Rules To Implement Optional Inter Partes Reexamination Proceedings

DEPARTMENT OF COMMERCE

U.S. Patent and Trademark Office

37 CFR Part 1

[Docket No. 000308064-0064-01]

RIN 0651-AB04

Rules To Implement Optional Inter Partes Reexamination Proceedings

AGENCY:

U.S. Patent and Trademark Office, Commerce.

ACTION:

Notice of proposed rulemaking.

SUMMARY:

The U. S. Patent and Trademark Office (the Office) is proposing to amend its rules of practice in patent cases to provide revised procedures for the reexamination of patents and thereby implement certain provisions of “the American Inventors Protection Act of 1999.” “The American Inventors Protection Act of 1999” included an amendment to the Patent Act to authorize the extension of reexamination proceedings via an optional

inter partes

reexamination procedure in addition to the present

ex parte

reexamination procedure as a means for improving the quality of United States patents. The Office intends, through this amendment of its rules, to provide patent owners and the public with guidance on the procedures that the Office will follow in conducting optional inter partes reexamination proceedings in addition to the present

ex parte

reexamination proceedings.

The American Inventors Protection Act of 1999” also made other miscellaneous changes to the Patent Act which relate to reexamination, and it is intended that this amendment of the Office's rules will implement those changes relating to reexamination.

DATES:

Comment Deadline Date:

To ensure consideration of written comments, they must be received at the Office no later than June 12, 2000. While comments may be submitted after this date, the Office cannot ensure that consideration will be given to such comments. No public hearing will be held.

Public Inspection of Comments:

Written comments will be available for public inspection on or about June 20, 2000.

ADDRESSES:

Those interested in submitting written comments should send their written comments to the attention of Kenneth M. Schor, Senior Legal Advisor, by electronic mail message over the Internet addressed to reexam.rules@uspto.gov and titled

“Inter Partes

Reexamination.” Written comments may also be submitted by mail addressed to U.S. Patent and Trademark Office, Box Comments—Patents, Commissioner for Patents, Washington, DC 20231, marked to the attention of Kenneth M. Schor; or by facsimile transmission to (703) 872-9408, marked to the attention of Kenneth M. Schor. Although comments may be submitted by e-mail, mail, or facsimile, the Office prefers to receive comments via e-mail over the Internet. Where comments are submitted by mail, the Office would prefer that the comments be submitted on a DOS formatted 3

1/4

inch disk accompanied by a paper copy.

Written comments will be available for public inspection at the Patent Examination Policy Law Office, Office of the Deputy Assistant Commissioner for Patent Policy and Projects, located at Crystal Plaza Four, Room 3C23 (receptionist), 2201 South Clark Place, Arlington, Virginia. In addition, written comments in electronic form may be made available via the Office's World Wide Web site at http://www.uspto.gov.

FOR FURTHER INFORMATION CONTACT:

Kenneth M. Schor or Gerald A. Dost, Senior Legal Advisors. Kenneth M. Schor may be contacted (a) by telephone at (703) 305-1616; (b) by mail addressed to: U.S. Patent and Trademark Office, Box Comments—Patents, Commissioner for Patents, Washington, DC 20231, marked to the attention of Kenneth M. Schor; (c) by facsimile transmission to (703) 872-9408, marked to the attention of Kenneth M. Schor; or (d) by electronic mail message over the Internet addressed to reexam.rules@uspto.gov and titled

“Inter Partes Reexamination.”

Gerald A. Dost may be contacted (a) by telephone at (703) 305-1616; (b) by mail addressed to: U.S. Patent and Trademark Office, Box Comments—Patents, Commissioner for Patents, Washington, DC 20231, marked to the attention of Gerald A. Dost; (c) by facsimile transmission to (703) 308-6916, marked to the attention of Gerald A. Dost; or (d) by electronic mail message over the Internet addressed to reexam.rules@uspto.gov and titled

“Inter Partes

Reexamination.”

SUPPLEMENTARY INFORMATION:

Background

This proposed rulemaking sets forth distinct procedures directed toward determining and improving the quality and reliability of United States patents. The procedures provide for the optional

inter partes

reexamination procedures in addition to the present

ex parte

reexamination procedures for the reexamination of patents as provided for by the American Inventors Protection Act of 1999 as part of the conference report (H. Rep. 106-479) on H.R. 3194, Consolidated Appropriations Act, Fiscal Year 2000. The text of the American Inventors Protection Act of 1999, is contained in Title IV of S. 1948, the Intellectual Property and Communications Omnibus Reform Act of 1999 (Pub. L. 106-113), the Act which is incorporated by reference in Division B of the conference report. The procedures also provide for implementation of other miscellaneous changes to the reexamination of patents also provided for in Public Law 106-113.

In 1995, the Office published proposed rules in anticipation of H.R. 1732, 104th Cong., 1st Sess. (1995), a predecessor for the present

inter partes

reexamination statute. H.R. 1732 did not, however, mature into a statute. H.R. 1732 resulted from suggestions and comments to the Administration by the public, bar groups, and the August 1992 Advisory Commission on Patent Law Reform suggesting more participation in the reexamination proceeding by third-party requesters. In response to H.R. 1732, the Office issued a Notice of Proposed Rulemaking entitled “Rules of Practice in Patent Cases; Reexamination Proceedings,” which Notice was published in the

Federal Register

at 60 FR 41035 (August 11, 1995) and in the

Official Gazette

at 1177 Off. Gaz. Pat. Office 130 (August 22, 1995). Sixteen written comments were received in response to the August 1995 Notice of Proposed Rulemaking. A public hearing was held at 9:30 a.m. on September 20, 1995. Eight individuals offered oral comments at the hearing. The sixteen written comments and a transcript of the hearing are available for public inspection in the Patent Examination Policy Law Office, Office of the Deputy Commissioner for Patent Examination Policy, located at Crystal Plaza Four, Room 3C23 (receptionist), 2201 South Clark Place, Arlington, Virginia. The present proposed rulemaking addresses, and takes into consideration, the comments received in response to the 1995 proposed rules.

Discussion of General Issues Involved

This proposed rulemaking is in response to Public Law 106-113, the Act which resulted from suggestions and comments to the Administration by the public, bar groups, and the August 1992 Advisory Commission on Patent Law Reform suggesting more participation in the reexamination proceeding by third-party requesters. Under the

inter partes

reexamination rules proposed herein, third-party

requesters will have greater opportunity to participate in reexamination proceedings in keeping with the spirit and intent of the new law. At the same time, participation will be limited to minimize the costs and other effects of reexamination requests on patentees, especially individuals and small businesses.

Ex parte

reexamination proceedings filed under Chapter 30 of 35 U.S.C. (both before and after the effective date, November 29, 1999, of the new law) will continue to be governed by 37 CFR 1.501-1.570. The proposed rules for optional

inter partes

reexaminations under Chapter 31 of 35 U.S.C. have been numbered 37 CFR 1.902-1.997.

The effective date of the statute with respect to the optional

inter partes

reexamination proceedings as well as to the existing

ex parte

reexamination proceedings is complex. With the exception of the amendments to 35 U.S.C. 41(a)(7) directed to the revival of terminated

ex parte

and

inter partes

reexamination proceedings, the new statute and the conforming amendments to the present statute take effect on the date of enactment, November 29, 1999. The changes, however, only apply to a reexamination of a patent that issues from an original application which was filed in the United States on or after November 29, 1999. Thus, for i

nter partes

reexaminations, the effective date language (in section 4608 of S. 1948) limits the applicability of the new

inter partes

reexamination Chapter 31 of 35 U.S.C., and that of the conforming amendments to 35 U.S.C. 134, 141, 143 and 145, to any patent that issues from an original application filed in the United States on or after November 29, 1999, the effective date of Public Law 106-113. For

ex parte

reexaminations filed under Chapter 30 of 35 U.S.C., the conforming amendments to 35 U.S.C. 134, 141, 143 and 145, only apply to those

ex parte

reexamination proceedings filed under § 1.510 for patents that issue from an original application that is filed in the United States on or after November 29, 1999. The conforming amendments to 35 U.S.C. 134, 141, 143 and 145, correspondingly, will not apply to

ex parte

reexamination proceedings filed under § 1.510 for patents that issue from an original application filed in the United States prior to November 29, 1999.

The conforming amendments also amend 35 U.S.C. 41(a)(7) to include the words “any reexamination proceeding” under the “unintentional” revival provisions of the statute for an unintentionally delayed response by the patent owner in any reexamination proceeding. These words “any reexamination proceeding” clearly make this section applicable to both

ex parte

reexaminations and

inter partes

reexaminations. The effective date of the amendment to 35 U.S.C. 41(a)(7), however, is one year after the date of enactment of the Act, or November 29, 2000. See section 4608 of S. 1948. Thus, as of November 29, 2000, any

ex parte

or

inter partes

reexamination filed before, on, or after November 29, 2000, is subject to the “unintentional” revival provisions of the statute.

Regarding the reexamination fee, 35 U.S.C. 41(d) requires the Director of the United States Patent and Trademark Office (the Director) to set the fee for the new optional

inter partes

reexamination at a level which will recover the estimated average cost of the reexamination proceeding to the Office. The estimated average cost is $8,800 for an

inter partes

reexamination proceeding. The difference in price between an

ex parte

reexamination ($2,520) and an

inter partes

reexamination ($8,800) takes into account that the Office will expend substantially more resources for examination, supervision, training, etc., where the third-party requester participates in an

inter partes

reexamination proceeding, and for the additional processing steps that are expected during an

inter partes

reexamination proceeding.

Considerations of the Comments Responding to the August 1995 Notice of Proposed Rulemaking

In 1995 the Office published proposed rules in anticipation of a predecessor bill to the present

inter partes

reexamination statute, which bill did not mature into a statute. The Office issued a notice of proposed rulemaking entitled “Rules of Practice in Patent Cases; Reexamination Proceedings,” which was published in the

Federal Register

at 60 FR 41035 (August 11, 1995) and in the

Official Gazette

at 1177 Off. Gaz. Pat. Office 121 (August 22, 1995). Sixteen written comments were received in response to the August 1995 notice. Also, a public hearing was held on September 20, 1995, during which eight individuals offered oral comments. The following 28 issues summarize the comments, and the Office response.

Issue 1

Eleven comments addressed the issue of the reexamination filing fees set in the August 11, 1995, Notice of Proposed Rulemaking. The fees set in 1995 were $4,500 for a request by a patent owner and $11,000 for a request by a third-party requester. The discussion below relates to the 1995 proposed fees. The current proposed $8,800

inter partes

reexamination fee is the result of a reevaluation of the

inter partes

reexamination parameters, and how

inter partes

reexamination will be conducted in view of the comments.

A first comment questioned why the reexamination filing fees set in the August 11, 1995, Notice of Proposed Rulemaking were many times those for original and reissue applications. A second comment questioned the disparity between fees for the patent owner and the third-party requester, suggesting that more reasonable fees be set initially until actual costs become known, since higher fees will discourage reexaminations. Further, it was urged that the distinction in the fees was inappropriately being based upon the legal positions of the parties (upholding or striking down a patent). Even further, it was pointed out that the fee structure provides a possibility of a windfall of $15,500 should both a patent owner and a third-party requester file a request for reexamination. A third comment asserted that the disparity was greater than a factor of two, whereas the reason given was that it would entail twice the effort. A fourth comment supported the fees, suggesting that the fee of $11,000 will discourage inappropriate requests and the harassing of individual inventors and small businesses. A fifth comment suggested that the cost of the reexamination proceedings be subsidized by fees collected from other services offered by the Office, that the fees should be apportioned in stages and charged as the reexamination progresses (

e.g.,

higher fees for appeals), and that there should be legislation to permit small entity discounts for reexamination fees. A sixth comment also suggested that the fees should be apportioned and charged as the reexamination progresses. The sixth comment additionally suggested that if the higher fees are warranted, there should be a more thorough examination of all cited and searched prior art by an independent supervisory examiner or a board of three examiners. A seventh comment asserted that since no new search is required of the examiner in the reexamination proceeding, the time and effort expended in a reexamination do not warrant a fee that is 14 times that of a regular application, which is not consistent with Congressional intent to provide a low cost alternative to litigation, and in view of the alternative to prepare and file another patent application and where appropriate initiate a more costly interference

proceeding. An eighth comment suggested that there should be a special reduced fee for reexamination requested within a short period (

e.g.,

six months) following the issuance of a patent, since the reexamination could be assigned to an examiner already familiar with the case, which fee should be the same as a continuing application for patent owners and double for third-party requesters. The ninth and tenth comments were directed to the impact of the $11,000 fee on independent inventors and small companies. The ninth comment suggested that the fees favored large businesses. The tenth comment suggested that a fee waiver system similar to that for Freedom of Information Act (FOIA) requests be adopted. In contrast, the eleventh comment stated that the fee was not a pivotal issue with respect to third parties participating in reexaminations, rather the pivotal issue is the perception today (under current rules) that the reexamination proceeding is not a level playing field. Accordingly, the fee should not be subsidized.

Response to Issue 1

Initially, it is noted that the

inter partes

reexamination fee structure has been reevaluated by the Office. The estimated average cost is $8,800 for an

inter partes

reexamination. Accordingly, § 1.20, as proposed in the present rule making, will require a filing fee of $8,800 for an

inter partes

reexamination under § 1.915(a).

As to the first and seventh comments asserting the disparity between costs for a regular patent application and an

inter partes

reexamination, it is not appropriate to compare these figures. Fees for filing an application are set by statute under 35 U.S.C. 41(a) and are not set at a cost recovery level. In fact, the statutory filing fee for an application is much lower than the average cost of the examination of the application. In contrast, the statutory patent maintenance fees set forth in 35 U.S.C. 41(b) are a significant source of income to the Office for very little actual work, which are, in effect, an offset for the application filing fee. On the other hand, the reexamination fees under 35 U.S.C. 41(d) must fully recover the cost of the reexamination. The submissions will be numerous in an

inter partes

reexamination proceeding, e.g., multiple responses and comments by the patent owner and third-party requester responsive to the Office and to each other. Further, these responses and comments are expected to be thorough and extensive which in turn must be analyzed by the examiner, requiring the expenditure of substantial time and resources. The additional examination hours, supervisory oversight, and other processing steps unique to

inter partes

reexamination have to be factored into the fees. The

inter partes

examination process is expected to require close policy oversight by legal advisors in the Patent Examination Policy Law Office, in addition to the extra resources needed to handle the anticipated increased number of submissions by the parties. The reexamination filing fee being set in the present rule package is $8,800 for filing a request for an

inter partes

reexamination under proposed § 1.913(a). This fee is considered to be appropriate based on the Office projections of the amount of work that will be required.

