| Reexamination |
Referenced Items (142, 143, 144, 145, 146, 147, 148, 149, 150, 151, 152, 153, 154, 155, 156, 157) |
(150) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2006-0007]
RIN 0651-AC02
Clarification of Filing Date Requirements for Ex Parte and
Inter Partes Reexamination Proceedings
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is, in this
final rule making, revising the rules of practice relating to the filing
date requirements for ex parte and inter partes reexamination proceedings
for consistency with the provisions of the patent statute governing ex
parte and inter partes reexamination proceedings, and to permit the Office
to have the full statutory three months to address a request for
reexamination that is complete. The Office is specifically revising the
rules to require that a request for ex parte reexamination or for inter
partes reexamination must meet all the applicable statutory and regulatory
requirements before a filing date is accorded to the request for ex parte
reexamination or for inter partes reexamination.
DATES: Effective Date: August 4, 2006.
Applicability Date: The changes in this final rule apply to any request
for reexamination (ex parte or inter partes) filed on or after March 27,
2006.
FOR FURTHER INFORMATION CONTACT: By telephone--Kenneth M. Schor, at
(571) 272-7710; by mail addressed to U.S. Patent and Trademark Office,
Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450, marked to the attention of Kenneth M. Schor;
by facsimile transmission to (571) 273-7710 marked to the attention of
Kenneth M. Schor; or by electronic mail message over the Internet
addressed to kenneth.schor@uspto.gov.
SUPPLEMENTARY INFORMATION: The United States Patent and Trademark Office
(Office) is revising the rules of practice in title 37 of the Code of
Federal Regulations (CFR) to require that a request for ex parte
reexamination or for inter partes reexamination must meet all the
applicable statutory requirements in 35 U.S.C. 302 or 311 (respectively)
and the regulatory requirements in Sec. 1.510 or Sec. 1.915 (respectively)
before a filing date is accorded to the request for ex parte reexamination
or for inter partes reexamination. Thus, the Office is amending the rules
to clearly require compliance with all the requirements of filing an ex
parte reexamination request set forth in Sec. 1.510 before a filing date
will be assigned to an ex parte reexamination request, and to clearly
require compliance with all the requirements of filing an inter partes
reexamination request set forth in Sec. 1.915 before a filing date will be
assigned to an inter partes reexamination request. The Office published an
interim rule revising the rules of practice to implement this revision of
the rules. See Clarification of Filing Date Requirements for Ex Parte and
Inter Partes Reexamination Proceedings, 71 FR 9260 (February 23, 2006),
1304 Off. Gaz. Pat. Office 95 (March 21, 2006) (interim rule). This notice
adopts the interim revision as a final revision of the rules of practice,
while making stylistic and non-substantive changes to the relevant rules,
which changes are discussed below.
Section 1.510 sets forth the requirements for the content of a request
for ex parte reexamination. Section 1.915 sets forth the requirements for
the content of a request for inter partes reexamination. Former Sec.
1.510(d) stated that the filing date of a request for ex parte
 Top of Notices (150) December 29, 2015 |
US PATENT AND TRADEMARK OFFICE |
1421 CNOG 501 |
reexamination is "(1) The date on which the request including the entire
fee for requesting reexamination is received in the Patent and Trademark
Office; or (2) The date on which the last portion of the fee for requesting
reexamination is received." In like manner, former Sec. 1.919(a) stated
that "[t]he filing date of a request for inter partes reexamination is the
date on which the request satisfies the fee requirement of Sec. 1.915(a)."
Given the former rule language, it may have appeared that compliance with
the provisions of Sec. 1.510(b) or Sec. 1.915(b) was not required for
obtaining a filing date in reexamination. However, 35 U.S.C. 302 (for ex
parte reexamination) explicitly requires that "[t]he request must set forth
the pertinency and manner of applying cited prior art to every claim for
which reexamination is requested." Likewise, 35 U.S.C. 311(b) (for inter
partes reexamination) explicitly requires that the request must "include
the identity of the real party in interest" and "set forth the pertinency
and manner of applying cited prior art to every claim for which
reexamination is requested." Reexamination requesters did not always comply
with these statutory requirements when submitting requests for
reexamination. Furthermore, the information missing due to a lack of
compliance with Sec. 1.510(b) or with Sec. 1.915(b) was often relevant to
the decision on whether to grant the request for reexamination. This
presented a difficulty for the Office in view of the statutory requirements
of 35 U.S.C. 303 (for ex parte reexamination) and 35 U.S.C. 312 (for inter
partes reexamination) that the decision on the request must be issued
within three months of the filing date of the request for reexamination,
because the process of notifying the requester of the non-compliance and
obtaining the missing information may very well extend beyond the
three-month statutory deadline, or the information may be provided so close
to the deadline that there is not sufficient time to properly evaluate it.
