| Reexamination |
Referenced Items (164, 165, 166, 167, 168, 169, 170, 171, 172, 173, 174, 175, 176, 177, 178, 179) |
(164) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-P-2012-0036]
September 15, 2012 Deadline to File Requests for
Inter Partes Reexamination Proceedings and
Modification of Notice of Failure to Comply Form
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: Pursuant to section 6(c)(3) of the Leahy-Smith America Invents
Act (AIA), the authority to file inter partes reexamination requests
terminates effective September 16, 2012. Accordingly, any original or
corrected/replacement request for an inter partes reexamination
submitted on or after September 16, 2012, will not be accorded a filing
date, and any such request will not be granted. This notice provides
guidance to inter partes reexamination requesters with respect to timely
filing requests prior to September 16, 2012, i.e., by the September 15,
2012, last day for filing of an inter partes reexamination request.
FOR FURTHER INFORMATION CONTACT: Kenneth M. Schor, Senior Legal Advisor
((571) 272-7710), or Joseph F. Weiss, Jr., Legal Advisor ((571) 272-7759),
Office of Patent Legal Administration, Office of the Deputy Commissioner
for Patent Examination Policy.
SUPPLEMENTARY INFORMATION:
A. Filing Requests as Early as Possible
Requesters are advised to file any inter partes reexamination
requests which they intend to file as soon as possible, in order to
provide the United States Patent and Trademark Office (Office) with
maximum time to: (i) Receive, process, and review such requests for
their compliance with all the filing date requirements for inter partes
reexamination; and (ii) notify the requester of any deficiencies in the
request via a Notice of Failure to Comply with Inter Partes
Reexamination Request Filing Requirements (Notice of Failure to Comply)
while providing sufficient time for requester to submit a corrected/
replacement request prior to September 16, 2012.
In this regard, it is to be noted that any inter partes
reexamination request must meet all the filing date requirements for
inter partes reexamination, i.e., it must be filing-date compliant,
prior to September 16, 2012. If a timely filed inter partes
reexamination request fails to meet any filing date requirement for
inter partes reexamination, then the requester will be so notified and,
if time allows, given an opportunity to complete the request by filing
a corrected/replacement request by September 15, 2012. If the request
papers are then made filing-date compliant by a response which is
properly filed with the Office by September 15, 2012, the filing date
of the response will be assigned to the request (this is also true for
any sua sponte filed corrected/replacement request). If the corrected/
replacement request is not received by the Office as of September 15,
2012, the corrected/replacement request will not be accorded a filing
date, even though the original request was timely received by the
Office. This is so, regardless of when requester receives notification
that the original request is not filing-date compliant.
The Office will make every effort to promptly and efficiently
process and review all requests for inter partes reexamination. It is
to be emphasized, however, that the Office cannot guarantee that a
Notice of Failure to Comply with Inter Partes Reexamination Request
Filing Requirements will be issued by the Office prior to September 16,
2012, or even if it is so issued, that sufficient time will remain for
the mailing to reach a requester and allow for response prior to
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US PATENT AND TRADEMARK OFFICE |
1469 CNOG 494 |
September 16, 2012. While, traditionally, the Office has been setting a
thirty-day period to respond to the Notice of Failure to Comply, this
will no longer be possible for any Notice of Failure to Comply mailed
after August 16, 2012, because the statute which provides for the
filing of a request for inter partes reexamination will no longer be in
effect as of September 16, 2012.
In view of the above, potential inter partes reexamination
requesters are cautioned to file any such requests as soon as possible,
in order to provide the Office with as much time as possible to receive
the requests, process and review them, and notify requester with
sufficient time to correct the request, if necessary, prior to
September 16, 2012.
B. The Last Day to File an Inter Partes Reexamination Request
As mentioned above, section 6(c)(3) of the AIA statutorily
terminates the authority for inter partes reexamination filings
effective September 16, 2012. Since, inter partes reexamination filing
is not available on or after September 16, 2012, the Office cannot
grant a filing date to any inter partes reexamination request filed
after September 15, 2012. In addition, as the termination of authority
for inter partes reexamination filings in section 6(c)(3) of the AIA is
not a time period for taking action under 35 U.S.C. 21(b), the
provisions of 35 U.S.C. 21(b) do not authorize the Office to accept or
accord a filing date to an original or corrected/replacement request
for inter partes reexamination which is filed on or after September 16,
2012, even though September 15, 2012, the last day to file a request,
is a Saturday.
An inter partes reexamination request can be submitted on Saturday,
September 15, 2012, but only two methods are available to do so. The
request may be submitted that Saturday: (1) Via the Office's Web-based
electronic filing system, EFS-Web (see MPEP 502.05); or (2) by using
the 37 CFR 1.10 "Express Mail" mailing procedure (see MPEP 513). No
other method of submission is available for a Saturday. Thus, a request
cannot be submitted on September 15, 2012, by hand, by courier, by
facsimile transmission, or by mail other than Express Mail. If an
attempt to do so is made, the request will not be received by the
Office (on that Saturday), and a filing date will not be accorded to
the request.
If an original or corrected/replacement inter partes reexamination
request is mailed (by mail other than Express Mail), the requester
should take into consideration mailing time and the fact that 37 CFR
1.8 certificate of mailing and transmission procedures are not
available for filing an original or corrected/replacement request for
reexamination (see MPEP 2624). Thus, requester should take care to mail
the request sufficiently early for the Office to receive it by Friday,
September 14, 2012 (the Office does not receive mail on Saturday, the
15th - see 37 CFR 1.6(a)(1)).
C. Modification of Notice of Failure to Comply Form
In view of the above:
1. Any Notice of Failure to Comply mailed prior to September 15,
2012, will reference September 15, 2012, as the due date for any
corrected/replacement inter partes reexamination request.
2. Any Notice of Failure to Comply mailed on or after September 17,
2012, will not set a period for response, but will rather inform
requester that no filing date can be granted for the request, because
inter partes reexamination filing has been statutorily terminated.
August 23, 2012 TERESA STANEK REA
Deputy Under Secretary of Commerce for Intellectual Property and
Deputy Director of the United States Patent and Trademark Office
[1382 OG 378]