As to the second and third comments, directed to the disparity between fees for the patent owner and the third-party requester, it is noted that the current statute retains the current

ex parte

reexamination statute and provides an optional

inter partes

reexamination. It is anticipated that the expense of an

inter partes

reexamination will be substantially more than the expense of an

ex parte

reexamination and, consequently, the fees reflect this. Generally speaking, during the examination of an

ex parte

reexamination, the examiner applies the best art and normally limits the number of rejections made for a given claim to the best grounds. When responding to a third-party requester of an

inter partes

reexamination, the Office's preparation of an Office action will include responding to all of the multiple alleged grounds for rejections put forward (proposed) by the third-party requester. All of the grounds proposed by the third-party requester must be addressed by the examiner, because any proposed ground of rejection not adopted is a decision favorable to patentability which is subject to appeal by the third-party requester to the Board of Patent Appeals and Interferences. Thus, the extra effort needed for an

inter partes

reexamination entails not merely responding to amendments and arguments of the patent owner, but the substantially higher burden of responding to the arguments of the third-party requester and the many multiple decisions as to why a particular rejection is or is not an appropriate one to make. As to the second comment in particular, the difference in the amount of the fees is based on these projected costs and not on the legal position of the parties. As to the fourth comment regarding the discouragement of inappropriate requests, the setting of the filing fees is strictly based on cost expectations and not for the purpose of discouraging inappropriate reexamination requests.

Subsidizing of the cost of the reexamination proceedings (as suggested by the fifth comment and opposed by the eleventh comment) through increased costs to users of other services offered by the Office (as an alternative to pricing based on cost recovery) would naturally be viewed with disfavor by the users of other services. Also, the Office is not authorized to permit small entity reductions in reexamination filing fees. As to the suggestion regarding the apportionment of costs in stages as the proceeding evolves (e.g., higher fees at the appeal stage) (mentioned in the fifth and sixth comments), this is not practical since there would be no way to guarantee recovery of the total cost of reexamination. A third-party requester may decide to drop out of the reexamination and not pay the next required fee. The reexamination, however, would have to continue to resolve issues that had been raised. Moreover, appeal fees are set by statute under 35 U.S.C. 41(a)(6) and are not part of the reexamination filing fee. As to the utilization of a team of examiners to facilitate a review by a panel prior to forwarding the reexamination to the Board of Patent Appeals and Interferences, it is anticipated that appeal conferences will be made mandatory so that all work of an examiner will be thoroughly reviewed prior to the filing of an examiner's answer. Implementation of such review is better set by Office policy rather than by rule making.

As to the suggestion in the eighth comment that the fees be reduced for filing a request for reexamination within a short period (e.g., six months) following the issuance of a patent, reexaminations are generally based upon new prior art raising new issues so that the benefits (if any) of filing a reexamination within a short time after issuance of a patent would not warrant a reduction in fees. The ninth and tenth comments were directed to the impact the $11,000 fee required in the August 11, 1995, Notice of Proposed Rulemaking (for all reexaminations) will have on independent inventors and small companies. With respect to this, it should be noted that, as the statute has now been drafted and passed into law (Pub. L. 106-113), the filing of an

ex parte

reexamination is still available to a third-party requester, and the filing fee for such is $2,520. Thus, a less costly

ex parte

reexamination will be available to members of the public who may not be able to afford a full scale

inter partes

reexamination which has a currently proposed filing fee of $8,800.

Issue 2

Two comments in response to the August 11, 1995, Notice of Proposed Rulemaking suggested that the Office reconsider the refund provisions. One comment suggested that the 75% refund of the fee should be reduced, since third parties who file unjustified requests should not be rewarded by so great a refund. Another comment suggested that the difference between the fees for a patent owner and a third-party requester varied by more than a factor of two and that it was difficult to rationalize why a refund of 75% would be provided for both instead of charging a flat fee of $1500 if the Director decides not to institute a reexamination proceeding (since the amount of work done in both cases should not differ).

Response to Issue 2

The comments have been adopted. Section 1.26(c), as currently proposed, sets the amount of refund to provide for the retention of a uniform fee of $830, with the remainder of the filing fee being refunded, for all reexamination requests where the Director decides not to institute a reexamination proceeding. For the

ex parte

reexamination fee of $2,520, an amount of $1,690 will be returned, thus resulting in a retention of $830. For the

inter partes

reexamination fee of $8,800, an amount of $7,970 will be returned, again resulting in a retention of $830. The amount of $830 being retained by the Office is based on projected cost expectations and is not for the purposes of penalizing unwarranted requests, since it is neither desirable nor appropriate to penalize parties for whom requests for reexamination are denied.

Issue 3

One comment in response to the August 11, 1995, Notice of Proposed Rulemaking suggested that the third-party requester should be required to certify that the request for reexamination contains all information that the requester regards as materially adverse to the patentability of the patent.

Response to Issue 3

This suggestion has not been adopted since it is in the third-party requester's best interests to submit all information that the requester regards as materially adverse to patentability with the request for reexamination in order to increase the possibility of the request for reexamination being granted. Moreover, proposed § 1.948 of the present rule package now provides that prior art submissions by the third-party requester filed after the

inter partes

reexamination order shall be limited to: (1) Any prior art which is necessary to rebut a finding of fact by the examiner or a response of the patent owner; or (2) any prior art which became known or available to the third-party requester after the filing of the

inter partes

reexamination proceeding. This is additional incentive to submit all known (and available) material prior art with the request.

Issue 4

Four comments in response to the August 11, 1995, Notice of Proposed Rulemaking were directed to the selection of the examiner and/or number of examiners. A first comment opined that it was Office practice to assign the reexamination to the examiner who originally examined and issued the patent and not on the basis of the classification of the art. The comment further noted the assignment to the same examiner defeats the underlying purpose of reexamination and petitioning for a transfer to a different art unit based on the classification of the art can also be unsuccessful, despite the “Transfer Procedure” in MPEP Section 2237 for those times when a reexamination request should be assigned to a different group art unit. The comment suggested that if a third-party requester requests a reexamination, it should be conducted by a different examiner, and further, if appropriate, assigned to a different art unit. A second comment noted that § 1.931(b) of the August 11, 1995, Notice of Proposed Rulemaking provides the only limitation placed on the selection of the examiner, namely that an examiner whose decision refusing reexamination has been reversed will not ordinarily conduct the reexamination. The comment suggested reevaluating the practice of assigning the same examiner who prosecuted the application which issued as a patent to conduct the reexamination, since many practitioners feel that the original examiner may have a bias against fully considering prior art during a reexamination proceeding. A third comment stated that since an

inter partes

reexamination proceeding is more complicated to manage than an

ex parte

reexamination proceeding, the

inter partes

reexamination proceeding is likely to require a higher degree of technical and legal competence in making a determination of patentability than is normally required in an

ex parte

reexamination proceeding. An examiner in an

inter partes

reexamination proceeding will be required to weigh and assess the credibility of often conflicting arguments, theories of operation, and evidence when making a determination of patentability. Although statistics appear to indicate that there is no inherent bias in the conduct of a reexamination proceeding when the proceeding is assigned to the same examiner who issued the patent, many perceive a bias (in favor of the patent owner) when the reexamination proceeding is assigned to the same examiner. The comment advocated assigning the reexamination proceeding to the best qualified examiner available, given the technical, legal, and procedural complexities that are likely to arise in the reexamination proceeding. The comment also suggested the formation of a separate unit of examiners to handle the new reexamination proceedings, or at least those which involve a third-party requester. The fourth comment suggested that the number of examiners be increased from one to three, including a supervisory primary examiner and a Group Director, in order to increase the probability of a “correct” decision and develop a higher degree of confidence in the reexamination process, and avoid situations where a third-party requester feels the examiner did not understand the prior art, the interview, or the declarations, etc. The comment suggested that the small increase in Office costs, and fees to be charged to participants, will probably be offset by having fewer appeals (and law suits) filed (which is of benefit to the public), and will still be a cost-effective means of resolving patent disputes, as compared to litigation. The fifth comment suggested that more than one examiner be responsible for issuing the Right of Appeal Notice, similar to the European Patent Office. Modification of the proposed rules to allow a decision from a panel of three capable examiners, would result in a higher degree of quality in the reexamination process and less ancillary issues later being raised (such as examiner bias or an examiner's lack of understanding of the relevant art or law). The comment suggested that the panel could include, for example, a legal specialist within the Examining Group, the original examiner of the application, and a primary examiner having knowledge of the relevant technical field and the record would reflect when a panel member concurs or dissents.

Response to Issue 4

As to the selection of the examiner, studies conducted by the Office have not discovered any bias irrespective of whether the same or a different

examiner handles the reexamination. The same examiner should not be biased toward confirming patentability, because a reexamination is not a rehash of old issues, but rather, a new question of patentability. In spite of the above, the Office is, for the most part, adopting the comment suggesting assignment of the reexamination to an examiner other than the one who originally examined and issued the patent. The comment is being adopted in order to eliminate public perception of bias by the original examiner who handled the patent. The comment will be implemented as a matter of policy, rather than by rule change. The MPEP will be revised to set policy that unless a Group Director needs to make an exception, a reexamination will not be assigned to a Supervisory Patent Examiner, a primary examiner, or a junior examiner who was actually involved (by preparing/signing an action on the merits) in the examination and issuance of the patent undergoing reexamination.

As to the Office personnel to be involved in the reexamination proceedings, the Office is considering the creation of a special group/unit having legal advisors trained in

inter partes

reexamination procedures to oversee the examination of the

inter partes

reexamination by the patent examiner in the examining group. For technical expertise, an examiner selected from the groups will be assigned the reexamination. The advantage of such a special group/unit is that it will include the examiner most familiar with the technology to make the patentability decisions and legal advisors to provide uniformity of the reexamination practice and procedure.

As to the comment suggesting that the number of examiners handling a reexamination proceeding be increased from one to three, the following is to be noted. In order to provide a thorough review by a team of examiners, a practice is being considered to hold a panel review just prior to the decision on the request for reexamination (order/denial) is issued and at the close of prosecution (i.e., just prior to “allowance” of the reexamination or just prior to issuing a right of appeal notice and final rejection). The panel review will be similar to the appeal conference review done in an application on appeal. It should further be noted that appeal conferences are already mandatory before a reexamination leaves the examiner for a decision by the Board of Patent Appeals and Interferences. If adopted, this will be implemented as a matter of policy, rather than by rule change.

Issue 5

One comment responding to the August 11, 1995, Notice of Proposed Rulemaking suggested that the content of the “prior art” made available for review by the Office should also include

inter partes

sworn testimony of the inventor(s) and others associated with the implementation of the invention and any patent work thereon covering their knowledge of the known prior art, related industry practices, and the like, which evidence may also impeach the inventor(s) and others in the sense of withholding known prior art from the Office.

Response to Issue 5

The Advisory Commission on Patent Law Reform: A Report to the Secretary of Commerce, August 1992,

at page 117, recommended limitations on the scope of documentary prior art evidence and cautioned against reliance on testimonial evidence in light of the abuses of the process which occurred in the reissue protest proceedings under the Dann Amendments. The Commission found the Office to be an inappropriate forum for addressing all issues of validity. Affidavits or declarations which merely explain the contents or pertinent dates of prior patents or printed publications in more detail may be considered during reexamination, but any rejection must be in accordance with proposed § 1.906(a) (Scope of reexamination in reexamination proceeding). Proposed § 1.906(a) limits the scope of reexamination in that claims in an

inter partes

reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112.

Issue 6

One comment in response to the August 11, 1995, Notice of Proposed Rulemaking suggested that when an examiner allows a claim, the decision of the examiner should be supported by a well-reasoned opinion establishing the examiner's reasons for allowance. The comment stated that although § 1.109 provides that the examiner “may set forth such reasoning” for the allowance, this is rarely done and often with only a brief note. It was pointed out that well-reasoned opinions are critically important in inter partes reexamination procedure to third-party requesters (or patent owners) who are actively participating and who need the reasons for allowance (or for final rejection) in deciding whether to appeal.

Response to Issue 6

Office policy will direct the examiner to make a complete record of the reasons for allowing or rejecting a claim at various stages during the proceeding. Note further that, according to currently proposed § 1.953 (Examiner's Right of Appeal Notice), the Right of Appeal Notice is required to include “an identification of the status of each claim, and the reasons for patentability and/or the grounds of rejection for each claim.” Thus, the examiner's reasons for patentability and/or the grounds of rejection will be available in

inter partes

reexamination procedure to the third-party requesters (and patent owners) who are actively participating and who need the reasons for allowance (or the grounds for final rejection) in deciding whether to appeal.

Issue 7

One comment in responding to the August 11, 1995, Notice of Proposed Rulemaking questioned whether in view of the new fee structure, the examiner will be required to do a new search of the prior art.

Response to Issue 7

The Office has chosen to rely upon the examiner's judgment and expertise in determining how much searching should be done in the reexamination proceeding. If the examiner believes that additional prior art patents and publications can be readily obtained by searching to supply any deficiencies in the prior art cited in a request, the examiner has the option of performing an additional search. The examiner is not required to, and will not routinely, make a full search.

Comments Directed to Specific Rules

Issue 8

One comment stated the belief that § 1.901 of the August 11, 1995, Notice of Proposed Rulemaking (which relates to the submission of prior art) places an unnecessary burden on a person to cite art to be placed in the file of an issued patent. A patentee who obtains prior art as a result of a foreign search report or by a competitor may believe it to be irrelevant and should be encouraged to file it without any statement that the art is pertinent, since it may turn out to be relevant when combined with other unknown prior art.