To address this problem, Secs. 1.510(c) and (d) were revised via interim
rule to clearly require compliance with all the requirements of Secs.
1.510(a) and (b) in order to obtain an ex parte reexamination filing date
(and a decision on the request for reexamination). Likewise, Sec. 1.919(a)
was revised to clearly require compliance with all the requirements of Sec.
1.915 in order to obtain an inter partes reexamination filing date. This
notice adopts the substance of the interim rule as final. It is to be noted
that these changes should not have a significant impact on reexamination
requesters, because the filing date in a reexamination proceeding does not
have the same legal significance as the filing date in other Office patent
proceedings (cf. 35 U.S.C. 102(b)). The rules now simply clearly recite
that the statutory and regulatory requirements for a request for
reexamination must be fulfilled before a filing date will be assigned.
Unless otherwise stated, the present final rule simply adopts, or
essentially adopts, the regulatory language of the interim rule.
Sections 1.510(c) and 1.915(d) have been revised for parallelism purposes
from the text that appears in the interim rule. Anything that is more than
sentence structure, grammar, or style is identified in the discussion
below.
Section-by-Section Discussion
Section 1.11: Section 1.11(c) is revised to provide that any request for
reexamination "for which all the requirements of Sec. 1.510 or Sec. 1.915
have been satisfied" will be announced in the Official Gazette.
Previously, Sec. 1.11(c) provided that all requests for reexamination "for
which the fee under Sec. 1.20(c) has been paid" would be announced in the
Official Gazette. This change was inadvertently omitted in the interim
rule, but is not one of substance. As per the interim rule and this final
rule, where all the requirements of Sec. 1.510 or Sec. 1.915 have not been
satisfied, a request filing date is not assigned. Obviously, the Office
cannot announce the "date of the request * * * and the examining group to
which the reexamination is assigned," since these do not exist until the
requirements of Sec. 1.510 or Sec. 1.915 have been satisfied.
Section 1.510: Section 1.510(c) is revised to provide that if a request
| Top of Notices (150) December 29, 2015 |
US PATENT AND TRADEMARK OFFICE |
1421 CNOG 502 |
for ex parte reexamination does not: (1) Include the fee for requesting ex
parte reexamination, and (2) comply with all the requirements of Sec.
1.510(b); then the person identified as requesting reexamination will be
notified and will generally be given an opportunity to complete the request
within a specified time. If the request is not completed within the time
specified, the request will not be granted a filing date and no decision on
the request will be made. The request may be placed in the patent file as a
citation if it complies with the requirements of Sec. 1.501. Deleted from
former Sec. 1.510(c) (as it existed prior to the interim rule) is the
sentence: "If the fee for requesting reexamination has been paid but the
defect in the request is not corrected within the specified time, the
determination whether or not to institute reexamination will be made on the
request as it then exists."
Section 1.510(c) states that the requester will "generally" be given an
opportunity to complete the request, because, in some instances, it may not
be practical, or even possible, to provide an opportunity for completion of
the request. For example, the request might be submitted anonymously
(although such is not proper), or without an address, or with an
inoperative address. In such instances, the requester would be notified of
the incomplete request by publication in the Official Gazette, but an
opportunity to complete the request would not be provided.
Section 1.510(d) is revised to provide that the filing date of the
request for an ex parte reexamination request is the date on which the
request satisfies all the requirements of Sec. 1.510. Until that point,
the request for reexamination is not complete. In the interim rule, the
language employed was "the date on which the request satisfies all the
requirements of paragraphs (a) and (b) of this section." The language now
provided is "the date on which the request satisfies all the requirements
of this section." This language is used for consistency with Sec. 1.919
which states, as a result of the interim rule, "[t]he filing date of a
request for inter partes reexamination is the date on which the request
satisfies all the requirements for the request set forth in Sec. 1.915."
