2267 Handling of Inappropriate or Untimely Filed Papers [R-10.2019]
The applicable regulations (37 CFR 1.501(a), 1.550(e)) provide that certain types of correspondence will not be considered or acknowledged unless timely received. Whenever reexamination correspondence is received, a decision is required of the Office as to the action to be taken on the correspondence based on what type of paper it is and whether it is timely.
The return of inappropriate submissions complies with the regulations that certain papers will not be considered and also reduces the amount of paper which would ultimately have to be scanned into the record. Where an inappropriate (unauthorized, improper) paper has already been scanned into the Image File Wrapper (IFW) of the reexamination proceeding before discovery of the inappropriate nature of the paper, the paper cannot be physically returned to the party that submitted it. Instead, the paper will be “returned” by expunging it, i.e., by marking the paper as “non-public” and “closed” so that it does not appear in the active IFW record with the other active papers that comprise the public record of the reexamination proceeding.
I. DISPOSITION OF PAPERSWhere papers are filed during reexamination proceedings which are inappropriate because of some defect, such papers will be expunged from the official file by marking the papers “closed” and “non-public”.
II. TYPES OF PAPERS EXPUNGED WITH APPROVAL OF THE DIRECTOR OF THE USPTO OR CRU/TC DIRECTOR OR SPRS| Filed by Owner | A. Premature Response by Owner- |
|---|---|
| § 1.530(a), § 1.540 | Where the patent owner is NOT the requester, any response or amendment filed by owner prior to an order to reexamine is premature, will not be considered, and will be expunged. |
| § 1.550(g) | B. Paper Submitted on Behalf of Third Party - |
| Submission filed on behalf of a third party will not be considered, and will be expunged. Where third party paper is submitted as part of a patent owner response, see MPEP § 2254 and § 2266. |
In those rare instances where an opposition to a patent owner petition is filed, after such opposition is filed by a third party requester (regardless of whether such opposition has an entry right or not), any further paper in opposition/rebuttal/response to the third party opposition paper will not be considered and will be expunged. There must be a limitation on party iterations of input, especially given the statutory mandate for special dispatch in reexamination.
| Filed by Requester | A. No Statement Filed by Owner - |
|---|---|
| § 1.535 | If a patent owner fails to file a statement within the prescribed limit, any reply by the requester is inappropriate, will not be considered, and will be expunged. |
| B. Late Response by Requester - | |
| § 1.535, § 1.540 | Any response subsequent to 2 months from the date of service of the patent owner’s statement will not be considered, and will be expunged. |
| C. Additional Response by Requester- | |
| § 1.550(g) | The active participation of the reexamination requester ends with the reply pursuant to § 1.535. Any further submission on behalf of requester will not be considered, and will be expunged. |
In those rare instances where an opposition to a requester petition is filed, after such opposition is filed by the patent owner (regardless of whether such opposition has an entry right or not), any further paper in opposition/rebuttal/response to the patent owner opposition paper will not be considered and will be returned. There must be a limitation on party iterations of input, especially given the statutory mandate for special dispatch in reexamination. Further, any petition requesting that an extension of time be denied will be expunged, since a requester does not have a participation right in the reexamination proceeding.
| Filed by Third Party | |
|---|---|
| § 1.501, § 1.565(a) | Unless a paper submitted by a third party raises only issues appropriate under 37 CFR 1.501, or consists solely of a prior decision on the patent by another forum, e.g., a court (see MPEP § 2207 and § 2286 or presentation of a paper of record in a litigation (see MPEP § 2282)), it will be destroyed, or if inadvertently entered, it will be expunged from the file. |
Where a petition under 37 CFR 1.182 or 1.183 has been filed, the reexamination proceeding should be forwarded to the Office of Patent Legal Administration for decision.
III. TYPES OF DEFECTIVE PAPERS TO BE RETAINED IN THE REEXAMINATION FILE| Filed by Owner | A. Unsigned Papers - |
|---|---|
| § 1.33 | Papers filed by owner which are unsigned or signed by fewer than all of the owners (no attorney of record or acting in representative capacity). |
| B. No Proof of Service - | |
| § 1.248 | Papers filed by the patent owner in which no proof of service on requester is included and proof of service is required may be denied consideration. |
| C. Untimely Papers - | |
| § 1.530(b), § 1.540 | Where owner has filed a paper which is untimely, that is, it was filed after the period set for response, the paper will not be considered. |
| Filed by Requester | A. Unsigned Papers - |
|---|---|
| Papers filed by requester which are unsigned will not be considered. | |
| B. No Proof of Service - | |
| § 1.510(b)(5), § 1.33, § 1.248 | Papers filed by requester in which no proof of service on owner is included and where proof of service is required may be denied consideration. |
In those limited instances where there is a right to file an opposition to a petition, any such opposition must be filed within two weeks of the date upon which a copy of the original petition was served on the opposing party, to ensure consideration. Any such opposition which is filed after the two-week period will remain in the record, even though it is not considered.
IV. PAPERS LOCATED IN THE PATENT FILE| § 1.501 | Citations by Third Parties |
| § 1.550(h) | Submissions by third parties based solely on prior art patents or publications filed after the date of the order to reexamine are not entered into the patent file but delayed until the reexamination proceedings have been concluded. See MPEP § 2206. |