Response to Issue 8

Current § 1.501 is being retained, and thus there is no need for proposed § 1.901 of the August 11, 1995, Notice of Proposed Rulemaking which was to track and replace § 1.501. Section 1.501

provides a system for citation of patents and printed publications to the Office for placement in the patent file by any person during the period of enforceability of the patent in accordance with 35 U.S.C. 301. Section 1.501 requires the citation to state the pertinency and applicability of the cited documents to the patent and the bearing the documents have on the patentability of at least one claim of the patent pursuant to the same statutory requirement set forth in 35 U.S.C. 301.

Issue 9

Two comments suggested clarification of the language of the third-party estoppel provisions proscribed by §§ 1.907 and 1.909 of the August 11, 1995, Notice of Proposed Rulemaking, specifically the language “could have raised” used in both rules. One comment recommended that the third-party requester have the same obligation to raise issues known to him as the patent owner has. Another comment opined that the phrase “or could have raised during the prior reexamination proceeding” could be construed broadly, so as to stop a third-party requester from challenging the invalidity of a claim based on prior art which was in the possession of the third-party requester at the time of a prior reexamination proceeding, but which was not discovered at that time. Thus, depending on how the expression “could have” is interpreted, this could place a substantial burden on a large corporation. It was also suggested that the duty of individuals to disclose information known to them to be material to patentability is another difficult provision, particularly the phrase “and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding.”

Response to Issue 9

35 U.S.C. 315(c) and 317(b) of the Act use the phraseology “could have raised” with respect to issues of the third-party. The Office, as the sole agency that administers the patent statute, properly interprets statutory language in the first instance, subject to review by the courts. The question of whether an issue could have been raised must be decided on a case-by-case basis, evaluating all the facts and circumstances of each individual situation. It would not be appropriate at this time to provide an “all encompassing” definition, that might not account for facts which could arise in the future which cannot be anticipated. As to the duty of disclosure, proposed § 1.933 is substantially unchanged from existing § 1.555, which was formulated to balance the interests of the patent owner with the benefits to the public interest of the disclosure of material prior art.

Issue 10

One comment suggested that § 1.915(b)(7) of the August 11, 1995, Notice of Proposed Rulemaking be amended to specifically refer to reexaminations under the newly proposed regulations. As § 1.915(b)(7) was drafted, the required certification that the person filing an additional reexamination during the pendency of an ongoing reexamination is not a privy of the patent owner or of the third-party requester of the ongoing reexamination would include an ongoing reexamination proceeding ordered under the old regulations. Since one of the purposes of the new reexamination legislation is to permit participation by a third-party requester, no useful or public purpose would be served by precluding a third-party requester from filing a request for reexamination under the new regulations where there was a pending reexamination initiated under the old regulations.

Response to Issue 10

The language of proposed § 1.915(b)(7) has been drafted to specifically refer to an

inter partes

reexamination; this should accurately track the statutory prohibition of a third-party requester of an ongoing (pending)

inter partes

reexamination from requesting another inter partes reexamination. Note, however, that the current proposed rules do not preclude an

ex parte

third-party requester from filing an

inter partes

reexamination request.

Issue 11

Two comments responding to the August 11, 1995, Notice of Proposed Rulemaking were directed to the identification of the real party in interest. One comment suggested that as to the identification of the real party in interest, § 1.915(b)(10) of the August 11, 1995, Notice needs to be clarified on the question of whether a third-party requester filing in the name of an attorney must be identified. A second comment suggested that the real party in interest should be identified at least by the time of filing of the notice of appeal to the Court of Appeals for the Federal Circuit.

Response to Issue 11

The real party in interest must be set out in the request. 35 U.S.C. 311(b)(1) requires that the request “include the identity of the real party in interest.” Proposed § 1.915(b)(8) (previously § 1.915(b)(10) in the 1995 rule package) tracks this provision of the statute and requires the requester to identify the real party in interest at the time of filing the request. If an attorney is filing a request for

inter partes

reexamination on behalf of another party, that other party must be identified. Thus, the third-party requester will be identified. As to the patent owner, proposed § 1.965(c)(1) requires the identification of the real party in interest at the time of the filing of the appellant brief, and proposed § 1.967(b)(1) requires the identification of the real party in interest at the filing of the respondent brief. Accordingly, the real parties in interest, for both the third-party requester and the patent owner, should be identified prior to an appeal to the Court of Appeals for the Federal Circuit by the patent owner (the current statute prohibits the third-party requester from appealing to the courts).

Issue 12

One comment responding to the August 11, 1995, Notice of Proposed Rulemaking was concerned that active third-party requesters representing large businesses could mount a series of attacks through “fourth parties” and “tie up” the invention of a small inventor for years.

Response to Issue 12

The statute is structured to balance the interests of the patent owners (to reduce costs and prevent harassment) and the public interest in promoting the validity of patents. Proposed § 1.907 tracks 35 U.S.C. 317 and is intended to prevent repeated challenges to the patent by third parties and their privies. In accordance with 35 U.S.C. 317(a), proposed § 1.907(a) prohibits the filing of a subsequent

inter partes

request for reexamination of the patent by the third-party requester or its privies until a reexamination certificate has been issued. In accordance with 35 U.S.C. 317(b), § 1.907(c) provides that if a final decision in an

inter partes

reexamination proceeding instituted by a third-party requester is favorable to patentability of a claim, the third-party requester and its privies may not later request another

inter partes

reexamination of any such patent claim on the basis of issues which that party, or its privies, raised or could have raised in such

inter partes

reexamination proceeding. Moreover, proposed § 1.915(b)(8) (previously § 1.915(b)(10) in the 1995 rule package) tracks 35 U.S.C. 311(b)(1) and requires the requester to identify the real party

in interest at the time of filing of the

inter partes

request.

Issue 13

One comment suggested that in regard to §§ 1.921 and 1.945 of the August 11, 1995, Notice of Proposed Rulemaking, supplemental responses and new prior art submissions should be permitted by the patent owner in order to substantiate certain points at issue (e.g., secondary considerations). It was further suggested that supplementation of responses be permitted. It was also suggested that submission of new publications by the third-party requester should be permitted in response to any amendment made by the patent owner which reduces the scope of the original claims.

Response to Issue 13

Proposed § 1.945 permits the patent owner to respond to any Office action, which response may include arguments and proposed amendments. There is no proscription regarding the submission of evidence relating to secondary considerations. As to third-party requesters, proposed § 1.948 provides that prior art submissions by the third-party requester filed after the

inter partes

reexamination order shall be limited to: (1) Any prior art which is necessary to rebut a finding of fact by the examiner or a response of the patent owner; or (2) any prior art which became known or available to the third-party requester after the filing of the

inter partes

reexamination proceeding. Accordingly, submission of new publications by the third-party requester in response to an amendment made by the patent owner which reduces the scope of the original claims would be permitted as a rebuttal of a “response of the patent owner.”

Issue 14

One comment stated that as to § 1.927 of the August 11, 1995, Notice of Proposed Rulemaking, a determination by the Director refusing to initiate reexamination is final and nonappealable by a third-party. The rule should be amended to allow the third-party to appeal, since without an opportunity to appeal, a third-party's interests would be seriously jeopardized.

Response to Issue 14

Proposed § 1.927 of the present rule package (petition to review denial of the request for reexamination) has been drafted to track 35 U.S.C. 312(c). Proposed § 1.927 provides that “[t]he third-party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner's determination refusing reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.” Thus, although the third-party requester does not have an appeal right, it may obtain a review of the decision of the examiner refusing reexamination by filing a petition. If the decision on the petition, however, affirms that no substantial new question of patentability has been raised, the determination is final and nonappealable, as is statutorily required by 35 U.S.C. 312(c).

Issue 15

Two comments were directed to the length of briefs specified in § 1.943 of the August 11, 1995, Notice of Proposed Rulemaking. One comment suggested that the length of briefs would be more meaningful if the size of the paper and the type font were specified. A second comment stated that the page limitation on briefs in § 1.943 is too restrictive, especially for patent owners, since there is no limitation on the number of issues which a third-party can raise, which may require a longer response from the patent owner. It was suggested that the rule should permit longer briefs upon a showing of good cause.

Response to Issue 15

As to the first comment, this comment is being adopted. Section 1.943, as proposed in the present rule package, has been drafted to set forth (by reference to § 1.530(d)(5)) the requirements for responses, amendments, briefs, appendices and other documents including the size of the paper, the minimum size of the type font (11-point), the line spacing and the margin requirements.

As to the second comment, the 50-page limit for amendments proposed to be set in § 1.943 is considered to be sufficient to deal with the third-party requester's comments. Note that the 50-page limit excludes reference materials such as prior art references. Where an extraordinary situation arises where justice requires the 50-page limit to be exceeded, the patent owner may petition under § 1.183 to suspend the page limit requirement of § 1.943.

The page limit set in proposed § 1.943 of the present rule package for briefs is such that appellant briefs shall not exceed 30 pages or 14,000 words in length (excluding appendices of claims and reference materials), and all other briefs by any party shall not exceed 15 pages or 7,000 words in length. These numbers of pages are in line with procedural rules of the Federal Courts; see for example Rule 32(a)(7)(A) of the Federal Rules of Appellate Procedure or Rule 33 of the Rules of the Supreme Court of the United States (Practice & Procedure).

Issue 16

Several comments were concerned with the time periods for response and extensions of time. Two comments suggested that the time periods for response for § 1.945 (patent owner) and § 1.947 (third-party requester) of the August 11, 1995, Notice of Proposed Rulemaking should be a minimum of two months for each party. A third comment suggested only that the patent owner be given two months to respond. The first comment suggested that the first month extension should be available upon payment of a fee (as in regular patent applications), with further requests requiring justification or cause. The second comment suggested that §§ 1.945 and 1.947 should be made consistent with each other (30 days versus one month) to alleviate any confusion by stating the number in months. The second comment further suggested that the extension of time procedure is unworkable since the Office could not act on the request for an extension of time (if filed within the one-month period of time) before the deadline for the response. Instead, the usual extension of time procedure used for regular patent applications should be available. The fourth comment stated that the time periods for submitting a response, a written comment, an appeal brief, and a respondent brief and for appealing or cross-appealing (§§ 1.945, 1.947, 1.951, 1.953, 1.959, 1.963, 1.971, 1.973, 1.979, 1.983, and 1.993) are too short, especially for residents outside of the United States (due to mailing delay).

Response to Issue 16

Proposed § 1.947 of the present rule package has been drafted to provide for a 30-day response period (from service of the patent owner's response on the third-party requester) for third-party requester comments. This tracks the requirement of 35 U.S.C. 314 that third-party requester comments be filed “within 30 days after the date of service of the patent owner's response.” Proposed § 1.945 has been drafted to provide for an “at least 30 days” response period for the patent owner. This tracks the requirement of 35 U.S.C. 133 that the time for response to an Office action shall be “not less than 30

days.” A shortened statutory period of two months will generally be set for patent owner responses to Office actions on the merits; however, where litigation has been suspended pending a determination in the reexamination proceeding, or for a like reason, the period will be shortened to one month or 30 days as is appropriate.

The suggestion that §§ 1.945 and 1.947 be made consistent with each other has been adopted to the extent that the currently proposed rules (§§ 1.945 and 1.947) recite both time periods in terms of days rather than months. The period for the patent owner response to an Office action will not, however, be made 30 days to correspond to the third-party comment period mandated by statute. While the statute limits the third-party requester to 30 days to comment on patent owner responses, a longer period for the patent owner to respond is appropriate in view of the potential need for counsel to consult with the patent owner, consider amendments, etc.

As to extensions of time, 35 U.S.C. 305 provides that all reexamination proceedings will be conducted with special dispatch within the Office. Section 1.956 provides that extensions of time will be available to the patent owner upon a showing of sufficient cause. Third-party requester's 30-day time period for comments is statutory; thus, it cannot be extended. This is consistent with the recommendation (VII-B) of

The Advisory Commission on Patent Law Reform: A Report to the Secretary of Commerce, August 1992

to provide for the opportunity for the third-party requester to submit written comments “within strict time deadlines.”

Issue 17

One comment suggested that, as to § 1.949 of the August 11, 1995, Notice of Proposed Rulemaking, a more flexible policy on closing prosecution be adopted in a reexamination proceeding than is currently applied by the Office in its final action practice. Specifically, this proposed section indicates that prosecution will not normally close if there is a new ground of rejection (not previously addressed by the patent owner) which was not necessitated by an amendment to the claims by the patent owner. There was particular concern in the comments about a situation where new prior art is relied on even if it was necessitated by an amendment to the claims. It was noted that the proposed practice may serve a useful purpose in the normal examination of patent applications, where an applicant always has the opportunity to file a continuing application to make any further amendments to the claims that may be desirable to address the new ground of rejection; however, in a reexamination proceeding, where the patent owner is precluded from having any right to amend the claims to address the new ground of rejection or to file another request for reexamination, the patent owner may be trapped with no effective way to address new prior art that has been introduced for the first time in the Office action that simultaneously closes the prosecution. It was urged that this could be fundamentally unfair to the patent owner. Where new prior art is asserted by the examiner, the patent owner should have the opportunity to amend the claims.

Response to Issue 17

By weighing and balancing the interests of the parties, it is believed the rule as proposed is fair and reasonable. A rule which would prohibit an Office action from closing prosecution following a new art rejection responsive to a patent owner amendment would conceivably be subject to abuse, since patent owners could purposely add an amendment in each response to thus necessitate a new art rejection and thereby preclude the closing of prosecution for an unlimited number of cycles.

