 Suspension of concurrent interference and inter partes
reexamination proceeding.
1.995 Third party requester's participation rights preserved in
merged proceeding.
Reexamination Certificate in Inter Partes Reexamination
1.997 Issuance of inter partes reexamination certificate.
Subpart H--Inter Partes Reexamination of Patents That Issued
From an Original Application Filed in the United States on or After
November 29, 1999
Prior Art Citations
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. 1.915
or Sec. 1.948, will be delayed until the inter partes reexamination
proceeding has been terminated. 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.
Requirements for Inter Partes Reexamination Proceedings
Sec. 1.903 Service of papers on parties in inter partes reexamination.
The patent owner and the third party requester will be sent copies
of Office actions issued during the inter partes reexamination
proceeding. After filing of a request for inter partes reexamination by
a third party requester, any document filed by either the patent owner
or the third party requester must be served on every other party in the
reexamination proceeding in the manner provided in Sec. 1.248. Any
document must reflect service or the document may be refused
consideration by the Office. The failure of the patent owner or the
third party requester to serve documents may result in their being
refused consideration.
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Sec. 1.904 Notice of inter partes reexamination in Official Gazette.
A notice of the filing of an inter partes reexamination request
will be published in the Official Gazette. The notice published in the
Official Gazette under Sec. 1.11(c) will be considered to be
constructive notice of the inter partes reexamination proceeding and
inter partes reexamination will proceed.
Sec. 1.905 Submission of papers by the public in inter partes
reexamination.
Unless specifically provided for, no submissions on behalf of any
third parties other than third party requesters as defined in 35 U.S.C.
100(e) will be considered unless such submissions are in accordance
with Sec. 1.915 or entered in the patent file prior to the date of the
order for reexamination pursuant to Sec. 1.931. Submissions by third
parties, other than third party requesters, filed after the date of the
order for reexamination pursuant to Sec. 1.931, must meet the
requirements of Sec. 1.501 and will be treated in accordance with
Sec. 1.902. Submissions which do not meet the requirements of
Sec. 1.501 will be returned.
Sec. 1.906 Scope of reexamination in inter partes reexamination
proceeding.
(a) Claims in an inter partes reexamination proceeding will be
examined on the basis of patents or printed publications and, with
respect to subject matter added or deleted in the reexamination
proceeding, on the basis of the requirements of 35 U.S.C. 112.
(b) Claims in an inter partes reexamination proceeding will not be
permitted to enlarge the scope of the claims of the patent.
(c) Issues other than those indicated in paragraphs (a) and (b) of
this section will not be resolved in an inter partes reexamination
proceeding. If such issues are raised by the patent owner or the third
party requester during a reexamination proceeding, the existence of
such issues will be noted by the examiner in the next Office action, in
which case the patent owner may desire to consider the advisability of
filing a reissue application to have such issues considered and
resolved.
Sec. 1.907 Inter partes reexamination prohibited.
(a) Once an order to reexamine has been issued under Sec. 1.931,
neither the third party requester, nor its privies, may file a
subsequent request for inter partes reexamination of the patent until
an inter partes reexamination certificate is issued under Sec. 1.997,
unless authorized by the Commissioner.
(b) Once a final decision has been entered against a party in a
civil action arising in whole or in part under 28 U.S.C. 1338 that the
party has not sustained its burden of proving invalidity of any patent
claim-in-suit, then neither that party nor its privies may thereafter
request inter partes reexamination of any such patent claim on the
basis of issues which that party, or its privies, raised or could have
raised in such civil action, and an inter partes reexamination
requested by that party, or its privies, on the basis of such issues
may not thereafter be maintained by the Office.
(c) If a final decision in an inter partes reexamination proceeding
instituted by a third party requester is favorable to patentability of
any original, proposed amended, or new claims of the patent, then
neither that party nor its privies may thereafter request inter partes
reexamination of any such patent claims on the basis of issues which
that party, or its privies, raised or could have raised in such inter
partes reexamination proceeding.
Sec. 1.913 Persons eligible to file request for inter partes
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reexamination.
Except as provided for in Sec. 1.907, any person may, at any time
during the period of enforceability of a patent which issued from an
original application filed in the United States on or after November
29, 1999, file a request for inter partes reexamination by the Office
of any claim of the patent on the basis of prior art patents or printed
publications cited under Sec. 1.501.
Sec. 1.915 Content of request for inter partes reexamination.
(a) The request must be accompanied by the fee for requesting inter
partes reexamination set forth in Sec. 1.20(c)(2).
(b) A request for inter partes reexamination must include the
following parts:
(1) An identification of the patent by patent number and every
claim for which reexamination is requested.
(2) A citation of the patents and printed publications which are
presented to provide a substantial new question of patentability.
(3) A statement pointing out each substantial new question of
patentability based on the cited patents and printed publications, and
a detailed explanation of the pertinency and manner of applying the
patents and printed publications to every claim for which reexamination
is requested.
(4) A copy of every patent or printed publication relied upon or
referred to in paragraphs (b)(1) through (3) of this section,
accompanied by an English language translation of all the necessary and
pertinent parts of any non-English language document.
(5) A copy of the entire patent including the front face, drawings,
and specification/claims (in double column format) for which
reexamination is requested, and a copy of any disclaimer, certificate
of correction, or reexamination certificate issued in the patent. All
copies must have each page plainly written on only one side of a sheet
of paper.
(6) A certification by the third party requester that a copy of the
request has been served in its entirety on the patent owner at the
address provided for in Sec. 1.33(c). The name and address of the party
served must be indicated. If service was not possible, a duplicate copy
of the request must be supplied to the Office.
(7) A certification by the third party requester that the estoppel
provisions of Sec. 1.907 do not prohibit the inter partes
reexamination.
