2268 Petition for Entry of Late Papers for Revival of Reexamination Proceeding [R-01.2024]

Pursuant to 37 CFR 1.550(d), the prosecution of an ex parte reexamination proceeding is terminated 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 37 CFR 1.560(b). An ex parte reexamination prosecution terminated under 37 CFR 1.550(d) can be revived if the delay in response by the patent owner (or the failure to timely file the interview statement) was unintentional in accordance with 37 CFR 1.137.

The failure to timely file a statement pursuant to 37 CFR 1.530 or a reply pursuant to 37 CFR 1.535, however, would not (under ordinary circumstances) constitute adequate basis to justify a showing of unintentional delay regardless of the reasons for the failure, since failure to file a statement or reply does not result in a “termination” of the reexamination prosecution, to which 37 CFR 1.137 is directed.

All petitions in reexamination proceedings to accept late papers and to revive the proceedings will be decided in the Office of Patent Legal Administration.

I. PETITION BASED ON UNAVOIDABLE DELAY IS NO LONGER AVAILABLE

37 CFR 1.137 was revised to implement the changes in the Patent Law Treaties Implementation Act of 2012 (PLTIA) to eliminate revival of an abandoned application and reexamination prosecution terminated under § 1.550(d) under the ‘‘unavoidable’’ standard, and to provide for the revival of abandoned applications and the acceptance of delayed responses in reexamination by patent owners on the basis of unintentional delay. Specifically, section 201(b) of the PLTIA added new 35 U.S.C. 27, which provides that the Director may establish procedures to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing a patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner. Accordingly, 37 CFR 1.137(a) was amended to eliminate the provisions pertaining to petitions on the basis of unavoidable delay. These changes were effective on December 18, 2013, and apply to all any patent application filed before, on, or after December 18, 2013, to any patent resulting from an application filed before, on, or after December 18, 2013, to any reexamination proceeding filed before, on, or after December 18, 2013, and to any reexamination proceeding resulting from a supplemental examination proceeding filed before, on, or after December 18, 2013.

II. PETITION BASED ON UNINTENTIONAL DELAY

As discussed in paragraph I above, section 201(b) of the PLTIA added new 35 U.S.C. 27, which provides that the Director may establish procedures to accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the patent owner. The patent laws formerly provided for revival of an unintentionally abandoned application only in the patent fee provisions of 35 U.S.C. 41(a)(7). See Public Law 97–247, section 3(a), 96 Stat. 317–18 (1982). The unintentional delay fee provisions of 35 U.S.C. 41(a)(7) were imported into, and were applicable to, all ex parte reexamination proceedings by section 4605 of the American Inventors Protection Act of 1999. The unintentional delay provisions of 35 U.S.C. 41(a)(7) became effective in reexamination proceedings on November 29, 2000. However, this statutory structure raised questions concerning the Office’s authority to revive an unintentionally abandoned application (without a showing of unavoidable delay) in certain situations. See e.g., Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 543 F.3d 657, 88 USPQ2d 1458 (Fed. Cir. 2008).

37 CFR 1.137(a), as amended in the final rule to implement the PLTIA, provides that if the delay in reply by patent owner was unintentional, a petition may be filed pursuant to 37 CFR 1.137 to revive a reexamination prosecution terminated under 37 CFR 1.550(d). 37 CFR 1.137(b) states the petition requirements. Specifically, for ex parte reexamination proceedings, 37 CFR 1.137(b) provides that a grantable petition pursuant to 37 CFR 1.137 must be accompanied by: (1) The reply required to the outstanding Office action or notice, unless previously filed; (2) the petition fee as set forth in 37 CFR 1.17(m); and (3) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. 37 CFR 1.137 continues to provide that the Director may require additional information where there is a question whether the delay was unintentional. See MPEP § 711.03(c), subsection II for more information about petitions under 37 CFR 1.137.

III. RENEWED PETITION

Reconsideration may be requested of a decision dismissing or denying a petition under 37 CFR 1.137 to revive a terminated reexamination prosecution. The request for reconsideration must be submitted within two months from the mail date of the decision for which reconsideration is requested. An extension of time may be requested only under 37 CFR 1.550(c); extensions of time under 37 CFR 1.136 are not available in reexamination proceedings. The extension of time provisions of 37 CFR 1.550(c) also apply to any request for an extension filed in a reexamination proceeding ordered under 35 U.S.C. 257 as a result of a supplemental examination proceeding. Any reconsideration request which is submitted should include a cover letter entitled “Renewed Petition under 37 CFR 1.137”.

IV. FURTHER DISCUSSION OF THE PETITION REQUIREMENTS

See also MPEP § 711.03(c) for a detailed discussion of the requirements of petitions filed under 37 CFR 1.137.

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