Issue 18

Eight comments were directed to interviews (provided for in § 1.955 of the August 11, 1995, Notice of Proposed Rulemaking). One comment suggested the need for a more accurate statement of why claims were found to be allowable as the result of an interview. A second comment suggested that the Office rules be modified to specifically require a means for more accurately recording what transpires at interviews, regardless of which party requests the interviews or whether all parties are present. The comment further stated that “recording” did not imply physical recording by electronic means or by a court reporter, but by a more thorough method of reporting by an examiner as to what transpired at the interview (which would be particularly effective with a multi-examiner review system). The comment indicated that the reporting of the “minutes” should be done to all parties, including a brief, non-binding, and informal opinion by the examiner on the resolution of the issues presented, so as to give all parties the opportunity to respond to the issues raised at the interview. A third comment suggested that the proposed rules should be modified to achieve two objectives. The first objective would be to provide an opportunity to better communicate issues to examiners (particularly those issues which are difficult to express on paper and might be better demonstrated; e.g., by charts, tables, or physical demonstration) of what is purported to be the main technical aspect of an invention, and how that technical aspect is or is not suggested by the prior art, either before or after the formal submission, so that they will have a better understanding of what the data represents. A second objective should be to provide a complete record for later review for a judge or an attorney who reviews the file history for a decision on patentability or infringement assessment. The proposed § 1.955 was stated to benefit the patent owner, who is the only party allowed to request an interview, thereby providing a tremendous advantage and, therefore, the rule should be modified to allow a third-party requester the opportunity to initiate an interview. The comment further criticized the lack of a specific requirement for recording what transpires at interviews, on the basis that an Examiner Interview Summary Record would be of little value in an

inter partes

reexamination proceeding, since the record is too abbreviated to be of any real value in subsequent proceedings and it is unlikely that much detail could be put into any interview record if more than one party, as well as a senior level official (whose presence would be required under the proposed rule) are all present and are relying upon an examiner to hurriedly write a summary of the interview. The comment suggested modification of § 1.955 to include an effective procedure for recording the details of what transpired at an interview. A fourth comment suggested that, in view of the criticality of the content of interviews in subsequent litigation, a mechanism should be made available for recording statements made at substantive interviews that occur during reexamination, whereby any party to a reexamination should be permitted to have a transcript of the substantive interviews made of record at their own expense. The comment further suggested that requesting parties would both supply the means for transcription and would bear the costs associated therewith. A fifth comment suggested that the third-party requester be allowed not only to participate but also initiate an interview, and that the third-party requester be provided, at a sufficient time prior to the interview, the particulars of the claim at issue at the

interview, the objective of the interview, and the specific data to be used at the interview, so that the third-party requester would be able to take substantial part in the discussion at the interview. A sixth comment was in favor of the third-party requesters having the right to participate in interviews but opposed giving third parties the right to initiate them. The reason given was that the rules need to balance the right to encourage third parties to participate with the need to keep reexamination quick and inexpensive. The comment further stated that in view of the expense, including the time required to review the transcript and the continuing attempts to make corrections and clarifications, a rule change to permit or require transcription of interviews is not recommended. Such a rule would make reexaminations more like court proceedings. A seventh comment suggested that § 1.955 should be changed to permit the third-party requester to request an interview because the third-party requester, like the patent owner, may have experts and/or documentary evidence that is not suitable for written declarations. An eighth comment suggested that if interviews are to be recorded, consideration should be given as to whether participants would be under oath.

Response to Issue 18

The Office has reconsidered its initial position (taken in the August 11, 1995, Notice of Proposed Rulemaking) to permit owner-initiated interviews in which the patent owner and the third-party requester participate. The presence of a third-party requester will complicate the reexamination proceeding and delay it. There is no reason to further complicate and delay the proceeding with

inter partes

interviews, which past history has shown to be not only resource intensive, but unwieldy.

Inter partes

interviews are difficult to arrange, control, and conduct. There would be interaction between the patent owner's representative and its experts, the third-party's representative and its experts, the examiner, and the “senior level official” which would be difficult to regulate and control. It is difficult to record what happened, and cross-transcripts would result in delay and complications. In addition, the time to arrange and conduct the interview would greatly extend the

inter partes

proceeding time line, and this is clearly contrary to the “special dispatch” required by 35 U.S.C. 314(c) for the

inter partes

reexamination proceeding. As to the comments suggesting that the third-party should be permitted to initiate interviews, this would even further complicate the proceeding, adding undue cost to the parties and the Office and further delay to the proceeding.

Accordingly, the Office has decided that the third-party requester of the

inter partes

reexamination should neither be permitted to initiate nor be permitted to participate in an interview which addresses the merits of the proceeding. If, however, the patent owner is permitted to initiate and participate in an interview which addresses the merits of the proceeding while the third-party requester is not, this will create an advantage to the patent owner which is contrary to the intent and purpose of the

inter partes

reexamination addition to the statute. Thus, to “level the playing field” in the Office, in accordance with the intent and purpose of the statute, the patent owner will neither be permitted to initiate nor be permitted to participate in an interview which addresses the merits of the proceeding. In other words, no interviews which address the merits of the proceeding will be permitted (or held) in an

inter partes

reexamination proceeding. This offers the additional advantage of further shortening the proceeding, pursuant to the dictates of “special dispatch” in 35 U.S.C. 314(c). Even further, this deals with the comments which argued that the content of the

inter partes

interview cannot be adequately captured without the use of expensive and complex transcripts. Anything stated or decided in the proceeding will be on the record, in writing.

As to the comments regarding improving the record of what transpired at interviews, clarity of the record is a concern to the Office. Accordingly, in § 1.560(b) (Interviews in

ex parte

reexamination proceedings), it is required for interviews in

ex parte

reexamination proceedings that “[i]n every instance of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the patent owner.” (Emphasis added). The written statement must be filed as a separate part of a response to an Office action outstanding at the time of the

ex parte

reexamination interview, or as a separate paper within one month from the date of the

ex parte

reexamination interview, whichever is later. Regarding

inter partes

reexamination proceedings, there will be no interviews at all which address the merits of the

inter partes

reexamination proceeding, as discussed in the previous paragraph, thus the comments regarding improving the record of what transpired at interviews are moot as to

inter partes

reexamination proceedings.

With respect to the suggestion of prior notice of what issues will be discussed (the specific objective of the interview and the materials to be presented), patent owners requesting interviews in

ex parte

reexamination proceedings are in fact expected to submit such materials prior to the interview with ample time for review. As to whether participants at recorded interviews (which are only permitted in special circumstances in

ex parte

reexamination proceedings) should be under oath, this is believed to be unnecessary in view of 18 U.S.C. 1001, which provides “[w]hoever, in any matter within the jurisdiction of any department or agency of the United States knowingly and willfully falsifies, conceals or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be fined not more than $10,000 or imprisoned not more than five years, or both.”

Issue 19

One comment stated that, as to § 1.959(a)(2) of the August 11, 1995, Notice of Proposed Rulemaking, the introduction of a right to appeal by a third-party requester who is dissatisfied with an examiner's favorable consideration of a claim is an important and beneficial aspect of the new reexamination proceedings. However, the apparent unqualified opportunity to file an appeal at this advanced stage in the proceedings raises a concern that the appeal procedure could be used to compromise the patent owner's ability to address the reasons and the evidence that the third-party requester might use in its appeal and to add (perhaps intentionally) considerable length to a proceeding that is to be conducted with special dispatch. The comment was concerned that the likelihood exists that the first time the patent owner will be made aware of the grounds of rejection to be relied upon by the third-party requester will be upon receiving the third-party's appeal brief, adding complexity and length to the proceeding. In spite of this, the provisions in § 1.967(b) relating to the respondent brief apparently do not contemplate any opportunity for the patent owner to offer an amendment or material appropriate to the new ground of rejection, as is permitted when an

examiner makes a new ground of rejection in the examiner's answer (see proposed § 1.971(b)). The comment suggested that consideration must be given to setting appropriate limits on the grounds of rejection that the third-party requester can rely upon in its appeal; including consideration to requiring the third party requester who files a notice of appeal under proposed § 1.959(a)(2) to identify in this notice the grounds of rejection that it will rely upon in its appeal.

Response to Issue 19

Third-party requester's prior art submissions in an

inter partes

reexamination (after reexamination is ordered) are limited by the currently proposed § 1.948 to prior art: (1) Which is necessary to rebut a finding of fact by the examiner; (2) which is necessary to rebut a response of the patent owner; or (3) which became known or available to the third-party requester after the filing of the

inter partes

reexamination proceeding. Under § 1.947 (Response by third-party requester to patent owner's response), the third-party requester's comments shall be limited to issues raised by the action of the Office or the patent owner's response. Accordingly, the third-party requester could not advance a new ground of rejection based upon new prior art at the appeal stage. Although the notice of appeal does not require specific identification of the issues, the appellant's brief does. See currently proposed §§ 1.965(c)(6) (appellant brief), 1.967(b)(6) (respondent brief) and 1.971 (rebuttal brief), all of which specifically prohibit the third-party from introducing new grounds of rejection at each respective stage of the appeal.

Issue 20

One comment submitted in response to the August 11, 1995, Notice of Proposed Rulemaking suggested that the enforcement role of the Office should be such that the examiner is obligated to issue an examiner's answer in every reexamination proceeding. The comment noted that present (1995) rules provide that an examiner may issue an examiner's answer. It was urged that when the Office decides that an invention is unpatentable, it is incumbent that the Office not rely upon the third-party requester exclusively, and therefore, examiner's answers should be mandatory.

Response to Issue 20

Although the currently proposed § 1.969(a) (and § 1.193(a)(1)) indicates that an examiner's answer may be furnished, common practice is to furnish an examiner's answer. This practice is implemented through procedures set forth in the MPEP. Moreover, the examiner cannot be obligated to issue an examiner's answer in every instance, since, in rare instances, it will become necessary to reopen prosecution for consideration of a recently discovered new ground of rejection or reason for patentability.

Issue 21

One comment responding to the August 11, 1995, Notice of Proposed Rulemaking suggested that appellant should be given the opportunity to reply to both the opening brief of the respondent and the examiner's answer, either by filing briefs in response to each, or by a single reply brief after the examiner's answer.

Response to Issue 21

The second option of the comment has been adopted. The currently proposed § 1.971 (Rebuttal Brief) provides that, following the examiner's answer, any appellant may once submit a rebuttal brief. The rebuttal brief of the patent owner may be directed to the examiner's answer and/or any respondent brief. The rebuttal brief of any third-party requester may be directed to the examiner's answer and/or the respondent brief of the patent owner. The rebuttal brief of a third-party requester may not be directed to the respondent brief of any other third-party requester. No new ground of rejection can be proposed by a third-party requester appellant.

Issue 22

One comment responsive to the August 11, 1995, Notice of Proposed Rulemaking suggested that because both the request for oral argument and the briefs replying to the examiner's answer are due within one month, the parties will likely not be able to consider each other's final written submissions before requesting oral argument and, therefore, the period for requesting an oral hearing be lengthened to 45 days, thus giving the parties 15 days to consider each other's final written submissions.

Response to Issue 22

This comment has been adopted as follows. Section 1.973(b) (Oral Hearing) as proposed provides that the parties have two months after the date of the examiner's answer to file a written request for oral hearing.

Issue 23

One comment suggested that proposed § 1.979(b) of the August 11, 1995, Notice of Proposed Rulemaking provides an opportunity for each party to file a single request for rehearing (referred to as “request for reconsideration” in the comment) of the decision of the Board of Patent Appeals and Interferences. However, there is no apparent opportunity for the other party to provide comments on that request. The lack of this opportunity is not consistent with the general approach in the new reexamination process of providing an opportunity for both parties to provide comments before any action is taken by the Office, and it was suggested once a request for rehearing has been filed by either or both parties, that the other party have a one-month period to offer comments on the request for rehearing.

Response to Issue 23

This comment has been adopted. The third-party requester, by virtue of the statute, has no opportunity to appeal the decision of the Board of Patent Appeals and Interferences to the U.S. Court of Appeals for the Federal Circuit. In addition, § 1.979(d), as presently proposed, permits the party requesting rehearing (in addition to stating “the points believed to have been misapprehended or overlooked in rendering the decision”) to also state “all other grounds upon which rehearing is sought.” It is only fair to give the third-party requester an opportunity to comment on newly provided “other grounds upon which rehearing is sought.” The patent owner should likewise be given the same opportunity to comment in order to create a level “playing field” in the Office. Accordingly, currently proposed § 1.979(b) has been drafted to give both the patent owner and the third-party requester a right to comment on each other's request for rehearing of the decision of the Board of Patent Appeals and Interferences.

Issue 24

One comment suggested that § 1.985 of the August 11, 1995, Notice of Proposed Rulemaking, which permits any person to advise the Office about a concurrent proceeding involving the patent being reexamined, should be changed to require the patent owner to advise the Office (and therefore any third-party requester) of any concurrent proceeding involving the patent being reexamined. The comment also stated that similar mandatory requirements are contained in § 1.660 relating to the conduct of an interference proceeding involving an application or a patent.

Response to Issue 24

The suggestion has been adopted. Currently proposed § 1.985(a) (Notification of prior or concurrent proceedings) is drafted to direct that in any

inter partes

reexamination proceeding, the patent owner shall call the attention of the Office to any prior or concurrent proceedings in which the patent is or was involved such as interferences, reissue, reexaminations, or litigation and the results of such proceeding.

Issue 25

Regarding § 1.989 of the August 11, 1995, Notice of Proposed Rulemaking, one comment stated that the merger of multiple reexamination proceedings on unrelated issues by unrelated parties will result in undue complications of the proceedings, particularly during interviews and hearings.

Response to Issue 25

As pointed out above in the response to Comment 18, the Office has reconsidered its initial position (taken in the August 11, 1995, Notice of Proposed Rulemaking) and will not permit any interview which addresses the merits in an

inter partes

reexamination proceeding. Thus, the comment is moot as to complications caused by an

inter partes

interview. Although multiple parties can, to some degree, increase the complexity of the proceeding even in areas other than the interviews focused upon by the commenter, the general policy of the Office is that concurrent reexamination proceedings will not be conducted separately at the same time on the same patent. The reasons for this policy is to prevent inconsistent, and possibly conflicting, amendments from being introduced into the two proceedings on behalf of the patent owner. Normally the proceedings will be merged whenever it is desirable to do so in the interest of expediting the prosecution of all proceedings.