(8) A statement identifying the real party in interest to the
extent necessary for a subsequent person filing an inter partes
reexamination request to determine whether that person is a privy.
(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(a).
(d) If the inter partes request does not meet all the requirements
of subsection 1.915(b), the person identified as requesting inter
partes reexamination may be so notified and given an opportunity to
complete the formal requirements of the request within a specified
time. Failure to comply with the notice may result in the inter partes
reexamination proceeding being vacated.
Sec. 1.919 Filing date of request for inter partes reexamination.
(a) The filing date of a request for inter partes reexamination is
the date on which the request satisfies the fee requirement of
Sec. 1.915(a).
(b) If the request is not granted a filing date, the request will
be placed in the patent file as a citation of prior art if it complies
with the requirements of Sec. 1.501.
Sec. 1.923 Examiner's determination on the request for inter partes
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reexamination.
Within three months following the filing date of a request for
inter partes reexamination under Sec. 1.919, 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.
Sec. 1.925 Partial refund if request for inter partes reexamination is
not ordered.
Where inter partes reexamination is not ordered, a refund of a
portion of the fee for requesting inter partes reexamination will be
made to the requester in accordance with Sec. 1.26(c).
Sec. 1.927 Petition to review refusal to order inter partes
reexamination.
The third party requester may seek review by a petition to the
Commissioner underSec. 1.181 within one month of the mailing date of
the examiner's determination refusing to order inter partes
reexamination. Any such petition must comply with Sec. 1.181(b). If no
petition is timely filed or if the decision on petition affirms that
no substantial new question of patentability has been raised, the
determination shall be final and nonappealable.
Inter Partes Reexamination of Patents
Sec. 1.931 Order for inter partes reexamination.
(a) If a substantial new question of patentability is found, the
determination will include an order for inter partes reexamination of
the patent for resolution of the question.
(b) If the order for inter partes reexamination resulted from a
petition pursuant to Sec. 1.927, the inter partes reexamination will
ordinarily be conducted by an examiner other than the examiner
responsible for the initial determination under Sec. 1.923.
Information Disclosure in Inter Partes Reexamination
Sec. 1.933 Patent owner duty of disclosure in inter partes
reexamination proceedings.
(a) Each individual associated with the patent owner in an inter
partes reexamination proceeding has a duty of candor and good faith in
dealing with the Office, which includes a duty to disclose to the
Office all information known to that individual to be material to
patentability in a reexamination proceeding as set forth in
Sec. 1.555(a) and (b). The duty to disclose all information known to be
material to patentability in an inter partes reexamination proceeding
is deemed to be satisfied by filing a paper in compliance with the
requirements set forth in Sec. 1.555(a) and (b).
(b) The responsibility for compliance with this section rests upon
the individuals designated in paragraph (a) of this section, and no
evaluation will be made by the Office in the reexamination proceeding
as to compliance with this section. If questions of compliance with
this section are raised by the patent owner or the third party
requester during a reexamination proceeding, they will be noted as
unresolved questions in accordance with Sec. 1.906(c).
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Office Actions and Responses (Before the Examiner) in Inter Partes
Reexamination
Sec. 1.935 Initial Office action usually accompanies order for inter
partes reexamination.
The order for inter partes reexamination will usually be
accompanied by the initial Office action on the merits of the
reexamination.
Sec. 1.937 Conduct of inter partes reexamination.
(a) All inter partes reexamination proceedings, including any
appeals to the Board of Patent Appeals and Interferences, will be
conducted with special dispatch within the Office, unless the
Commissioner makes a determination that there is good cause for
suspending the reexamination proceeding.
(b) The inter partes reexamination proceeding will be conducted in
accordance with Secs. 1.104 through 1.116, the sections governing the
application examination process, and will result in the issuance of an
inter partes reexamination certificate under Sec. 1.997, except as
otherwise provided.
(c) All communications between the Office and the parties to the
inter partes reexamination which are directed to the merits of the
proceeding must be in writing and filed with the Office for entry into
the record of the proceeding.
Sec. 1.939 Unauthorized papers in inter partes reexamination.
(a) If an unauthorized paper is filed by any party at any time
during the inter partes reexamination proceeding it will not be
considered and may be returned.
(b) Unless otherwise authorized, no paper shall be filed prior to
the initial Office action on the merits of the inter partes reexamination.
Sec. 1.941 Amendments by patent owner in inter partes reexamination.
Amendments by patent owner in inter partes reexamination
proceedings are made by filing a paper in compliance with
Secs. 1.530(d)-(k) and 1.943.
Sec. 1.943 Requirements of responses, written comments, and briefs in
inter partes reexamination.
(a) The form of responses, written comments, briefs, appendices,
and other papers must be in accordance with the requirements of
Sec. 1.52.
(b) Responses by the patent owner and written comments by the third
party requester shall not exceed 50 pages in length, excluding
amendments, appendices of claims, and reference materials such as prior
art references.
(c) Appellant's briefs filed by the patent owner and the third
party requester shall not exceed thirty pages or 14,000 words in
length, excluding appendices of claims and reference materials such as
prior art references. All other briefs filed by any party shall not
exceed fifteen pages in length or 7,000 words. If the page limit for
any brief is exceeded, a certificate is required stating the number of
words contained in the brief.
Sec. 1.945 Response to Office action by patent owner in inter partes
reexamination.
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.
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Sec. 1.947 Comments by third party requester to patent owner's
response in inter partes reexamination.
Each time the patent owner files a response to an Office action on
the merits pursuant to Sec. 1.945, a third party requester may once
file written comments within a period of 30 days from the date of
service of the patent owner's response. These comments shall be limited
to issues raised by the Office action or the patent owner's response.
