| Reexamination |
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(128) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2010-0056]
Pilot Program for Waiver of Patent Owner's Statement in
Ex Parte Reexamination Proceedings
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office (USPTO) recognizes
the need to reduce the pendency of reexamination proceedings and improve
the efficiency of the reexamination process. The USPTO is considering a
number of short and long-range initiatives that can be implemented in three
phases. In phase I, the USPTO will implement streamlined procedures, as
well as optional programs in which patent owners and third party requesters
may elect to participate in order to gain the benefit of shorter pendency.
In phases II and III, the USPTO will consider the data gathered from phase
I and the feedback from the patent owners and other stakeholders, and
implement process changes that are likely to improve efficiency. Such
changes may include internal procedural changes, rule making that includes
opportunities for the public to comment, and/or administrative proposals
for statutory changes to enhance the efficiency of the USPTO in conducting
reexamination proceedings. As part of phase I to reduce pendency and
improve efficiency in ex parte reexamination proceedings, the USPTO is
implementing, in this notice, a pilot program in which patent owners may
waive the right to file a patent owner's statement upon a request made by
the USPTO. This will enable USPTO in suitable cases to issue the first
Office action on the merits together with or soon after the reexamination
order, and thereby reduce the pendency of the proceeding by about three to
five months.
DATES: Effective Date: The changes set forth in this notice will take
effect on August 5, 2010.
FOR FURTHER INFORMATION CONTACT: Robert A. Clarke, Kenneth M. Schor or Joni
Y. Chang, Office of Patent Legal Administration, Office of the Associate
Commissioner for Patent Examination Policy, by telephone at 571-272-7735,
571-272-7710 or 571-272-7720, or by mail addressed to: Mail Stop Comments
Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA
22313-1450.
Inquiries regarding the current reexamination practice may be directed
to the Office of Patent Legal Administration, by telephone at
(571) 272-7703, or by electronic mail at PatentPractice@uspto.gov.
SUPPLEMENTARY INFORMATION:
I. Background: The USPTO recognizes the need to reduce the pendency of
reexamination proceedings and improve the efficiency of the reexamination
process. As of March 31, 2010, the average time to reach notice of intent
to issue reexamination certificate (NIRC) for ex parte reexamination
proceedings was about twenty-five months. Many of our stakeholders have
expressed the desire to have a proceeding in which patent owners can
resolve patent validity issues in a shorter time frame. The USPTO is
considering a number of short and long-range initiatives that can be
implemented in three phases to reduce pendency and improve efficiency in
reexamination proceedings. In phase I, the USPTO will implement streamlined
procedures and optional programs in which patent owners and third party
requesters may elect to participate in order to gain the benefit of shorter
pendency. For example, the USPTO recently implemented the streamlined
procedure for appeal brief review in ex parte reexamination proceedings.
See Streamlined Procedure for Appeal Brief Review in Ex Parte Reexamination
Proceedings, 75 FR 29321 (May 25, 2010). In the instant notice, the USPTO
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is implementing a pilot program in which patent owners may waive the right
to file a patent owner's statement in response to a request from the USPTO.
The USPTO will also publish notices to implement additional optional
procedures and seek public comments on other procedural changes in the near
future. In phases II and III, the USPTO will consider the data gathered
from phase I and the feedback from the patent owners and other
stakeholders, and implement process changes through internal procedural
changes, rule making that includes opportunities for the public to comment,
and/or administrative proposals for statutory changes to enhance
reexamination proceedings. The USPTO welcomes feedback on improving its
processes. Suggestions may be directed to the Office of Patent Legal
Administration at (571) 272-7701 for the general examination process, or
(571) 272-7703 for the reexamination or reissue process.
II. Overview of the Pilot Program: As part of phase I to reduce pendency
and improve efficiency in ex parte reexamination proceedings, the USPTO
will implement a pilot program in which the USPTO will contact the patent
owner and request the optional waiver of the right to file a patent owner's
statement after the proceeding has been granted a filing date and before
the examiner begins his or her review. This will enable the USPTO in
suitable cases to issue the first Office action on the merits (including an
NIRC) together with or soon after the order for reexamination, and thereby
reduce the pendency of the proceeding by about three to five months.
Under the current procedure, a patent owner may file a statement under
35 U.S.C. 304 within two months from the issuance of an ex parte
reexamination order in a reexamination proceeding, and a third party
requester may file a reply (under 35 U.S.C. 304) to the patent owner's
statement within two months from the date of service of the patent owner's
statement. Last year, approximately ten percent of patent owners filed a
patent owner's statement under 35 U.S.C. 304 after the USPTO had ordered an
ex parte reexamination of a patent. When ex parte reexamination is ordered,
the examiner generally starts to prepare the first Office action on the
merits after the receipt of the patent owner's statement and the third
party requester's reply, or after the expiration of the time period for
filing the statement and reply. As of March 31, 2010, the average time to
order an ex parte reexamination from the filing of an ex parte
reexamination request was about two months and the average time to issue a
first Office action on the merits from the filing of an ex parte
reexamination request was between seven to eight months.
If the patent owner waives the right to file a patent owner's statement
in response to a request from the USPTO, the examiner will be able to act
on the first Office action on the merits immediately after determining that
reexamination will be ordered, and in a suitable case issue the
reexamination order and the first Office action on the merits (including an
NIRC) at the same time. This will eliminate the delay of waiting for a
patent owner's statement and the third-party requester's reply and will
permit the examiner to utilize his or her time more efficiently by drafting
the order and the first Office action on the merits (including an NIRC)
together. Moreover, by performing the threshold analysis of determining and
preparing an action on the merits concurrently when a request raises a
substantial new question of patentability (SNQ), the overall efficiency of
the USPTO in performing the reexamination process should be increased. The
Central Reexamination Unit (CRU) has experience in performing the threshold
SNQ analysis and concurrently preparing an Office action on the merits, and
the reexamination order and Office action are typically mailed together in
inter partes reexamination proceedings. See 37 CFR 1.935.
III. Waiver Procedure under the Pilot Program: Under the pilot program
for waiving the patent owner's statement announced in this notice, the CRU
will contact, via telephone, the patent owner to request the optional
waiver of the patent owner's statement after the proceeding has been
granted a filing date and before the examiner begins his or her review. The
telephone communication will be limited to the CRU requesting the waiver of
the patent owner's statement and agreement (or non-agreement) to the waiver
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by the patent owner. Discussion of the merits of the proceedings, e.g., the
patentability of claims in patents, will not be permitted. The CRU will
make the agreement or non-agreement of record in the reexamination file in
an interview summary and a copy will be mailed to the patent owner and any
third party requester. The patent owner is not required to complete a
written statement of the telephone communication under 37 CFR 1.560(b) or
otherwise, and such a statement should not be filed as it will slow the
process. If the patent owner agrees to the waiver of the right to file a
patent owner's statement, the examiner will typically issue the
reexamination order and the first Office action on the merits on the same
day as the order, or within a few days thereafter.
The Office intends to make available to the public statistics on the
number of patent owners that agree to waive the statement and the impact on
pendency due to waiving the statement right. This data is expected to form
a portion of the data used in the decision making processes in phases II
and III.
July 16, 2010 DAVID J. KAPPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1360 OG 249]