Issue 26

One comment responding to the August 11, 1995, Notice of Proposed Rulemaking suggested that it would be beneficial for the rules to provide specific procedures for consolidating multiple reexamination requests of the same patent, since the procedure is too complicated for the public to simply rely upon internal Office policy.

Response to Issue 26

Section 1.989, as proposed in the present rule package, provides for the merging of multiple reexaminations. As to the details of the merger procedure, it is believed to be more appropriate to incorporate same in the MPEP, because it is less cumbersome and easier to revise the details via the MPEP as needed to react to input as the practice evolves, than it would be to revise the rules. Further, where it becomes known that an area of the merger procedure is not being understood by the public, it will be easier to add more explanation to the MPEP, than to make the rules more comprehensive. Accordingly, the MPEP will contain the detailed discussion of the merger procedure.

Issue 27

One comment stated that as to § 1.991 of the August 11, 1995, Notice of Proposed Rulemaking, a merged reissue/reexamination proceeding will be conducted according to provisions applicable to the reissue application except that the participation by a third-party requester shall be limited to issues within the scope of reexamination. Since a third-party requester has a right to inspect a reissue application and file a protest involving any issue considered in a reissue application, consideration should be given to permitting participation by a third-party requester in the full scope of issues addressed under the reissue statute. It was urged that the right of appeal and participation in the appeal process by the third-party requester should be limited to the scope permitted under the reexamination statute. The comment further questioned how the third-party requester will be notified of its right to appeal within the scope of the reexamination proceeding, since typically there would be no separate action closing prosecution and right to appeal in a reissue proceeding.

Response to Issue 27

When an

inter partes

reexamination proceeding is merged with a reissue application, the participation by the third-party requester shall be limited to issues within the scope of the

inter partes

reexamination. This is consistent with the recommendations of

The Advisory Commission on Patent Law Reform: A Report to the Secretary of Commerce, August 1992

at page 117, “that a full

inter partes

proceeding, even with certain restrictions, would lead to abuses of the process much as occurred in the reissue protests under the Dann amendments * * * [and] the USPTO is not an appropriate forum for an

inter partes

adversarial proceeding addressing all potential issues of validity.” [Emphasis added]

As to how the third-party requester will be notified (in the merged proceeding) of its right to appeal within the scope of the reexamination proceeding, since there is no provision in the reissue rules for a separate action closing prosecution and right to appeal, currently proposed § 1.995 provides that when a third-party requester is involved in one or more proceedings including an

inter partes

reexamination proceeding, the merger of such proceedings will be accomplished so as to preserve a third-party requester's right to participate to the extent specifically provided for in these regulations. Due to the complexity of the merged reissue/reexamination proceedings and the varying issues presented as a result of the merger, the decision merging the reissue and reexamination proceedings will set forth the framework for various courses of action by the parties, including appeal notification and rights.

Issue 28

One comment asked what relationship will there be between the § 1.993 request to stay an interference (of the August 11, 1995, Notice of Proposed Rulemaking) and the § 1.644(a) petition in interference, since the § 1.993 “request to stay an interference” is really a form of a petition and should be covered or cross-referenced in § 1.644(a).

Response to Issue 28

The request to stay an interference under § 1.993 as currently proposed, and under present § 1.565(e) is not an exact fit under any of subsections (1)-(3) of § 1.644(a); thus, it provides an additional aspect of relief to the public. While subsection (2) of § 1.644(a) might appear to overlap the § 1.565(e) and § 1.993 request to stay an interference, § 1.644(b) states that “[a] petition under paragraph (a)(2) of this section shall not be filed prior to the party's brief for final hearing (see § 1.656).” Just as petitions under § 1.644 are decided by the Chief Administrative Patent Judge of the Board of Patent Appeals and Interferences, a request to stay an interference under § 1.565(e) and § 1.993 will likewise be decided by the Chief Administrative Patent Judge of the Board of Patent Appeals and Interferences. The decision of

Shaked

v.

Taniguchi

, 21 USPQ2d 1289 (Comm'r Pat. 1991) should be noted, where it was pointed out that neither the reexamination nor the interference will ordinarily be stayed in this situation.

Discussion of the Major Specific Issues Involved (1999 Statute)

The proposed rules relating to

inter partes

reexamination proceedings are directed to the provisions set forth in Chapter 31 of Title 35 of the United

States Code (35 U.S.C. 311-318). This Chapter provides for the filing of requests for

inter partes

reexamination, decisions on such requests,

inter partes

reexamination, appeal from

inter partes

reexamination decisions, and the issuance of a certificate at the termination of the

inter partes

reexamination proceedings.

Discussion of Specific Rules

Section 1.4 is proposed to be amended so that paragraph (a)(2) includes the

inter partes

reexamination under §§ 1.902—1.997.

Section 1.6 is proposed to be amended so that paragraph (d)(5) includes filing a request for

inter partes

reexamination under § 1.913 as an exception to the use of facsimile transmission.

Section 1.17 is proposed to be amended so that the title includes a reference to reexamination to clearly indicate that the enumerated fees may apply to reexaminations as well as to patent applications. Section 1.17 is proposed to be amended so that paragraph (l) reflects the fact that in the case of reexaminations, petitions for revival of a reexamination proceeding terminated for an unavoidable failure of the patent owner to respond will require the fees of $55 for a small entity and $110 for a large entity. Also, § 1.17 is proposed to be amended so that paragraph (m) reflects the fact that in the case of reexaminations, petitions for revival of a reexamination proceeding terminated for an unintentional failure to respond will require the fees of $605 for a small entity and $1,210 for a large entity. Note, however, that the unintentional revival provisions of the statute are not effective in any reexamination until November 29, 2000.

Section 1.20 is proposed to be amended so that paragraph (c) reflects the fact that a request for an

ex parte

reexamination under § 1.510(a) will require a filing fee of $2,520; and that a request for an

inter partes

reexamination under § 1.915(a) will require a filing fee of $8,800.

Section 1.25, which provides for charging fees to deposit accounts, is proposed to be amended so that paragraph (b) includes a reference to

inter partes

reexaminations under § 1.913.

Section 1.26 is proposed to be amended so as to reflect the refund to the reexamination requester where the Director decides not to institute a reexamination proceeding. For

ex parte

reexaminations filed under § 1.510, a refund of $1,690 will be made to the reexamination requester. For

inter partes

reexaminations filed under § 1.913, a refund of $7,970 will be made to the reexamination requester. In both cases $830 of the filing fee will be retained, which amount reflects the cost of the reexamination proceeding through the denial of the reexamination request.

Section 1.112 is proposed to be amended so that the last sentence reflects the fact that in the case of

inter partes

reexaminations, the right to reply may be limited by an action closing prosecution under § 1.949 (prior to the final action) or by a right of appeal notice under § 1.953 (which is a final action).

Section 1.113, which provides for a final rejection or action, is proposed to be amended to limit its applicability to applications and

ex parte

reexaminations filed under § 1.510. For final rejections or actions in an

inter partes

reexamination filed under § 1.913, new § 1.953 will control.

Section 1.116 is proposed to be amended so that the title includes a reference to an action closing prosecution and a right of appeal notice in

inter partes

reexaminations. Paragraph (a), which provides for amendments after final action, is proposed to be amended to apply to amendments after an action closing prosecution by patent owners in

inter partes

reexaminations filed under § 1.913. Also § 1.116(a) is proposed to be amended to preclude amendments after the right of appeal notice under § 1.953 except as provided for in § 1.116(c). Paragraph (c), which provides for amendments after the decision on appeal, is proposed to be amended to provide for amendments after the decision on appeal in an

inter partes

reexamination.

Section 1.121(c), which provides for the manner of making amendments to the description and claims in reexamination proceedings, is proposed to be amended to specify that such amendments are made in accordance with § 1.530(d) in both

ex parte

reexaminations filed under § 1.510 and

inter partes

reexaminations filed under § 1.913.

Parts (a)(2) and (b) of § 1.136, which provide for filing of timely replies with petitions for extensions of time, are proposed to be amended to make it clear that § 1.956 is controlling for extensions of time in

inter partes

reexaminations.

Section 1.137, which provides for revival of abandoned applications or lapsed patents, is proposed to be amended to provide for revival of

ex parte

reexamination proceedings terminated under § 1.550(d), for revival of

inter partes

reexamination proceedings terminated under § 1.957(b), or for revival of rejected claims terminated under § 1.957(c) in an

inter partes

reexamination proceeding where further prosecution has been limited to claims found allowable at the time of the failure to respond. The title is being amended to include a terminated reexamination proceeding. Paragraph (a) is being amended to include revival of unavoidably terminated reexamination proceedings. The unavoidable delay provisions of 35 U.S.C. 133 are imported into and are applicable to reexamination proceedings by 35 U.S.C. 305 and 314. See

In re Katrapat

, 6 USPQ2d 1863 (Comm'r Pats. 1988). Paragraph (b) is being amended to provide for revival of unintentionally terminated reexamination proceedings. The unintentional delay fee provisions of 35 U.S.C. 41(a)(7) are imported into and are applicable to all reexamination proceedings by section 4605 of S. 1948. Note that these changes pertain to

all

reexaminations (i.e., both

ex parte

reexaminations filed under § 1.510 and

inter partes

reexaminations filed under § 1.913) and become effective on November 29, 2000 (one year after enactment of statute). Paragraph (d) is being amended to provide that extensions of time for requesting reconsideration of a decision dismissing or denying a petition requesting revival of a terminated reexamination proceeding under subsections (a) or (b) must be filed under § 1.550(c) for a terminated

ex parte

reexamination proceeding, or under § 1.956 for a terminated

inter partes

reexamination proceeding.

Section 1.181, is proposed to be amended so that paragraphs (a) and (c) reflect the fact that such a petition may be filed in a reexamination proceeding.

Section 1.191, which provides for appeal to the Board of Patent Appeals and Interferences by the patent owner from any decision adverse to patentability, is proposed to be amended so as to be applicable to applications and

ex parte

reexaminations filed under § 1.510, but not to

inter partes

reexamination proceedings filed under § 1.913. Specifically, proposed § 1.191 would point out that appeals to the Board of Patent Appeals and Interferences in

inter partes

reexamination proceedings filed under § 1.913 are controlled by §§ 1.959 through 1.981, and that §§ 1.191 through 1.198 are not applicable to appeals in

inter partes

reexamination proceedings filed under § 1.913.

Section 1.191 is further proposed to be amended to distinguish between

ex parte

reexamination proceedings filed under § 1.510 for patents that issued

from an original application filed in the United States prior to November 29, 1999 (where an appeal is permitted when claims have been twice or finally rejected), and

ex parte

reexamination proceedings filed for patents that issued from an original application filed in the United States on or after November 29, 1999 (where an appeal is only possible when claims have been finally rejected). This date distinction is necessitated by the conforming amendments to 35 U.S.C. 134 in S. 1948 and the effective date of the changes to the statute which are keyed to the original filing date of the application which issued as the patent under reexamination. The effective date language in section 4608 of S. 1948 limits the applicability of the new

inter partes

reexamination Chapter 31, and the conforming amendments to 35 U.S.C. 134, 141, 143 and 145, to a reexamination of any patent that issues from an original application which is filed in the United States on or after November 29, 1999. Thus, for

ex parte

reexaminations filed under Chapter 30, the conforming amendments to 35 U.S.C. 134, 141, 143 and 145 only apply to those

ex parte

reexamination proceedings filed under § 1.510 for patents that issue from an original application which is filed in the United States on or after November 29, 1999. The conforming amendments will not apply to

ex parte

reexamination proceedings filed under § 1.510 for patents that have issued or will issue from an original application which was filed in the United States prior to November 29, 1999.

Section 1.301, which provides for appeal by the patent owner in a reexamination proceeding to the U.S. Court of Appeals for the Federal Circuit, is proposed to be amended so as to be applicable to

ex parte

reexamination proceedings filed under § 1.510 and to indicate, for

inter partes

reexamination proceedings filed under § 1.913, that § 1.983 is controlling.

Parts (a) and (b) of section 1.303, which provide for remedy by civil action under 35 U.S.C. 145 for the patent owner in a reexamination proceeding, are proposed to be amended so as to be applicable in reexamination only to

ex parte

reexaminations filed under § 1.510 for patents that issue from an original application which is filed in the United States prior to November 29, 1999. This date distinction is necessitated by the conforming amendments to 35 U.S.C. 141 and the effective date of the statute which is keyed to the original filing date of the application which issues as the patent under reexamination. See sections 4605 and 4608 of S. 1948. The effective date language limits the applicability of the new

inter partes

reexamination Chapter 31, and the conforming amendments to 35 U.S.C. 141, to any patent that issues from an original application which is filed in the United States on or after November 29, 1999. Thus, for

ex parte

reexaminations filed under Chapter 30, the conforming amendments to 35 U.S.C. 141, which limit the patent owner to an appeal only to the U.S. Court of Appeals for the Federal Circuit, only apply to those

ex parte

reexamination proceedings filed under § 1.510 for patents that issue from an original application which is filed in the United States on or after November 29, 1999. The conforming amendments in section 4605 of S. 1948 will not apply to

ex parte

reexamination proceedings filed under § 1.510 for patents that issue from an original application which is filed in the United States prior to November 29, 1999. It is further proposed to amend § 1.303 by adding a new subsection (d) to clearly note that no remedy by civil action under 35 U.S.C. 145 is available to the patent owner for

ex parte

reexamination proceedings filed under § 1.510 for patents that issue from an original application which is filed in the United States on or after November 29, 1999, and for any

inter partes

reexamination proceedings filed under § 1.913.

Section 1.304, which provides for the time for appeal by the patent owner in a reexamination proceeding to the U.S. Court of Appeals for the Federal Circuit, is proposed to be amended so as to be applicable to

inter partes

reexamination proceedings filed under § 1.913.

The section heading (title) to Subpart D is proposed to be amended by inserting “

Ex Parte

” before Reexamination to provide that the reexamination rules in this part generally apply to

ex parte

reexamination proceedings. Since some of the rules also apply to

inter partes

reexamination, they are specifically incorporated into the

inter partes

reexamination rules,

e.g.,

§ 1.933 (patent owner duty of disclosure) incorporates § 1.555; and § 1.943 (manner of making amendments) incorporates § 1.530(d)(5). Unless specifically stated otherwise, in this subpart the term “reply” shall also mean “response.”