The time for submitting comments by the third party requester may not
be extended. For the purpose of filing the written comments by the
third party requester, the comments will be considered as having been
received in the Office as of the date of deposit specified in the
certificate under Sec. 1.8.
Sec. 1.948 Limitations on submission of prior art by third party
requester following the order for inter partes reexamination.
(a) After the inter partes reexamination order, the third party
requester may only cite additional prior art as defined under
Sec. 1.501 if it is filed as part of a comments submission under
Sec. 1.947 or Sec. 1.951(b) and is limited to prior art:
(1) which is necessary to rebut a finding of fact by the examiner;
(2) which is necessary to rebut a response of the patent owner; or
(3) which for the first time became known or available to the third
party requester after the filing of the request for inter partes
reexamination proceeding. Prior art submitted under paragraph (a)(3) of
this section must be accompanied by a statement as to when the prior
art first became known or available to the third party requester and
must include a discussion of the pertinency of each reference to the
patentability of at least one claim.
(b) [Reserved].
Sec. 1.949 Examiner's Office action closing prosecution in inter
partes reexamination.
Upon consideration of the issues a second or subsequent time, or
upon a determination of patentability of all claims, the examiner shall
issue an Office action treating all claims present in the inter partes
reexamination, which may be an action closing prosecution. The Office
action shall set forth all rejections and determinations not to make a
proposed rejection, and the grounds therefor. An Office action will not
usually close prosecution if it includes a new ground of rejection which
was not previously addressed by the patent owner, unless the new ground
was necessitated by an amendment.
Sec. 1.951 Options after Office action closing prosecution in inter
partes reexamination.
(a) After an Office action closing prosecution in an inter partes
reexamination, the patent owner may once file comments limited to the
issues raised in the Office action closing prosecution. The comments
can include a proposed amendment to the claims, which amendment will be
subject to the criteria of Sec. 1.116 as to whether or not it shall be
admitted. The comments must be filed within the time set for response
in the Office action closing prosecution.
(b) When the patent owner does file comments, a third party
requester may once file comments responsive to the patent owner's
comments within 30 days from the date of service of patent owner's
comments on the third party requester.
Sec. 1.953 Examiner's Right of Appeal Notice in inter partes
reexamination.
(a) Upon considering the comments of the patent owner and the third
party requester subsequent to the Office action closing prosecution in
an inter partes reexamination, or upon expiration of the time for
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submitting such comments, the examiner shall issue a Right of Appeal
Notice, unless the examiner reopens prosecution and issues another
Office action on the merits.
(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 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. Any appeal by
the parties shall be conducted in accordance with Secs. 1.959-1.983.
(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, the inter partes
reexamination proceeding will be terminated, and the Commissioner will
proceed to issue a certificate under Sec. 1.997 in accordance with the
Right of Appeal Notice.
Interviews Prohibited in Inter Partes Reexamination
Sec. 1.955 Interviews prohibited in inter partes reexamination
proceedings.
There will be no interviews in an inter partes reexamination
proceeding which discuss the merits of the proceeding.
Extensions of Time, Termination of Proceedings, and Petitions To Revive
in Inter Partes Reexamination
Sec. 1.956 Patent owner extensions of time in inter partes
reexamination.
The time for taking any action by a patent owner in an inter partes
reexamination proceeding will be extended only for sufficient cause and
for a reasonable time specified. Any request for such extension must be
filed on or before the day on which action by the patent owner is due,
but in no case will the mere filing of a request effect any extension.
See Sec. 1.304(a) for extensions of time for filing a notice of appeal
to the U.S. Court of Appeals for the Federal Circuit.
Sec. 1.957 Failure to file a timely, appropriate or complete response
or comment in inter partes reexamination.
(a) If the third party requester files an untimely or inappropriate
comment, notice of appeal or brief in an inter partes reexamination,
the paper will be refused consideration.
(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 reexamination proceeding will be
terminated and the Commissioner will proceed to issue a certificate
under Sec. 1.997 in accordance with the last action of the Office.
(c) If claims are found patentable and the patent owner fails to
file a timely and appropriate response to any Office action in an inter
partes reexamination proceeding, further prosecution will be limited to
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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.
(d) When action by the patent owner is a bona fide attempt to
respond and to advance the prosecution and is substantially a complete
response to the Office action, but consideration of some matter or
compliance with some requirement has been inadvertently omitted, an
opportunity to explain and supply the omission may be given.
Sec. 1.958 Petition to revive terminated inter partes reexamination or
claims terminated for lack of patent owner response.
(a) If a response by the patent owner is not timely filed in the
Office, the delay in filing such response may be excused if it is shown
to the satisfaction of the Commissioner that the delay was unavoidable.
A grantable petition to accept an unavoidably delayed response must be
filed in compliance with Sec. 1.137(a).
(b) Any response by the patent owner not timely filed in the Office
may be accepted if the delay was unintentional. A grantable petition to
accept an unintentionally delayed response must be filed in compliance
with Sec. 1.137(b).
Appeal to the Board of Patent Appeals and Interferences in Inter Partes
Reexamination
Sec. 1.959 Notice of appeal and cross appeal to Board of Patent
Appeals and Interferences in inter partes reexamination.
(a)(1) Upon the issuance of a Right of Appeal Notice under
Sec. 1.953, the patent owner involved in an inter partes reexamination
proceeding may appeal to the Board of Patent Appeals and Interferences
with respect to the final rejection of any claim of the patent by
filing a notice of appeal within the time provided in the Right of
Appeal Notice and paying the fee set forth in Sec. 1.17(b).