Section 1.915: Section 1.915(d) is revised to provide that if a request
for inter partes reexamination does not (1) include the fee for requesting
inter partes reexamination, and (2) comply with all the requirements of
Sec. 1.915(b), then the person identified as requesting reexamination will
be notified and will generally be given an opportunity to complete the
request within a specified time. The interim rule inadvertently did not
include, in the text of Sec. 1.915(d), that the requester will be notified
where the complete fee for requesting inter partes reexamination required
by paragraph (a) was not provided, though it was included in the interim
rule preamble. That omission has been rectified.
If the request is not completed within the time specified, the request
will not be granted a filing date and no decision on the request will be
made. Section 1.915(d) stated, prior to the change made via the interim
rule, that the reexamination proceeding may be vacated under this
circumstance. Based on the revision to Sec. 1.919(a) set forth below,
however, the inter partes request will not be granted a filing date under
this circumstance in the first place; thus, there will be no reexamination
proceeding to vacate.
Section 1.915(d) is revised to provide that, where the request was not
given a filing date, the request will be placed in the patent file as a
citation, if it complies with the requirements of Sec. 1.501. This was not
present in the interim rule, and conforms Sec. 1.915(d) with Sec. 1.510(c).
Section 1.915(d) states that the requester will "generally" be given an
opportunity to complete the request, because, in some instances, it may not
be practical, or even possible, to provide an opportunity for completion of
the request (see the discussion of Sec. 1.510(c)).
Section 1.919: Section 1.919(a) is revised to require that the request
| Top of Notices (150) December 29, 2015 |
US PATENT AND TRADEMARK OFFICE |
1421 CNOG 503 |
for inter partes reexamination must satisfy all the requirements for the
request set forth in Sec. 1.915, prior to assignment of a filing date.
Until that point, the request for inter partes reexamination is not
complete.
Response to comments: The Office received one set of written comments
from a patent practitioner in response to the interim rule. The comments,
and the Office's response to the comments, now follow:
The commenter stated, in support of the change made to the rules, that
"[t]he Interim Rule is well-merited for the reasons stated in on pages
9260-61 of the notice. The Office deserves a full three months in which to
decide whether there is a substantial new question of patentability, and no
examiner should be rushed into a decision because the requester failed to
comply with the statute or rules."
The commenter then pointed out one implementation concern, as follows:
"The rule should be easy to apply, with one potential exception--the
statement of the pertinency and manner of applied cited prior art for every
claim that is requested. See 35 U.S.C. 302, 311(b)(2); 37 CFR
1.510(b)(1)-(2), 1.915(b)(3). A request may initially appear (on intake) to
contain this statement, but closer review (by the examiner) may reveal that
the statement is not actually there. Under the Interim Rule, the filing
date "is the date on which the request satisfies all the requirements for
the request set forth in [the rule]". Thus, one might read the rule as
saying that if a filing date is assigned, the Office has decided that the
required statement is present, and an examiner may not revisit the issue.
* * * In these situations, the examiner should be able to independently
decide that the request fails to comply with the statute and rules. I
therefore suggest that the rule be interpreted to allow the examiner to do
this."
This comment is adopted to the extent that the examiner is permitted, by
Office procedure, to independently assert to a deciding official of the
Office that the request fails to comply with the statute and/or rules, even
after a reexamination filing date is assigned to a request. The deciding
Official will then evaluate the examiner's assertion, and will decide
whether the filing date that was assigned should be vacated. This point has
been addressed in the internal procedure established by the Office to
implement the revision of the rules made via this rule. Such procedure will
be described below in this final rule, and will be incorporated into the
Manual of Patent Examining Procedure in its next revision.
The commenter further pointed out that the interim rule "describes the
Interim Rule as mandating compliance with `the statutory requirements'
before the Office will assign a filing date. But the specific language of
the interim rule [preamble] mandates compliance with rules--37 CFR 1.510(b)
and 1.915(b)--and does not mention the statute. Those rules include
non-statutory requirements, e.g., an inter partes requester's certificate
of service on the patent owner, and an inter partes requester's certificate
of non-estoppel. See 37 CFR 1.915(b)(6)-(7). While these rules are sensible
and easy to meet, it would be more accurate to describe the Interim Rule as
mandating compliance with `statutory and regulatory requirements' before
the Office will assign a filing date."