The titles of §§ 1.501-1.570 and the undesignated center headings for Subpart D are proposed to be amended by revising them to be limited to

ex parte

reexamination except as specifically stated otherwise (

e.g.,

§§ 1.530, 1.555 and 1.565).

Proposed section 1.501, which provides for citations of prior art in patent files, sets forth the procedure that citations shall be entered in the patent file unless a reexamination proceeding is pending and reexamination has been ordered. In this situation, only citations by the patent owner under § 1.555 and by a third-party requester under either § 1.510 or § 1.535 will be entered during the pendency of the reexamination proceeding. Citations by other parties filed during the pendency of the reexamination proceeding will not be entered into the patent file or the reexamination file until the reexamination proceeding is concluded. The section is further amended to indicate that processing of prior art citations in patent files during an

inter partes

reexamination proceeding filed under § 1.913 is controlled by § 1.902.

Section 1.510, which relates to the contents of the reexamination request, is proposed to be amended to limit the section to

ex parte

reexamination proceedings. In addition, § 1.510(b)(4) is proposed to be amended to delete the requirement of mounting the copy of the patent to be reexamined in single column format. Instead, a copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent will be required. All copies must have each page plainly written on only one side of a sheet of paper.

It is proposed to amend §§ 1.515, 1.520, 1.525, 1.530, 1.535, and 1.540 to recite the reexamination as “

ex parte

” reexamination where appropriate, to eliminate any potential for confusion. Further, § 1.530(d) is proposed to be revised so that it applies to both

ex parte

reexamination and

inter partes

reexamination proceedings.

Section 1.550, which provides for the conduct of the reexamination proceeding, is proposed to be amended to limit the section to

ex parte

reexamination proceedings filed under § 1.510. In addition, § 1.550(d) is proposed to be amended to clarify that the failure to file a written statement of an interview required under § 1.560(b) shall be the basis for terminating a reexamination proceeding. Proposed § 1.550(e)(1) specifically provides for the revival of terminated

ex parte

reexamination proceedings under the unavoidable delay provisions of § 1.137(a). The unavoidable delay provisions of 35 U.S.C. 133 are imported into and are applicable to

ex parte

reexamination proceedings by 35 U.S.C. 305. Proposed § 1.550(e)(2) provides for the revival of terminated

ex parte

reexamination proceedings under the

unintentional provisions of § 1.137(b). The unintentional delay fee provisions of 35 U.S.C. 41(a)(7) are imported into and are applicable to

ex parte

and

inter partes

reexamination proceedings by section 4605 of S. 1948. Note, however, the unintentional delay fee provisions of 35 U.S.C. 41(a)(7) only become effective in reexamination proceedings on November 29, 2000 (one year after enactment of statute).

Section 1.560, which provides for interviews in reexamination proceedings, is proposed to be amended to limit the section to

ex parte

reexamination proceedings filed under § 1.510. Note, however, that there will be no interviews which address the issues of the proceeding permitted in

inter partes

reexamination proceedings under § 1.913. See § 1.955.

In addition, § 1.560(b) is proposed to be amended to clarify that the patent owner must file a written statement of an interview after an interview is held. The written statement may be filed either as a separate paper or as a separate part of a response to an outstanding Office action, whichever is later.

Section 1.565, which provides for concurrent Office proceedings, is proposed to be amended to limit the section to

ex parte

reexamination proceedings filed under § 1.510. In addition, § 1.565(e) is proposed to be amended to change “examiner-in-chief” to “administrative patent judge” to reflect their current title. Also, the appropriate references for concurrent

ex parte

and

inter partes

reexamination situations have been added. Section 1.565(c) is proposed to be amended to make it clear that after prosecution has been terminated in a pending reexamination proceeding (e.g., by the issuance of a Notice of Intent to Issue a Reexamination Certificate) there is no right of merger of any subsequently filed reexamination request.

It is proposed to amend § 1.570 to recite the reexamination as “

ex parte

” reexamination where appropriate, to eliminate any potential for confusion.

In the current rules, or portions of the rules, that are amended in this package, “Commissioner,” has been revised to read “Director” in accordance with section 4732 of S. 1948. As to the rules, or portion of the rules, not being revised in this package, it is anticipated that the technical correction of “Commissioner” to “Director” will be effected in a future rule package directed to technical corrections that will be issued in due course.

The proposed title to Subpart H provides that the reexamination rules in this part generally apply to

inter partes

reexamination proceedings. Some of the

inter partes

reexamination rules specifically incorporate

ex parte

reexamination rules, e.g., § 1.943 (manner of making amendments) incorporates § 1.530(d)(5), and § 1.933 (patent owner duty of disclosure) incorporates § 1.555. Unless specifically stated otherwise, in this subpart the term “reply” shall also mean “response.”

Proposed § 1.902 provides for the processing of prior art citations during an

inter partes

reexamination proceeding and is consistent with the provisions of § 1.501 which deals with prior art citations in patent files and in

ex parte

reexamination proceedings.

Proposed § 1.903 provides that the patent owner and the third-party requester shall be sent copies of all Office actions, and that the patent owner and the third-party requester must serve copies of all papers on all other parties in the

inter partes

reexamination proceeding or they may be refused consideration by the Office. This is analogous to the provisions of § 1.550(e).

Proposed § 1.904 provides that the notices of filing of

inter partes

reexamination requests will be published in the

Official Gazette

under § 1.11(c) and that such a notice will be considered to be constructive notice to the patent owner.

Proposed § 1.905 provides that, unless otherwise provided for, submission of papers by the public other than third-party requesters in an

inter partes

reexamination proceeding will not be considered in the proceeding and will be treated in accordance with the requirements of a prior art submission under § 1.902. Submissions not in accordance with § 1.902 will be returned to the sender.

Proposed § 1.906 covers the scope of reexamination in an

inter partes

reexamination proceeding. While it is not intended that the examiners will routinely complete a new search when conducting an

inter partes

reexamination, the examiners may conduct additional searches and cite and apply additional prior patents and printed publications when they consider it appropriate and beneficial to do so. Paragraph (a) provides that the examination is only on the basis of patents or printed publications and on the basis of the requirements of 35 U.S.C. 112 with respect to subject matter added or deleted during the

inter partes

reexamination. Paragraph (b) provides that claims in a reexamination proceeding must not enlarge the scope of the claims of the patent and must not introduce new matter. Paragraph (c) provides that issues relating to matters other than those indicated in paragraphs (a) and (b) of this section (e.g., on sale, public use, duty of disclosure, etc.) will not be resolved in a reexamination proceeding, but will be noted by the examiner as being an open issue in the record. The examiner should only raise an issue under § 1.906(c) with caution after careful consideration, and should only raise the issue once. Patent owners could then file a reissue application if they wish such issues to be resolved.

Proposed § 1.907 sets forth prohibitions on the filing of an

inter partes

reexamination request. The basis for this section is 35 U.S.C. 317. Under § 1.907(a), once an order for

inter partes

reexamination has been issued, neither the third-party requester, nor any of its privies, may file a subsequent request for an

inter partes

reexamination of the patent until an

inter partes

reexamination certificate is issued, unless authorized by the Director. Under subsection (b) once a final decision has been entered against a party in a civil action that the party has not sustained its burden of proving invalidity of any patent claim in suit, then that party, and its privies, are thereafter precluded from requesting an

inter partes

reexamination of any such patent claim on the basis of issues which that party, or its privies, raised or could have raised in such civil action, and an

inter partes

reexamination requested by that party, or its privies, on the basis of such issues may not thereafter be maintained by the Office. Under subsection (c) if a final decision in an

inter partes

reexamination proceeding instituted by a third-party requester is favorable to patentability of any patent claim, then that party, or its privies, may not thereafter request

inter partes

reexamination of any such patent claim on the basis of issues which that party, or its privies, raised or could have raised in such

inter partes

reexamination proceeding.

Proposed § 1.913 provides for any third-party requester (except if the estoppel provisions of § 1.907 apply) to file a request under 35 U.S.C. 311 for an

inter partes

reexamination of a patent which issued from an original application filed in the United States on or after November 29, 1999. The time period for filing such a request is limited to the period of enforceability of the patent for which the request is filed.

Proposed § 1.915(a) requires payment of the fee for requesting an

inter partes

reexamination which is set forth in § 1.20(c)(2). Paragraph (b) of § 1.915 indicates what each request for

inter partes

reexamination must include. The requirements are analogous to the

requirements of § 1.510(b) for filing an

ex parte

reexamination request with the most notable difference being that the third-party requester must be identified in an

inter partes

reexamination request. Paragraph (c) indicates that requests for an

inter partes

reexamination may be filed by attorneys or agents on behalf of a third-party requester, but it is noted that the real party in interest must be identified. Paragraph (d) provides that if the request for

inter partes

reexamination does not meet all the requirements of paragraph (b), the third-party requester may be given an opportunity to complete the

inter partes

reexamination request to avoid having the proceeding vacated.

Proposed § 1.919 indicates that the date on which the entire fee for a request for

inter partes

reexamination is received will be considered to be the filing date of the request for

inter partes

reexamination.

Proposed § 1.923 provides for a determination by the examiner as to whether the request has presented a substantial new question of patentability under 35 U.S.C. 312 and requires that the determination be made within 3 months of the filing date of the request.

Proposed § 1.925 provides for a refund under § 1.26(c) of a portion of the filing fee if

inter partes

reexamination is not ordered. See the discussion of § 1.26(c) above as to the amount of the refund.

Proposed § 1.927 provides for review by petition to the Director of a decision refusing

inter partes

reexamination.

Proposed § 1.931 provides for ordering

inter partes

reexamination where a substantial new question of patentability has been found pursuant to § 1.923. Under paragraph (b), the only limitation placed on the selection of the examiner by the Office is that the same examiner whose decision refusing

inter partes

reexamination was reversed on petition filed under § 1.927 ordinarily will not conduct the

inter partes

reexamination ordered in the decision granting the petition.

Proposed § 1.933 covers the duty of disclosure by a patent owner in an

inter partes

reexamination proceeding. The rule provides that the duty in an

inter partes

reexamination proceeding is the same as the patent owner's duty in an

ex parte

reexamination proceeding as set forth in § 1.555 (a) and (b), and is satisfied by filing a paper in compliance with § 1.555 (a) and (b).

Proposed § 1.935 indicates that the initial Office action on the merits usually accompanies the

inter partes

reexamination order as expressly provided for as an option in 35 U.S.C. 313. It is contemplated that the initial paper from the examiner will comprise two parts. The first part will address the issue as to whether the prior art raises a substantial new question of patentability (SNQ). If the examiner determines that the prior art does not raise an SNQ, reexamination is denied. No patentability question would be addressed by the examiner. If the examiner determines that the prior art does raise an SNQ, reexamination will be ordered. In this situation, a second part of the initial Office action will usually be issued which would address the patentability issues and will constitute the first Office action on the merits.

Proposed § 1.937 would cover the basic items relating to the conduct of

inter partes

reexamination proceedings. Paragraph (a) provides that, in accordance with 35 U.S.C. 314(c), unless otherwise provided by the Director for good cause, all

inter partes

reexamination proceedings will be conducted with special dispatch. Paragraph (b) provides that all

inter partes

reexamination proceedings will be conducted according to the procedures established for initial examination under §§ 1.104-1.116. These proceedings will basically follow the procedures for examining patent applications. Paragraph (c) provides that all communications between the Office and the parties to the

inter partes

reexamination which are directed to the merits of the proceeding must be in writing and filed with the Office for entry into the record of the proceeding.

Proposed § 1.939 provides for the return of unauthorized papers filed by any party in an

inter partes

reexamination, and that unless otherwise authorized, no paper shall be filed in an

inter partes

reexamination before the initial Office action on the merits.

Proposed § 1.941 provides that amendments made by the patent owner in an

inter partes

reexamination must be made in accordance with the requirements of §§ 1.530(d) and 1.943.

Proposed § 1.943, paragraph (a) provides that the form of responses, briefs, appendices, and other papers must be in accordance with § 1.530(d)(5). Paragraph (b) provides for page limits for responses by the patent owner and written comments by the third-party requester (other than briefs). Amendments, appendices of claims, and reference materials such as prior art references would not be included in this total. Paragraph (c) provides for page limits or total word limits for briefs.

Proposed § 1.945 provides that a patent owner will be given at least thirty days to respond to any Office action on the merits. Although problems may arise in certain cases and extensions of time may be granted under § 1.956, it is felt that relatively short response times are necessary in order to process reexaminations with “special dispatch.” While the Office intends to set a two-month period for patent owner to respond to an Office action on the merits in usual situations, the minimum period will always be at least 30 days.

Proposed § 1.947 provides that each time a patent owner files a response to any Office action on the merits, the third-party requester may once file written comments within a period of 30 days from the date of service of the patent owner's response. Since 35 U.S.C. 314(b)(3) statutorily imposes this period for third-party requester comments, this time may not be extended. Thus, any third-party comments, including any supplemental comments, filed after expiration of 30 days from the date of service of the patent owner's response shall be considered to be untimely filed and unauthorized, and shall be returned to the third-party in accordance with § 1.939.