(2) Upon the issuance of a Right of Appeal Notice under Sec. 1.953,
a third party requester involved in an inter partes reexamination
proceeding may appeal to the Board of Patent Appeals and Interferences
with respect to any final decision favorable to the patentability,
including any final determination not to make a proposed rejection, of
any original, proposed amended, or new claim of the patent by filing a
notice of appeal within the time provided in the Right of Appeal Notice
and paying the fee set forth in Sec. 1.17(b).
(b)(1) Within fourteen days of service of a third party requester's
notice of appeal under paragraph (a)(2) of this section and upon
payment of the fee set forth in Sec. 1.17(b), a patent owner who has
not fileda notice of appeal may file a notice of cross appeal with
respect to the final rejection of any claim of the patent.
(2) Within fourteen days of service of a patent owner's notice of
appeal under paragraph (a)(1) of this section and upon payment of the
fee set forth in Sec. 1.17(b), a third party requester who has not
filed a notice of appeal may file a notice of cross appeal with respect
to any final decision favorable to the patentability, including any
final determination not to make a proposed rejection, of any original,
proposed amended, or new claim of the patent.
(c) The notice of appeal or cross appeal in an inter partes
reexamination proceeding must identify the appealed claim(s) and must
be signed by the patent owner, the third party requester, or their duly
authorized attorney or agent.
(d) An appeal or cross appeal, when taken, must be taken from all
the rejections of the claims in a Right of Appeal Notice which the
patent owner proposes to contest or from all the determinations
favorable to patentability, including any final determination not to
make a proposed rejection, in a Right of Appeal Notice which a third
party requester proposes to contest. Questions relating to matters not
affecting the merits of the invention may be required to be settled
before an appeal is decided.
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(e) The times for filing a notice of appeal or cross appeal may not
be extended.
Sec. 1.961 Jurisdiction over appeal in inter partes reexamination.
Jurisdiction over the inter partes reexamination proceeding passes
to the Board of Patent Appeals and Interferences upon transmittal of
the file, including all briefs and examiner's answers, to the Board of
Patent Appeals and Interferences. Prior to the entry of a decision on
the appeal, the Commissioner may sua sponte order the inter partes
reexamination proceeding remanded to the examiner for action consistent
with the Commissioner's order.
Sec. 1.962 Appellant and respondent in inter partes reexamination
defined.
For the purposes of inter partes reexamination, appellant is any
party, whether the patent owner or a third party requester, filing a
notice of appeal or cross appeal. If more than one party appeals or
cross appeals, each appealing or cross appealing party is an appellant
with respect to the claims to which his or her appeal or cross appeal
is directed. A respondent is any third party requester responding under
Sec. 1.967 to the appellant's brief of the patent owner, or the patent
owner responding under Sec. 1.967 to the appellant's brief of any third
party requester. No third party requester may be a respondent to the
appellant brief of any other third party requester.
Sec. 1.963 Time for filing briefs in inter partes reexamination.
(a) An appellant's brief in an inter partes reexamination must be
filed no later than two months from the latest filing date of the last-
filed notice of appeal or cross appeal or, if any party to the inter
partes reexamination is entitled to file an appeal or cross appeal but
fails to timely do so, the expiration of time for filing (by the last
party entitled to do so) such notice of appeal or cross appeal. The
time for filing an appellant's brief may not be extended.
(b) Once an appellant's brief has been properly filed, any brief
must be filed by respondent within one month from the date of service
of the appellant's brief. The time for filing a respondent's brief may
not be extended.
(c) The examiner will consider both the appellant's and
respondent's briefs and may prepare an examiner's answer under
Sec. 1.969.
(d) Any appellant may file a rebuttal brief under Sec. 1.971 within
one month of the date of the examiner's answer. The time for filing a
rebuttal brief may not be extended.
(e) No further submission will be considered and any such
submission will be treated in accordance with Sec. 1.939.
Sec. 1.965 Appellant's brief in inter partes reexamination.
(a) Appellant(s) may once, within time limits for filing set forth
in Sec. 1.963, file a brief in triplicate and serve the brief on all
other parties to the inter partes reexamination proceeding in
accordance with Sec. 1.903. The brief must be signed by the appellant,
or the appellant's duly authorized attorney or agent and must be
accompanied by the requisite fee set forth in Sec. 1.17(c). The brief
must set forth the authorities and arguments on which appellant will
rely to maintain the appeal. Any arguments or authorities not included
in the brief will be refused consideration by the Board of Patent
Appeals and Interferences, unless good cause is shown.
(b) A party's appeal shall stand dismissed upon failure of that
party to file an appellant's brief, accompanied by the requisite fee,
within the time allowed.
(c) The appellant's brief shall contain the following items under
appropriate headings and in the order indicated below, unless the brief
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is filed by a party who is not represented by a registered
practitioner. The brief may include an appendix containing only those
portions of the record on which reliance has been made.
(1) Real Party in Interest. A statement identifying the real party
in interest.
(2) Related Appeals and Interferences. A statement identifying by
number and filing date all other appeals or interferences known to the
appellant, the appellant's legal representative, or assignee which will
directly affect or be directly affected by or have a bearing on the
decision of the Board of Patent Appeals and Interferences in the
pending appeal.
(3) Status of Claims. A statement of the status of all the claims,
pending or canceled. If the appellant is the patent owner, the
appellant must also identify the rejected claims whose rejection is
being appealed. If the appellant is a third party requester, the
appellant must identify the claims that the examiner has made a
determination favorable to patentability, which determination is being
appealed.
(4) Status of Amendments. A statement of the status of any
amendment filed subsequent to the close of prosecution.
(5) Summary of Invention. A concise explanation of the invention or
subject matter defined in the claims involved in the appeal, which
shall refer to the specification by column and line number, and to the
drawing(s), if any, by reference characters.
(6) Issues. A concise statement of the issues presented for review.
No new ground of rejection can be proposed by a third party requester
appellant.