This comment is adopted, and the language is revised as set out in the
preamble of this final rule.
Office Procedure to Implement the Revision of the Rules Made via this
Final Rule: A request for reexamination is no longer assigned a filing
date, upon receipt of the request in the Central Reexamination Unit (CRU).
Rather, the CRU Legal Instrument Examiners (LIE) and Paralegals will check
each request for compliance with the reexamination filing date
requirements, prior to the assigning of a filing date. In order to obtain a
reexamination filing date, the request papers must include all of the
| Top of Notices (150) December 29, 2015 |
US PATENT AND TRADEMARK OFFICE |
1421 CNOG 504 |
following:
(1) The complete reexamination fee. For ex parte reexamination, this is
currently set at $2,520.00 in Sec. 1.20(c)(1). For inter partes
reexamination, this is currently set at $8,800.00 in Sec. 1.20(c)(2).
(2) A statement pointing out each substantial new question of
patentability based on the cited patents and publications (i.e., the cited
prior art or double patenting art).
(3) An identification of every claim for which reexamination is
requested.
(4) A detailed explanation of how all of the cited documents are applied
to the claims for which reexamination is requested. For each identified
substantial new question of patentability (SNQ), the request must explain
how all of the cited documents identified for that SNQ are applied to
meet/teach the claim limitations to thus establish the identified SNQ.
(5) A legible copy of every patent or printed publication relied upon or
referred to in the request. (To conform to current practice, this provision
is not being enforced to require copies of U.S. patents and U.S. patent
publications; the provision is deemed waived to that extent.) It is to be
noted that the required "copy of every patent or printed publication" is
construed by the Office to be a legible copy, since a non-legible copy
cannot be used. Any copy of a patent or printed publication received by the
Office that is illegible will not be accepted, and will be deemed to have
not been received by the Office.
(6) Some translation (at least of the relevant portion(s)) of any
non-English language patent or printed publication.
(7) A legible copy of the entire patent to be reexamined. The copy must
include the front face, drawings, and specification/claims (in double
column format) of the printed patent, and each page must be plainly written
on only one side of a sheet of paper.
(8) A legible copy of any disclaimer, certificate of correction, or
reexamination certificate issued for the patent, each page plainly written
on only one side of a sheet of paper.
(9) If the request is not filed by the patent owner--A certificate of
service on the patent owner at the address as provided for in Sec. 1.33(c).
The name and address of the party served must be given in the certificate
of service. If service was not possible, a duplicate copy of the request
papers must be supplied to the Office together with a factual explanation
of what efforts were made to effect service, and why they were not
successful.
(10) If the request is filed by an attorney/agent and identifies
another party on whose behalf the request is being filed, then a power of
attorney must be attached, or the attorney/agent must be acting in a
representative capacity pursuant to Sec. 1.34.
For inter partes reexamination, the request papers must also
include--
(11) A certification by the requester that the estoppel provisions of
Sec. 1.907 do not prohibit the inter partes reexamination being requested.
(12) A statement identifying the real party in interest for whom (on
whose behalf) the request is being filed.
If it is determined that the request fails to meet one or more of the
filing date requirements, the person identified as requesting reexamination
will be so notified and will be given an opportunity to complete the
| Top of Notices (150) December 29, 2015 |
US PATENT AND TRADEMARK OFFICE |
1421 CNOG 505 |
requirements of the request within a specified time (generally thirty
days). The new Office form used to provide the notification is a "Notice of
Failure to Comply with * * * Reexamination Request Filing Requirements."
If after receiving a "Notice of Failure to Comply with * * *
Reexamination Request Filing Requirements," the requester does not remedy
the defects in the request papers that are pointed out, then the request
papers will not be given a filing date, and a control number will not be
assigned. The simplest case of a failure to remedy the defect(s) in the
Notice is where the requester does not timely respond to the Notice. The
other case is where requester does timely respond, but the response does
not cure the defect(s) identified to requester and/or the response
introduces a new filing date defect or deficiency. If the requester timely
responds to the Notice, then the CRU LIE and Paralegal will check the
request, as supplemented by the response, for correction of all
non-compliant items identified in the Notice. If any identified
non-compliant item has not been corrected, then a filing date (and a
control number) will not be assigned to the request papers. It is to be
noted that a single failure to comply with the "Notice of Failure to Comply
with * * * Reexamination Request Filing Requirements" will ordinarily
result in the reexamination request not being granted a filing date. Absent
extraordinary circumstances (or some minor non-compliant item that can be
rectified by a phone call which can be made at the Office's sole
discretion), requester will be given only one opportunity to correct the
non-compliance, i.e., only one opportunity for compliance with the Notice.