Proposed § 1.948 provides that additional third-party requester prior art submissions as defined under § 1.501 may be filed after the

inter partes

reexamination order only if they are submitted as part of a comments submission under § 1.947 (written comments to a patent owner response to an Office action on the merits) and limited to: (1) Any prior art which is necessary to rebut a finding of fact by the examiner; (2) any prior art which is necessary to rebut a response of the patent owner; or (3) any prior art which became known or available to the third-party requester after the filing of the

inter partes

request for reexamination where a discussion of the pertinency of each reference to the patentability of at least one claim is included. The purpose of this rule is twofold. First, the third-party requester may cite any prior art needed to rebut a position taken by the examiner or the patent owner. Second, the third-party requester may submit prior art newly discovered or newly available since the filing of the

inter partes

reexamination request provided a discussion of the pertinency of each reference to the patentability of at least one claim is included. The only limitation is that the prior art may only be submitted along with written comments filed by the third-party requester under § 1.947 in response to a patent owner response to an Office action on the merits. Limiting prior art submissions to newly discovered or

newly available prior art (except when used for rebuttal purposes) will encourage the third-party requester to submit all known pertinent prior art along with the initial request for

inter partes

reexamination. Later submission of previously known or available prior art would only be permissible to rebut a position taken by the examiner or the patent owner, or through the filing of an

ex parte

reexamination request (which, if ordered, would be merged with the

inter partes

reexamination proceeding). Permitting the third-party requester to timely submit newly discovered or previously unavailable prior art, however, will obviate the need for the third-party requester to have to file

an ex parte

request for reexamination. To prevent harassment of the patent owner due to frequent submissions of prior art citations during a reexamination proceeding, such submissions may only be filed along with written comments filed by the third-party requester in response to a patent owner response to an Office action on the merits or after an action closing prosecution.

Proposed § 1.949 provides for the close of prosecution on the second or subsequent Office action, as opposed to a final rejection or a final action which would be issued in an

ex parte

reexamination proceeding. The distinction between a final action (including a final rejection) and an action closing prosecution is important as appeal rights to the Board of Patent Appeals and Interferences under 35 U.S.C. 134 (b) and (c) mature only with a final action (as opposed to “twice rejected” in an application under 35 U.S.C. 134(a)). The statute permits the patent owner to appeal finally rejected claims, and the third-party requester to appeal final decisions favorable to patentability to the Board of Patent Appeals and Interferences. The rules were drafted to provide for both the patent owner and the third-party requester to submit comments on the examiner's patentability findings prior to making such findings final. The action closing prosecution (in

lieu

of a final action) is needed to preclude one party from filing a notice of appeal while another party is filing comments seeking reconsideration of an examiner's decision. It is only after the examiner has considered all the comments submitted by all the parties that a final rejection and final decision favorable to patentability will be issued by way of the Right of Appeal Notice under § 1.953. At that time, both the patent owner and the third-party requester may appeal to the Board of Patent Appeals and Interferences.

Proposed § 1.951 provides the options available to the parties after an Office action closing prosecution. Both the patent owner and the third-party requester may once file a response limited to issues raised in the action closing prosecution. The patent owner may also submit proposed amendments (subject to the criteria of § 1.116 as to whether or not the amendments shall be admitted). If one party files a response, the other party may once file written comments on the other's response. The time periods within which the patent owner and the third-party requester may act (as provided for by this section) may run concurrently. In this manner all parties are provided an equal opportunity to contest the examiner's patentability findings before the findings are made final and ripe for appeal.

Proposed § 1.953(a) provides that, following the responses or expiration of the time for response in § 1.951, the examiner may issue a right of appeal notice which shall include a final rejection and/or final decision favorable to patentability in accordance with 35 U.S.C. 134. The intent of limiting the appeal rights until after the examiner issues a “Right of Appeal Notice” is to specifically preclude the possibility of one party attempting to appeal prematurely while prosecution before the examiner is being continued by the other party.

Proposed § 1.953(b) provides that any time after the initial Office action on the merits in an

inter partes

reexamination, the patent owner and all third-party requesters may stipulate that the issues are appropriate for a final action, which would include a final rejection and/or a final determination favorable to patentability, and may request the issuance of a Right of Appeal Notice. If the examiner determines that no other issues are present or should be raised, a Right of Appeal Notice limited to the identified issues shall be issued. The request for an expedited notice will enable the parties to accelerate the

inter partes

reexamination proceeding. Proposed § 1.953(c) provides that the Right of Appeal Notice shall be a final action, which would include a final rejection and/or final decision favorable to patentability, and that no amendment under § 1.116 can be made in response to the Right of Appeal Notice. The Right of Appeal Notice shall set a one-month time period for either party to appeal. If no appeal is filed, the reexamination proceeding will be terminated, and the Director will proceed to issue a certificate under § 1.997 in accordance with the Right of Appeal Notice.

Proposed § 1.955 provides that interviews between the examiner and the patent owner and/or the third-party requester which discuss the merits of the proceeding will not be permitted in

inter partes

reexamination proceedings. Thus, no separate

ex parte

interviews will be permitted, and no

inter partes

interviews will be permitted. All communications between the Office and the patent owner which are directed to the merits of the proceeding must be in writing and filed with the Office for entry into the record of the proceeding. An informal amendment will not be accepted, as that would amount to an informal

ex parte

interview. The Office has reconsidered its initial position taken in the August 11, 1995, Notice of Proposed Rulemaking which proposed to permit owner-initiated interviews in which the patent owner and the third-party requester participate. Thus, in the present rule package, no interviews will be held, nor be permitted, in

inter partes

reexamination cases which discuss the merits of the proceeding. In other words, neither the patent owner nor the third-party requester will be able to initiate, nor participate in, an

ex parte

nor an

inter partes

interview which discusses the merits of the proceeding in an

inter partes

reexamination proceeding. The rationale for this is discussed above in Issue 18 of the consideration of the comments responsive to the August 11, 1995, Notice of Proposed Rulemaking.

Proposed § 1.956 relates to patent owner extensions of time for responding to a requirement of the Office in

inter partes

reexamination proceedings. As in

ex parte

reexamination practice, a patent owner may only obtain an extension of time for sufficient cause, and the request for such extension must be filed on or before the end of the period for response. Note that the time for the third-party requester to file comments to patent owner responses may not be extended, as set forth in § 1.947.

Proposed § 1.957(a) provides that a third-party requester's submission in

inter partes

reexamination may be refused consideration if it is untimely or is inappropriate. Proposed § 1.957(b) and (c) relate to the patent owner's failure to timely or appropriately respond in

inter partes

reexamination proceedings. In this event, if no claims are found patentable, the proceeding shall be terminated and a reexamination certificate shall be issued. If claims are found patentable, further prosecution shall be limited to the patentable claims, and any additional claims that do not expand the scope of the patentable claims. Proposed § 1.957(d) provides

that when the action by the patent owner is a bona fide attempt to respond and to advance the case, and is substantially a complete response to the Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, an opportunity to explain and supply the omission may be given.

Proposed § 1.958(a) provides for the revival of terminated

inter partes

reexamination proceedings under the unavoidable delay provisions of § 1.137(a). The unavoidable delay provisions of 35 U.S.C. 133 are imported into and are applicable to

inter partes

reexamination proceedings under 35 U.S.C. 314. Proposed § 1.958(b) provides for the revival of terminated

inter partes

reexamination proceedings under the unintentional provisions of § 1.137(b). The unintentional delay fee provisions of 35 U.S.C. 41(a)(7) are imported into and are applicable to

inter partes

reexamination proceedings under section 4605 of S. 1948. Note, however, the unintentional delay fee provisions of 35 U.S.C. 41(a)(7) only become effective in reexamination proceedings on November 29, 2000 (one year after enactment of statute).

Proposed § 1.959 relates to appeals and cross appeals to the Board of Patent Appeals and Interferences in

inter partes

reexamination proceedings. Both patent owners and third-party requesters are given appeal rights in accordance with 35 U.S.C. 315.

Proposed § 1.961 relates to time of transfer of the jurisdiction of the appeal over to the Board of Patent Appeals and Interferences in

inter partes

reexamination proceedings.

Proposed § 1.962 relates to the definition of appellant and respondent in

inter partes

reexamination proceedings.

Proposed § 1.963 relates to the time periods for filing briefs in

inter partes

reexamination proceedings.

Proposed § 1.965 relates to the requirements of the appellant brief in

inter partes

reexamination proceedings.

Proposed § 1.967 relates to the requirements of the respondent brief in

inter partes

reexamination proceedings.

Proposed § 1.969 relates to the examiner's answer. An examiner's answer may not include a new ground of rejection nor a new decision favorable to patentability. In either case (if there is to be a new ground of rejection or a new decision favorable to patentability), prosecution should be reopened.

Proposed § 1.971 gives any appellant one opportunity to file a rebuttal brief following the examiner's answer. The rebuttal brief filed by an appellant who is the patent owner is limited to the issues raised in the examiner's answer and/or in any respondent brief. The rebuttal brief filed by an appellant who is a third-party requester is limited to the issues raised in the examiner's answer and/or in the patent owner's respondent brief. The rebuttal brief of a third-party requester may not be directed to the respondent brief of any other third-party requester. No new ground of rejection can be proposed by a third-party requester appellant.

Proposed § 1.973 relates to the oral hearing in

inter partes

reexamination proceedings.

Proposed § 1.975 relates to affidavits or declarations after appeal in

inter partes

reexamination proceedings.

Proposed § 1.977 relates to the decision by the Board of Patent Appeals and Interferences in

inter partes

reexamination proceedings. A reversal of an examiner's decision favorable to patentability (

i.e.

, a decision not to make a rejection proposed by the third-party requester) constitutes a decision adverse to patentability which will be set forth as a new ground of rejection under § 1.977(b).

Proposed § 1.979 relates to the procedure following the decision or dismissal by the Board of Patent Appeals and Interferences in

inter partes

reexamination proceedings.

Proposed § 1.981 relates to the procedure for the reopening of prosecution following the decision by the Board of Patent Appeals and Interferences in

inter partes

reexamination proceedings.

Proposed § 1.983 relates to the patent owner's right to appeal to the United States Court of Appeals for the Federal Circuit in

inter partes

reexamination proceedings. Under section 141, the patent owner in

inter partes

reexamination proceedings may appeal the decision of the Board of Patent Appeals and Interferences only to the United States Court of Appeals for the Federal Circuit. Under section 134(c), the third-party requester in

inter partes

reexamination proceedings may not appeal the decision of the Board of Patent Appeals and Interferences.

Proposed § 1.985 relates to notification of prior or concurrent proceedings in

inter partes

reexamination proceedings. Paragraph (a) requires the patent owner to notify the Office of any prior or concurrent proceeding involving the patent under

inter partes

reexamination. Paragraph (b) permits any member of the public to notify the Office of any prior or concurrent proceeding involving the patent under

inter partes

reexamination. Such notice, however, must be limited to merely providing notice without discussion of the issues in the

inter partes

reexamination. Any notice that includes a discussion of the issues will be returned to the sender.

Proposed § 1.987 provides that when a patent involved in an

inter partes

reexamination is concurrently involved in litigation, the Director shall determine whether or not to suspend the

inter partes

reexamination proceeding.

Proposed § 1.989 relates to the merger of concurrent reexamination proceedings.

Proposed § 1.991 relates to the merger of a concurrent reissue application and an

inter partes

reexamination proceeding.

Proposed § 1.993 relates to the suspension of a concurrent interference or an

inter partes

reexamination proceeding.

Proposed § 1.995 relates to the third-party requester's participation rights being preserved in a merged proceeding.

Proposed § 1.997 provides for the issuance of the reexamination certificate under 35 U.S.C. 316 after conclusion of an

inter partes

reexamination proceeding. The certificate will cancel any patent claims determined to be unpatentable, confirm any patent claims determined to be patentable, and incorporate into the patent any amended or new claims determined to be patentable. Once all of the claims have been canceled from the patent, the patent ceases to be enforceable for any purpose. Accordingly, any pending reissue proceeding or other Office proceeding relating to a patent for which a certificate that cancelled all of the patent claims has been issued will be terminated. This provides a degree of assurance to the public that patents with all the claims canceled via

inter partes

reexamination proceedings will not again be asserted.

Classification

Regulatory Flexibility Act

The Chief Counsel for Regulation of the Department of Commerce certified to the Chief Counsel for Advocacy, Small Business Administration, that the changes proposed in this notice, if adopted, would not have a significant impact on a substantial number of small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). This rulemaking implements the provisions of Title IV, subtitle F (sections 4601 through 4608) of the “American Inventors Protection Act of 1999,” which permits a third-party requester to participate more extensively during the reexamination proceeding as well as giving them appeal rights. The changes proposed in

this notice (if adopted) would provide procedures for a third-party to request optional

inter partes

reexamination of a patent. The new

inter partes

proceedings are similar to the

ex parte

proceedings, although they are more complicated procedurally to accommodate the presence of the third-party.

Taking into account the overall similarities and additional complexity, it is reasonable to assume that a similar proportion of small entities will request

inter partes

reexamination as have requested

ex parte

reexamination. Furthermore, it is anticipated that

inter partes

reexamination requests will be filed by third-party requesters, while patent owners will continue to file

ex parte

reexamination requests. Approximately 400

ex parte

reexamination filings have been received each year since 1992, of which 55% or 220 have been filed by third-party requesters. Since the beginning of the reexamination procedure, about 22.5% of the

ex parte

reexamination requesters have been small entities. If all 220 of the third-party filed reexamination requests were filed as requests for

inter partes

reexaminations, approximately 50 requests (22.5%) would come from small entities. The higher cost of the

inter partes

reexamination fee ($8,800) compared to the

ex parte

reexamination fee ($2,520) reflects the greatly expanded participation available to the third-party requester. In the

inter partes

proceeding, the third party requester has the right to comment on every response by the patent owner to the PTO, to be a party to any appeal by the patent owner to the Board of Patent Appeals and Interferences, and to appeal any determination of patentability to the Board. In the

ex parte

proceeding, the third-party requester's role is limited to the request for reexamination and a single reply to the patent owner's response. The third party requester also has no appeal rights in an

ex parte

reexamination. Therefore, the number of small businesses affected by these proposed optional

inter parte

reexamination rules is not significant, and the impact on each business, considering the benefits of greater participation throughout the

inter partes

proceeding, is not significant.

Executive Order 13132

This rulemaking 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 rulemaking has been determined to be not significant for purposes of Executive Order 12866 (September 30, 1993).

Paperwork Reduction Act

This notice of proposed rulemaking 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 notice of proposed rulemaking has been reviewed and previously approved by OMB under OMB control number 0651-0033.

As required by the Paperwork Reduction Act of 1995 (44 U.S.C. 3507(d)), the Patent and Trademark Office has submitted an information collection package to OMB for its review and approval of the proposed information collections under OMB control number 0651-0033. The Patent and Trademark Office is submitting this information collection to OMB for its review and approval because this notice of proposed rulemaking will add the request for optional

inter partes

reexamination of a patent to that collection.