(7) Grouping of Claims. If the appellant is the patent owner, for
each ground of rejection in the Right of Appeal Notice which appellant
contests and which applies to a group of two or more claims, the Board
of Patent Appeals and Interferences shall select a single claim from
the group and shall decide the appeal as to the ground of rejection on
the basis of that claim alone unless a statement is included that the
claims of the group do not stand or fall together; and, in the argument
under paragraph (c)(8) of this section, appellant explains why the
claims of this group are believed to be separately patentable. Merely
pointing out differences in what the claims cover is not an argument as
to why the claims are separately patentable.
(8) Argument. The contentions of appellant with respect to each of
the issues presented for review in paragraph (c)(6) of this section,
and the bases therefor, with citations of the authorities, statutes,
and parts of the record relied on. Each issue should be treated under
a separate, numbered heading.
(i) For each rejection under 35 U.S.C. 112, first paragraph, or for
each determination favorable to patentability, including a
determination not to make a proposed rejection under 35 U.S.C. 112,
first paragraph, which appellant contests, the argument shall specify
the errors in the rejection or the determination and how the first
paragraph of 35 U.S.C. 112 is complied with, if the appellant is the
patent owner, or is not complied with, if the appellant is a third
party requester, including, as appropriate, how the specification and
drawing(s), if any,
(A) Describe, if the appellant is the patent owner, or fail to
describe, if the appellant is a third party requester, the subject
matter defined by each of the appealed claims; and
(B) Enable, if the appellant is the patent owner, or fail to
enable, if the appellant is a third party requester, any person skilled
in the art to make and use the subject matter defined by each of the
appealed claims.
(ii) For each rejection under 35 U.S.C. 112, second paragraph, or
for each determination favorable to patentability including a
determination not to make a proposed rejection under 35 U.S.C. 112,
second paragraph, which appellant contests, the argument shall specify
the errors in the rejection, if the appellant is the patent owner, or
the determination, if the appellant is a third party requester, and how
the claims do, if the appellant is the patent owner, or do not, if the
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appellant is a third party requester, particularly point out and
distinctly claim the subject matter which the inventor regards as the
invention.
(iii) For each rejection under 35 U.S.C. 102 or for each
determination favorable to patentability including a determination not
to make a proposed rejection under 35 U.S.C. 102 which appellant
contests, the argument shall specify the errors in the rejection, if
the appellant is the patent owner, or determination, if the appellant
is a third party requester, and why the appealed claims are, if the
appellant is the patent owner, or are not, if the appellant is a third
party requester, patentable under 35 U.S.C. 102, including any specific
limitations in the appealed claims which are or are not described in
the prior art.
(iv) For each rejection under 35 U.S.C. 103 or for each
determination favorable to patentability, including a determination not
to make a proposed rejection under 35 U.S.C. 103 which appellant
contests, the argument shall specify the errors in the rejection, if
the appellant is the patent owner, or determination, if the appellant
is a third party requester. If appropriate, also state the specific
limitations in the appealed claims which are or are not described in
the prior art and explain how such limitations render the claimed
subject matter obvious, if the appellant is a third party requester, or
unobvious, if the appellant is the patent owner, over the prior art. If
the rejection or determination is based upon a combination of
references, the argument shall explain why the references, taken as a
whole, do or do not suggest the claimed subject matter. The argument
should include, as may be appropriate, an explanation of why features
disclosed in one reference may or may not properly be combined with
features disclosed in another reference. A general argument that all
the limitations are or are not described in a single reference does not
satisfy the requirements of this paragraph.
(v) For any rejection other than those referred to in paragraphs
(c)(8)(i) to (iv) of this section or for each determination favorable
to patentability, including any determination not to make a proposed
rejection other than those referred to in paragraphs (c)(8)(i) to (iv)
of this section which appellant contests, the argument shall specify
the errors in the rejection, if the appellant is the patent owner, or
determination, if the appellant is a third party requester, and the
specific limitations in the appealed claims, if appropriate, or other
reasons, which cause the rejection or determination to be in error.
(9) Appendix. An appendix containing a copy of the claims appealed
by the appellant.
(10) Certificate of Service. A certification that a copy of the
brief has been served in its entirety on all other parties to the
reexamination proceeding. The names and addresses of the parties served
must be indicated.
(d) If a brief is filed which does not comply with all the
requirements of paragraph (c) of this section, appellant will be
notified of the reasons for non-compliance and provided with a non-
extendable period of one month within which to file an amended brief.
If the appellant does not file an amended brief during the one-month
period, or files an amended brief which does not overcome all the
reasons for non-compliance stated in the notification, that appellant's
appeal will stand dismissed.
Sec. 1.967 Respondent's brief in inter partes reexamination.
(a) Respondent(s) in an inter partes reexamination appeal may once,
within the time limit for filing set forth in Sec. 1.963, file a
respondent brief in triplicate and serve the brief on all parties in
accordance with Sec. 1.903. The brief must be signed by the party, or
the party's duly authorized attorney or agent, and must be accompanied
by the requisite fee set forth in Sec. 1.17(c). The brief must state
the authorities and arguments on which respondent will rely. Any
arguments or authorities not included in the brief will be refused
consideration by the Board of Patent Appeals and Interferences, unless
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good cause is shown. The respondent brief shall be limited to issues
raised in the appellant brief to which the respondent brief is
directed. A third party respondent brief may not address any brief of
any other third party.
(b) The respondent brief shall contain the following items under
appropriate headings and in the order here indicated, and may include
an appendix containing only those portions of the record on which
reliance has been made.
(1) Real Party in Interest. A statement identifying the real party
in interest.