Similarly, if the response introduces a new filing date defect or
deficiency into the request papers, then the reexamination request will not
be granted a filing date absent extraordinary circumstances. If the request
papers are not timely made filing-date-compliant in response to the
Office's Notice of Failure to Comply with * * * Reexamination Request
Filing Requirements, then the LIE will prepare a "Notice of Disposition of
* * * Reexamination Request." This notice will point out the disposition of
the request papers (whether they are treated as a Sec. 1.501 submission or
discarded) and why.
After a filing date is assigned to the reexamination control number, the
patent examiner reviews the request to decide whether to order the granting
or denial of reexamination. If, in the process of reviewing the request,
the examiner notes a non-compliant item not earlier recognized, then the
examiner will then inform an appropriate deciding official of the Office.
Upon confirmation of the existence of any such non-compliant item(s), a
decision vacating the assigned reexamination filing date will be issued. In
the decision, the requester will be notified of the non-compliant item(s)
and given time to correct the non-compliance. Only one opportunity will be
given to comply with the notice to the requester included in the decision
vacating the filing date, unless: (1) Extraordinary circumstances exist, or
(2) there are only a few minor non-compliant items that can be rectified by
a phone call, in which case such a phone call may be made; however, that is
at the Office's sole discretion.
The requester must completely respond to the notice provided in the
Office's decision vacating the filing date by rectifying all identified
defects in the request papers without adding any new defect. If the third
party requester does not timely and completely respond to the Office's
decision vacating the filing date, the Office will issue a decision
pointing out the disposition of the request papers (whether treated as a
Sec. 1.501 submission or discarded) and why. If the third party requester
does timely and completely respond to the Office's decision vacating the
filing date, a new filing date will be assigned to the proceeding, as of
the date the requester's response was received.
Rule Making Considerations
Administrative Procedure Act
The changes in this final rule merely revise the rules of practice
| Top of Notices (150) December 29, 2015 |
US PATENT AND TRADEMARK OFFICE |
1421 CNOG 506 |
(Secs. 1.510 and 1.915) to require that a request for ex parte
reexamination or for inter partes reexamination meets the requirements in
35 U.S.C. 302 and 311 and regulations for a request for ex parte
reexamination or for inter partes reexamination, before a filing date is
accorded to the request for ex parte reexamination or for inter partes
reexamination. Therefore, these rule changes involve interpretive rules, or
rules of agency practice and procedure under 5 U.S.C. 553(b)(A), and prior
notice and an opportunity for public comment were not required pursuant to
5 U.S.C. 553(b)(A) (or any other law). See Bachow Communications Inc. v.
FCC, 237 F.3d 683, 690 (DC Cir. 2001) (rules governing an application
process are "rules of agency organization, procedure, or practice" and are
exempt from the Administrative Procedure Act's notice and comment
requirement); see also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50,
38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice promulgated
under the authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are
not substantive rules (to which the notice and comment requirements of the
Administrative Procedure Act apply), and Fressola v. Manbeck, 36 USPQ2d
1211, 1215 (D.D.C. 1995) ("it is extremely doubtful whether any of the
rules formulated to govern patent and trade-mark practice are other than
`interpretive rules, general statements of policy, * * * procedure, or
practice."') (quoting Casper W. Ooms, The United States Patent Office and
the Administrative Procedure Act, 38 Trademark Rep. 149, 153 (1948)).
Accordingly, prior notice and an opportunity for public comment were not
required pursuant to 5 U.S.C. 553(b)(A) (or any other law).
Regulatory Flexibility Act
As discussed previously, the changes in this final rule involve rules of
agency practice and procedure under 5 U.S.C. 553(b)(A), and prior notice
and an opportunity for public comment were not required pursuant to 5
U.S.C. 553(b)(A) (or any other law). As prior notice and an opportunity for
public comment were not required pursuant to 5 U.S.C. 553 (or any other
law) for the changes in this final rule, a regulatory flexibility analysis
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is not required
for the changes in this final rule. See 5 U.S.C. 603.
Executive Order 13132
This rule making does not contain policies with federalism implications
sufficient to warrant preparation of a Federalism Assessment under
Executive Order 13132 (August 4, 1999).
Executive Order 12866
This rule making has been determined to be not significant for purposes
of Executive Order 12866 (September 30, 1993).
Paperwork Reduction Act
This final rule involves information collection requirements which are
subject to review by the Office of Management and Budget (OMB) under the
Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The collection of
information involved in this final rule has been reviewed and previously
approved by OMB under OMB control number 0651-0033. The United States
Patent and Trademark Office is not resubmitting any information collection
to OMB for its review and approval because the changes in this final rule
do not affect the information collection requirements associated with the
information collection under OMB control number 0651-0033. The principal
impacts of the changes in this final rule are to clarify the requirement
for compliance with all the requirements of filing a reexamination before a
filing date will be assigned to a reexamination. Interested persons are
requested to send comments regarding these information collections,
including suggestions for reducing this burden to: (1) The Office of
Information and Regulatory Affairs, Office of Management and Budget, New
Executive Office Building, Room 10202, 725 17th Street, NW., Washington, DC
20503, Attention: Desk Officer for the Patent and Trademark Office; and
| Top of Notices (150) December 29, 2015 |
US PATENT AND TRADEMARK OFFICE |
1421 CNOG 507 |
(2) Robert J. Spar, Director, Office of Patent Legal Administration,
Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
Notwithstanding any other provision of law, no person is required to
respond to, nor shall a person be subject to a penalty for failure to
comply with, a collection of information subject to the requirements of the
Paperwork Reduction Act unless that collection of information displays a
currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of information,
Inventions and patents, Reporting and recordkeeping requirements, Small
businesses, and Biologics.
For the reasons set forth in the preamble, the interim rule amending 37 CFR
part 1 which was published at 71 FR 9260-62 on February 23, 2006, is
adopted as final with the following changes:
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 1.11 is amended by revising paragraph (c) to read as follows:
Sec. 1.11 Files open to the public.
* * * * *
(c) All requests for reexamination for which all the requirements of
Sec. 1.510 or Sec. 1.915 have been satisfied will be announced in the
Official Gazette. Any reexaminations at the initiative of the Director
pursuant to Sec. 1.520 will also be announced in the Official Gazette. The
announcement shall include at least the date of the request, if any, the
reexamination request control number or the Director initiated order
control number, patent number, title, class and subclass, name of the
inventor, name of the patent owner of record, and the examining group to
which the reexamination is assigned.
* * * * *
3. Section 1.510 is amended by revising paragraphs (c) and (d) to read as
follows:
Sec. 1.510 Request for ex parte reexamination.
* * * * *
(c) If the request does not include the fee for requesting ex parte
reexamination required by paragraph (a) of this section and meet all the
requirements by paragraph (b) of this section, then the person identified
as requesting reexamination will be so notified and will generally be given
an opportunity to complete the request within a specified time. Failure to
comply with the notice will result in the ex parte reexamination request
not being granted a filing date, and will result in placement of the
request in the patent file as a citation if it complies with the
requirements of Sec. 1.501.
(d) The filing date of the request for ex parte reexamination is the
date on which the request satisfies all the requirements of this section.
* * * * *
4. Section 1.915 is amended by revising paragraph (d) to read as follows:
| Top of Notices (150) December 29, 2015 |
US PATENT AND TRADEMARK OFFICE |
1421 CNOG 508 |
Sec. 1.915 Content of request for inter partes reexamination.
* * * * *
(d) If the inter partes request does not include the fee for requesting
inter partes reexamination required by paragraph (a) of this section and
meet all the requirements of paragraph (b) of this section, then the person
identified as requesting inter partes reexamination will be so notified and
will generally be given an opportunity to complete the request within a
specified time. Failure to comply with the notice will result in the inter
partes reexamination request not being granted a filing date, and will
result in placement of the request in the patent file as a citation if it
complies with the requirements of Sec. 1.501.
July 31, 2006 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1309 OG 216]