(2) Related Appeals and Interferences. A statement identifying by
number and filing date all other appeals or interferences known to the
respondent, the respondent's legal representative, or assignee (if any)
which will directly affect or be directly affected by or have a bearing
on the decision of the Board of Patent Appeals and Interferences in the
pending appeal.
(3) Status of claims. A statement accepting or disputing
appellant's statement of the status of claims. If appellant's statement
of the status of claims is disputed, the errors in appellant's
statement must be specified with particularity.
(4) Status of amendments. A statement accepting or disputing
appellant's statement of the status of amendments. If appellant's
statement of the status of amendments is disputed, the errors in
appellant's statement must be specified with particularity.
(5) Summary of invention. A statement accepting or disputing
appellant's summary of the invention or subject matter defined in the
claims involved in the appeal. If appellant's summary of the invention
or subject matter defined in the claims involved in the appeal is
disputed, the errors in appellant's summary must be specified.
(6) Issues. A statement accepting or disputing appellant's
statement of the issues presented for review. If appellant's statement
of the issues presented for review is disputed, the errors in appellant's
statement must be specified. A counter statement of the issues for review may be made. No new ground of
rejection can be proposed by a third party requester respondent.
(7) Argument. A statement accepting or disputing the contentions of
the appellant with each of the issues. If a contention of the appellant
is disputed, the errors in appellant's argument must be specified,
stating the basis therefor, with citations of the authorities,
statutes, and parts of the record relied on. Each issue should be
treated under a separate heading. An argument may be made with each of
the issues stated in the counter statement of the issues, with each
counter-stated issue being treated under a separate heading. The
provisions of Sec. 1.965 (c)(8)(iii) and (iv) of these regulations
shall apply to any argument raised under 35 U.S.C. 102 or sec. 103.
(8) Certificate of Service. A certification that a copy of the
respondent brief has been served in its entirety on all other parties
to the reexamination proceeding. The names and addresses of the parties
served must be indicated.
(c) If a respondent brief is filed which does not comply with all
the requirements of paragraph (b) of this section, respondent will be
notified of the reasons for non-compliance and provided with a non-
extendable period of one month within which to file an amended brief.
If the respondent does not file an amended brief during the one-month
period, or files an amended brief which does not overcome all the
reasons for non-compliance stated in the notification, the respondent
brief will not be considered.
Sec. 1.969 Examiner's answer in inter partes reexamination.
(a) The primary examiner in an inter partes reexamination appeal
may, within such time as directed by the Commissioner, furnish a
written statement in answer to the patent owner's and/or third party
requester's appellant brief or respondent brief including, as may be
necessary, such explanation of the invention claimed and of the
references, the grounds of rejection, and the reasons for
patentability, including grounds for not adopting a proposed rejection.
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A copy of the answer shall be supplied to all parties to the
reexamination proceeding. If the primary examiner finds that the appeal
is not regular in form or does not relate to an appealable action, he
or she shall so state.
(b) An examiner's answer may not include a new ground of rejection.
(c) An examiner's answer may not include a new determination not to
make a proposed rejection of a claim.
(d) Any new ground of rejection, or any new determination not to
make a proposed rejection, must be made in an Office action reopening
prosecution.
Sec. 1.971 Rebuttal brief in inter partes reexamination.
Within one month of the examiner's answer in an inter partes
reexamination appeal, any appellant may once file a rebuttal brief in
triplicate. The rebuttal brief of the patent owner may be directed to
the examiner's answer and/or any respondent brief. The rebuttal brief
of any third party requester may be directed to the examiner's answer
and/or the respondent brief of the patent owner. The rebuttal brief of
a third party requester may not be directed to the respondent brief of
any other third party requester. No new ground of rejection can be
proposed by a third party requester. The time for filing a rebuttal
brief may not be extended. The rebuttal brief must include a
certification that a copy of the rebuttal brief has been served in its
entirety on all other parties to the reexamination proceeding. The
names and addresses of the parties served must be indicated.
Sec. 1.973 Oral hearing in inter partes reexamination.
(a) An oral hearing in an inter partes reexamination appeal should
be requested only in those circumstances in which an appellant or a
respondent considers such a hearing necessary or desirable for a proper
presentation of the appeal. An appeal decided without an oral hearing
will receive the same consideration by the Board of Patent Appeals and
Interferences as an appeal decided after oral hearing.
(b) If an appellant or a respondent desires an oral hearing, he or
she must file a written request for such hearing accompanied by the fee
set forth in Sec. 1.17(d) within two months after the date of the
examiner's answer. The time for requesting an oral hearing may not be
extended.
(c) An oral argument may be presented at oral hearing by, or on
behalf of, the primary examiner if considered desirable by either the
primary examiner or the Board of Patent Appeals and Interferences.
(d) If an appellant or a respondent has requested an oral hearing
and has submitted the fee set forth in Sec. 1.17(d), a hearing date
will be set, and notice given to all parties to the reexamination
proceeding, as well as the primary examiner. The notice shall set a
non-extendable period within which all requests for oral hearing shall
be submitted by any other party to the appeal desiring to participate
in the oral hearing. A hearing will be held as stated in the notice,
and oral argument will be limited to thirty minutes for each appellant
and respondent who has requested an oral hearing, and twenty minutes
for the primary examiner unless otherwise ordered before the hearing
begins. No appellant or respondent will be permitted to participate in
an oral hearing unless he or she has requested an oral hearing and
submitted the fee set forth in Sec. 1.17(d).
(e) If no request and fee for oral hearing have been timely filed
by an appellant or a respondent, the appeal will be assigned for
consideration and decision on the written record.
Sec. 1.975 Affidavits or declarations after appeal in inter partes
reexamination.
Affidavits, declarations, or exhibits submitted after the inter
partes reexamination has been appealed will not be admitted without a
showing of good and sufficient reasons why they were not earlier
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presented.
Sec. 1.977 Decision by the Board of Patent Appeals and Interferences;
remand to examiner in inter partes reexamination.
(a) The Board of Patent Appeals and Interferences, in its decision,
may affirm or reverse each decision of the examiner on all issues
raised on each appealed claim, or remand the reexamination proceeding
to the examiner for further consideration. The reversal of the
examiner's determination not to make a rejection proposed by the third
party requester constitutes a decision adverse to the patentability of
the claims which are subject to that proposed rejection which will be
set forth in the decision of the Board of Patent Appeals and
Interferences as a new ground of rejection under paragraph (b) of this
section. The affirmance of the rejection of a claim on any of the
grounds specified constitutes a general affirmance of the decision of
the examiner on that claim, except as to any ground specifically
reversed.
(b) Should the Board of Patent Appeals and Interferences have
knowledge of any grounds not raised in the appeal for rejecting any
pending claim, it may include in the decision a statement to that
effect with its reasons for so holding, which statement shall
constitute a new ground of rejection of the claim. A decision which
includes a new ground of rejection shall not be considered final for
purposes of judicial review. When the Board of Patent Appeals and
Interferences makes a new ground of rejection, the patent
owner, within one month from the date of the decision, must exercise
one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal proceeding as to the
rejected claim:
(1) The patent owner may submit an appropriate amendment of the
claim so rejected or a showing of facts relating to the claim, or both.
(2) The patent owner may file a request for rehearing of the
decision of the Board of Patent Appeals and Interferences under
Sec. 1.979(a).
(c) Where the patent owner has responded under paragraph (b)(1) of
this section, any third party requester, within one month of the date
of service of the patent owner response, may once file comments on the
response. Such written comments must be limited to the issues raised by
the decision of the Board of Patent Appeals and Interferences and the
patent owner's response. Any third party requester that had not previously
filed an appeal or cross appeal and is seeking under this
subsection to file comments or a reply to the comments is subject to
the appeal and brief fees under Sec. 1.17(b) and (c), respectively,
which must accompany the comments or reply.
(d) Following any response by the patent owner under paragraph
(b)(1) of this section and any written comments from a third party
requester under paragraph (c) of this section, the reexamination
proceeding will be remanded to the examiner. The statement of the Board
of Patent Appeals and Interferences shall be binding upon the examiner
unless an amendment or showing of facts not previously of record be
made which, in the opinion of the examiner, overcomes the new ground of
rejection. The examiner will consider any response under paragraph
(b)(1) of this section and any written comments by a third party
requester under paragraph (c) of this section and issue a determination
that the rejection should be maintained or has been overcome.
(e) Within one month of the examiner's determination pursuant to
paragraph (d) of this section, the patent owner or any third party
requester may once submit comments in response to the examiner's
determination. Within one month of the date of service of comments in
response to the examiner's determination, any party may file a reply to
the comments. No third party requester reply may address the comments
of any other third party requester reply. Any third party requester
that had not previously filed an appeal or cross appeal and is seeking
under this subsection to file comments or a reply to the comments is
subject to the appeal and brief fees under Sec. 1.17(b) and (c),
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respectively, which must accompany the comments or reply.
(f) After submission of any comments and any reply pursuant to
paragraph (e) of this section, or after time has expired, the
reexamination proceeding will be returned to the Board of Patent
Appeals and Interferences which shall reconsider the matter and issue a
new decision. The new decision will incorporate the earlier decision,
except for those portions specifically withdrawn.
(g) The time period set forth in paragraph (b) of this section is
subject to the extension of time provisions of Sec. 1.956. The time
periods set forth in paragraphs (c) and (e) of this section may not be
extended.
Sec. 1.979 Action following decision by the Board of Patent Appeals
and Interferences or dismissal of appeal in inter partes reexamination.
(a) Parties to the appeal may file a request for rehearing of the
decision within one month of the date of:
(1) The original decision of the Board of Patent Appeals and
Interferences under Sec. 1.977(a),
(2) The original Sec. 1.977(b) decision under the provisions of
Sec. 1.977(b)(2),
(3) The expiration of the time for the patent owner to take action
under Sec. 1.977(b)(2), or
(4) The new decision of the Board of Patent Appeals and
Interferences under Sec. 1.977(f).
(b) Within one month of the date of service of any request for
rehearing under paragraph (a) of this section, or any further request
for rehearing under paragraph (c) of this section, any party to the
appeal may once file comments in opposition to the request for
rehearing or the further request for rehearing. The comments in
opposition must be limited to the issues raised in the request for
rehearing or the further request for rehearing.
(c) If a party to an appeal files a request for rehearing under
paragraph (a) of this section, or a further request for rehearing under
this section, the Board of Patent Appeals and Interferences will issue
a decision on rehearing. This decision is deemed to incorporate the
earlier decision, except for those portions specifically withdrawn. If
the decision on rehearing becomes, in effect, a new decision, and the
Board of Patent Appeals and Interferences so states, then any party to
the appeal may, within one month of the new decision, file a further
request for rehearing of the new decision under this subsection.
(d) Any request for rehearing shall state the points believed to
have been misapprehended or overlooked in rendering the decision and
also state all other grounds upon which rehearing is sought.
(e) The patent owner may not appeal to the U.S. Court of Appeals
for the Federal Circuit under Sec. 1.983 until all parties' rights to
request rehearing have been exhausted, at which time the decision of
the Board of Patent Appeals and Interferences is final and appealable
by the patent owner.
(f) An appeal by a third party requester is considered terminated
by the dismissal of the third party requester's appeal, the failure of
the third party requester to timely request rehearing under
Sec. 1.979(a) or (c), or a final decision under Sec. 1.979(e). The date
of such termination is the date on which the appeal is dismissed, the
date on which the time for rehearing expires, or the decision of the
Board of Patent Appeals and Interferences is final. An appeal by the
patent owner is considered terminated by the dismissal of the patent
owner's appeal, the failure of the patent owner to timely request
rehearing under Sec. 1.979(a) or (c), or the failure of the patent
owner to timely file an appeal to the U.S. Court of Appeals for the
Federal Circuit under Sec. 1.983. The date of such termination is the
date on which the appeal is dismissed, the date on which the time for
rehearing expires, or the date on which the time for the patent owner's
appeal to the U.S. Court of Appeals for the Federal Circuit expires. If
an appeal to the U.S. Court of Appeals for the Federal Circuit has been
filed, the patent owner's appeal is considered terminated when the
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mandate is received by the Office. Upon termination of an appeal, if no
other appeal is present, the reexamination proceeding will be
terminated and the Commissioner will issue a certificate under
Sec. 1.997.
(g) The times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this
section may not be extended.
Sec. 1.981 Reopening after decision by the Board of Patent Appeals and
Interferences in inter partes reexamination.
Cases which have been decided by the Board of Patent Appeals and
Interferences will not be reopened or reconsidered by the primary
examiner except under the provisions of Sec. 1.977 without the written
authority of the Commissioner, and then only for the consideration of
matters not already adjudicated, sufficient cause being shown.
Patent Owner Appeal to the United States Court of Appeals for the
Federal Circuit in Inter Partes Reexamination
Sec. 1.983 Patent owner appeal to the United States Court of Appeals
for the Federal Circuit in inter partes reexamination.
(a) The patent owner in a reexamination proceeding who is
dissatisfied with the decision of the Board of Patent Appeals and
Interferences may, subject to Sec. 1.979(e), appeal to the U.S. Court
of Appeals for the Federal Circuit. The appellant must take the
following steps in such an appeal:
(1) In the U. S. Patent and Trademark Office, file a timely written
notice of appeal directed to the Commissioner in accordance with
Secs. 1.302 and 1.304; and
(2) In the Court, file a copy of the notice of appeal and pay the
fee, as provided for in the rules of the Court.
Concurrent Proceedings Involving Same Patent in Inter Partes
Reexamination
Sec. 1.985 Notification of prior or concurrent proceedings in inter
partes reexamination.
(a) In any inter partes reexamination proceeding, the patent owner
shall call the attention of the Office to any prior or concurrent
proceedings in which the patent is or was involved, including but not
limited to interference, reissue, reexamination, or litigation and the
results of such proceedings.
(b) Notwithstanding any provision of the rules, any person at any
time may file a paper in an inter partes reexamination proceeding
notifying the Office of a prior or concurrent proceedings in which the
same patent is or was involved, including but not limited to
interference, reissue, reexamination, or litigation and the results of
such proceedings. Such paper must be limited to merely providing notice
of the other proceeding without discussion of issues of the current
inter partes reexamination proceeding. Any paper not so limited will be
returned to the sender.
Sec. 1.987 Suspension of inter partes reexamination proceeding due to
litigation.
If a patent in the process of inter partes reexamination is or
becomes involved in litigation, the Commissioner shall determine
whether or not to suspend the inter partes reexamination proceeding.
Sec. 1.989 Merger of concurrent reexamination proceedings.
(a) If any reexamination is ordered while a prior inter partes
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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 of a single
reexamination certificate under Sec. 1.997.
(b) An inter partes reexamination proceeding filed under Sec. 1.913
which is merged with an ex parte reexamination proceeding filed under
Sec. 1.510 will result in the merged proceeding being governed by
Secs. 1.902 through 1.997, except that the rights of any third party
requester of the ex parte reexamination shall be governed by
Secs. 1.510 through 1.560.
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,
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 terminated by the grant of the reissued patent.
Sec. 1.993 Suspension of concurrent interference and inter partes
reexamination proceeding.
If a patent in the process of inter partes reexamination is or
becomes involved in an interference, the Commissioner may suspend the
inter partes reexamination or the interference. The Commissioner will
not consider a request to suspend an interference unless a motion under
Sec. 1.635 to suspend the interference has been presented to, and
denied by, an administrative patent judge and the request is filed
within ten (10) days of a decision by an administrative patent judge
denying the motion for suspension or such other time as the
administrative patent judge may set.
Sec. 1.995 Third party requester's participation rights preserved in
merged proceeding.
When a third party requester is involved in one or more
proceedings, including an inter partes reexamination proceeding, the
merger of such proceedings will be accomplished so as to preserve the
third party requester's right to participate to the extent specifically
provided for in these regulations. In merged proceedings involving
different requesters, any paper filed by one party in the merged
proceeding shall be served on all other parties of the merged proceeding.
Reexamination Certificate in Inter Partes Reexamination
Sec. 1.997 Issuance of inter partes reexamination certificate.
(a) Upon the conclusion of an inter partes reexamination
proceeding, the Commissioner will issue a certificate in accordance
with 35 U.S.C. 316 setting forth the results of the inter partes
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reexamination proceeding and the content of the patent following the
inter partes reexamination proceeding.
(b) A certificate will be issued 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.
(c) The certificate will be sent to the patent owner at the address
as provided for in Sec. 1.33(c). A copy of the certificate will also be
sent to the third party requester of the inter partes reexamination
proceeding.
(d) If a certificate has been issued 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.
(e) If the inter partes reexamination proceeding is terminated by
the grant of a reissued patent as provided in Sec. 1.991, the reissued
patent will constitute the reexamination certificate required by this
section and 35 U.S.C. 316.
(f) A notice of the issuance of each certificate under this section
will be published in the Official Gazette.
November 21, 2000 Q. TODD DICKINSON
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
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