The title, description and respondent description of the information collection is shown below with an estimate of the annual reporting burdens. Included in this estimate is the time for reviewing instructions, gathering and maintaining the data needed, and completing and reviewing the collection of information. The principal impact of the changes in this notice of proposed rulemaking is to implement the changes to Office practice necessitated by Title IV, subtitle F (sections 4601 through 4608) of the “American Inventors Protection Act of 1999” (enacted into law by § 1000(a)(9), Division B, of Pub. L. 106-113).

OMB Number:

0651-0033.

Title:

Post Allowance and Refiling.

Form Numbers:

PTO/SB/13/14/44/50-57; PTOL-85b.

Type of Review:

Approved through September of 2000.

Affected Public:

Individuals or Households, Business or Other For-Profit Institutions, Not-for-Profit Institutions and Federal Government.

Estimated Number of Respondents:

172,475.

Estimated Time Per Response:

0.3 hour.

Estimated Total Annual Burden Hours:

51,593.5 hours.

Needs and Uses:

This collection of information is required to administer the patent laws pursuant to title 35, U.S.C., concerning the issuance of patents and related actions including correcting errors in printed patents, refiling of patent applications, requesting reexamination of a patent, and requesting a reissue patent to correct an error in a patent. The affected public includes any individual or institution whose application for a patent has been allowed or who takes action as covered by the applicable rules.

Comments are invited on:

(1) Whether the collection of information is necessary for proper performance of the functions of the agency; (2) the accuracy of the agency's estimate of the burden; (3) ways to enhance the quality, utility, and clarity of the information to be collected; and (4) ways to minimize the burden of the collection of information to respondents.

Interested persons are requested to send comments regarding these information collections, including suggestions for reducing this burden, to Robert J. Spar, Director, Patent Examination Policy Law Office, Patent and Trademark Office, Washington, D.C. 20231, or to the Office of Information and Regulatory Affairs of OMB, New Executive Office Building, 725 17th St. NW, Room 10235, Washington, DC 20503, Attention: Desk Officer for the Patent and Trademark Office.

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 record keeping requirements, Small Businesses.

For the reasons set out in the preamble and under the authority given to the Director of Patents and Trademarks by 35 U.S.C. 6, Part 1 of Title 37 CFR is amended as set forth below.

PART 1—RULES OF PRACTICE IN PATENT CASES

1. The authority citation for 37 CFR Part 1 would continue to read as follows:

Authority:

35 U.S.C. 6, unless otherwise noted.

2. Section 1.4(a)(2) is proposed to be revised to read as follows:

§ 1.4

Nature of correspondence and signature requirements.

(a) * * *

(2) Correspondence in and relating to a particular application or other proceeding in the Office. See particularly the rules relating to the filing, processing, or other proceedings of national applications in Subpart B, §§ 1.31 to 1.378; of international applications in Subpart C, §§ 1.401 to 1.499; of ex parte reexaminations of patents in Subpart D, §§ 1.501 to 1.570; of interferences in Subpart E, §§ 1.601 to 1.690; of extension of patent term in Subpart F, §§ 1.710 to 1.785; of inter partes reexaminations of patents in Subpart H, §§ 1.902 to 1.997; and of trademark applications §§ 2.11 to 2.189.

3. Section 1.6(d)(5) is proposed to be revised to read as follows:

§ 1.6

Receipt of Correspondence.

(d) * * *

(5) A request for reexamination under § 1.510 or § 1.913.

4. Sections 1.17(l) and (m) are proposed to be revised to read as follows:

§ 1.17

Patent application and reexamination processing fees.

(l) For filing a petition for the revival of an unavoidably abandoned application under 35 U.S.C. 111, 133, 364, or 371, for the delayed payment of the issue fee under 35 U.S.C. 151, or for the revival of an unavoidably terminated reexamination proceeding under 35 U.S.C. 133 (§ 1.137(a)):

By a small entity (§ 1.9(f))

$55.00

By other than a small entity

110.00

(m) For filing a petition for revival of an unintentionally abandoned application, for the unintentionally delayed payment of the fee for issuing a patent, or for the revival of an unintentionally terminated reexamination proceeding under 35 U.S.C. 41(a)(7) (§ 1.137(b)):

By a small entity (§ 1.9(f))

$605.00

By other than a small entity

1,210.00

5. Section 1.20(c) is proposed to be revised to read as follows:

§ 1.20

Post-issuance and reexamination fees.

(c) In reexamination proceedings

(1) For filing a request for

ex parte

reexamination (§ 1.510(a))

$2,520.00

(2) For filing a request for

inter partes

reexamination (§ 1.915(a))

8,800.00

6. Section 1.25(b) is proposed to be revised to read as follows:

§ 1.25

Deposit accounts.

(b) Filing, issue, appeal, international-type search report, international application processing, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees. A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular paper filed. An authorization to charge to a deposit account the fee for a request for reexamination pursuant to § 1.510 or § 1.913 and any other fees required in a reexamination proceeding of a patent may also be filed. An authorization to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective as to the particular fee to be charged unless sufficient funds are present in the account to cover the fee.

7. Section 1.26(c) is proposed to be revised to read as follows:

§ 1.26

Refunds.

(c) If the Director decides not to institute a reexamination proceeding, for

ex parte

reexaminations filed under § 1.510 a refund of $1,690.00 will be made to the reexamination requester. For

inter partes

reexaminations filed under § 1.913, a refund of $7,970 will be made to the reexamination requester. Reexamination requester should indicate the form in which any refund should be made (

e.g.

, by check, electronic funds transfer, credit to a deposit account,

etc.

). Generally, reexamination refunds will be issued in the form that the original payment was provided.

8. Section 1.112 is proposed to be revised to read as follows:

§ 1.112

Reconsideration before final action.

After reply by applicant or patent owner (§ 1.111) to a non-final action, the application or the patent under reexamination will be reconsidered and again examined. The applicant, or in the case of a reexamination proceeding the patent owner and any third-party requester, will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination. Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111, with or without amendment, unless such Office action indicates that it is made final (§§ 1.113), or in an

inter partes

reexamination, that it is an action closing prosecution (§ 1.949) or a right of appeal notice (§ 1.953).

9. Section 1.113(a) is proposed to be revised to read as follows:

§ 1.113

Final rejection or action.

(a) On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicant's, or for

ex parte

reexaminations filed under § 1.510 patent owner's, reply is limited to appeal in the case of rejection of any claim (§ 1.191), or to amendment as specified in § 1.116. Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim (§ 1.181). Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection or action must comply with any requirements or objections as to form. For final actions in an

inter partes

reexamination filed under § 1.913, see § 1.953.

10. Sections 1.116(a) and (c) are proposed to be revised to read as follows:

§ 1.116

Amendments after final action, action closing prosecution, right of appeal notice, or appeal.

(a) After a final rejection or other final action (§ 1.113) in an application or in an

ex parte

reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an

inter partes

reexamination filed under § 1.913, amendments may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action. Amendments presenting rejected claims in better form for consideration on appeal may be admitted. The admission of, or refusal to admit, any amendment after a final rejection, a final action, an action closing prosecution or any related proceedings, will not operate to relieve the application or patent under reexamination from its condition as subject to appeal or to save the application from abandonment under § 1.135, or the reexamination from termination. No amendment can be

made in an

inter partes

reexamination proceeding after the right of appeal notice under § 1.953 except as provided for in paragraph (c) of this section.

(c) No amendment can be made as a matter of right in appealed cases. After decision on appeal, amendments can only be made as provided in §§ 1.198 and 1.981, or to carry into effect a recommendation under §§ 1.196 or 1.977.

11. Section 1.121(c) is proposed to be revised to read as follows:

§ 1.121

Manner of making amendments.

(c)

Amendments in reexamination proceedings.

Any proposed amendment to the description and claims in patents involved in reexamination proceedings in both

ex parte

reexaminations filed under § 1.510 and

inter partes

reexaminations filed under § 1.913 must be made in accordance with § 1.530(d).

12. Section 1.136(a) (2) and (b) are proposed to be revised to read as follows:

§ 1.136

Extensions of time.

(a) * * *

(2) The date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The expiration of the time period is determined by the amount of the fee paid. A reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application (§ 1.135), but in no situation may an applicant reply later than the maximum time period set by statute, or be granted an extension of time under paragraph (b) of this section when the provisions of this paragraph are available. See § 1.136(b) for extensions of time relating to proceedings pursuant to §§ 1.193(b), 1.194, 1.196 or 1.197; § 1.304 for extensions of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action; § 1.550(c) for extensions of time in

ex parte

reexamination proceedings, § 1.956 for extensions of time in

inter partes

reexamination proceedings; and § 1.645 for extensions of time in interference proceedings.

(b) When a reply cannot be filed within the time period set for such reply and the provisions of paragraph (a) of this section are not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under this paragraph must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension under this paragraph. In no situation can any extension carry the date on which reply is due beyond the maximum time period set by statute. See § 1.304 for extensions of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action; § 1.645 for extensions of time in interference proceedings; § 1.550(c) for extensions of time in

ex parte

reexamination proceedings; and § 1.956 for extensions of time in

inter partes

reexamination proceedings.

13. Section 1.137 is proposed to be amended by revising its heading, the introductory text of paragraph (a), the introductory text of paragraph (b), and paragraph (d) to read as follows:

§ 1.137

Revival of abandoned application, lapsed patent, or terminated reexamination proceeding.

(a)

Unavoidable.

Where the delay in reply was unavoidable, a petition may be filed to revive an abandoned application, a reexamination proceeding terminated under §§ 1.550(d) and 1.957(b) and (c), or a lapsed patent pursuant to this paragraph. A grantable petition pursuant to this paragraph must be accompanied by:

(b)

Unintentional.

Where the delay in reply was unintentional, a petition may be filed to revive an abandoned application, a reexamination proceeding terminated under §§ 1.550(d) and 1.957(b) and (c), or a lapsed patent pursuant to this paragraph. A grantable petition pursuant to this paragraph must be accompanied by:

(d) Any request for reconsideration or review of a decision refusing to revive an abandoned application, a terminated reexamination proceeding, or lapsed patent upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under the provisions of § 1.136 for an abandoned application or lapsed patent; under the provisions of § 1.550(c) for a terminated

ex parte

reexamination proceeding filed under § 1.510; and under the provisions of § 1.956 for a terminated

inter partes

reexamination proceeding filed under § 1.913.

14. Sections 1.181(a) and (c) are proposed to be revised to read as follows:

1.181

Petition to the Director.

(a) Petition may be taken to the Director:

(1) From any action or requirement of any examiner in the

ex parte

prosecution of an application, or in the

ex parte

or

inter partes

prosecution of a reexamination proceeding which is not subject to appeal to the Board of Patent Appeals and Interferences or to the court;

(2) In cases in which a statute or the rules specify that the matter is to be determined directly by or reviewed by the Director; and

(3) To invoke the supervisory authority of the Director in appropriate circumstances.

(4) For petitions in interferences, see § 1.644.

(c) When a petition is taken from an action or requirement of an examiner in the

ex parte

prosecution of an application, or in the

ex parte

or

inter partes

prosecution of a reexamination proceeding, it may be required that there have been a proper request for reconsideration (§ 1.111) and a repeated action by the examiner. The examiner may be directed by the Director to furnish a written statement, within a specified time, setting forth the reasons for his or her decision upon the matters averred in the petition, supplying a copy thereof to the petitioner.

15. Section 1.191(a) is proposed to be revised to read as follows:

§ 1.191

Appeal to Board of Patent Appeals and Interferences.

(a) Every applicant for a patent or for reissue of a patent, and every owner of a patent under

ex parte

reexamination filed under § 1.510 for a patent that issued from an original application filed in the United States before November 29, 1999, any of whose claims has been twice or finally (§ 1.113) rejected, may appeal from the decision of the examiner to the Board of Patent Appeals and Interferences by filing a notice of appeal and the fee set forth in § 1.17(b) within the time period provided under §§ 1.134 and 1.136 for reply. Notwithstanding the above, for an

ex parte

reexamination proceeding filed under § 1.510 for a patent that issued from an original application filed in the United States on or after November 29, 1999, no appeal may be filed until the claims have been finally rejected (§ 1.113). Appeals to the Board of Patent Appeals and Interferences in

inter partes

reexamination proceedings filed under § 1.913 are controlled by §§ 1.959 through 1.981. Sections 1.191 through

1.198 are not applicable to appeals in

inter partes

reexamination proceedings filed under § 1.913.

16. Section 1.301 is proposed to be revised to read as follows:

§ 1.301

Appeal to U.S. Court of Appeals for the Federal Circuit.

Any applicant or any owner of a patent involved in any

ex parte

reexamination proceeding filed under § 1.510, dissatisfied with the decision of the Board of Patent Appeals and Interferences, and any party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences, may appeal to the U.S. Court of Appeals for the Federal Circuit. The appellant must take the following steps in such an appeal: In the U.S. Patent and Trademark Office, file a written notice of appeal directed to the Director (see §§ 1.302 and 1.304); and in the Court, file a copy of the notice of appeal and pay the fee for appeal as provided by the rules of the Court. For

inter partes

reexamination proceedings filed under § 1.913, § 1.983 is controlling.

17. Section 1.303 is proposed to be amended by revising paragraphs (a) and (b) and by adding a new paragraph (d) to read as follows:

§ 1.303

Civil action under 35 U.S.C. 145, 146, 306.

(a) Any applicant or any owner of a patent involved in an

ex parte

reexamination proceeding filed under § 1.510 for a patent that issues from an original application filed in the United States before November 29, 1999, dissatisfied with the decision of the Board of Patent Appeals and Interferences, and any party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences may, instead of appealing to the U.S. Court of Appeals for the Federal Circuit (§ 1.301), have remedy by civil action under 35 U.S.C. 145 or 146, as appropriate. Such civil action must be commenced within the time specified in § 1.304.

(b) If an applicant in an

ex parte

case or an owner of a patent involved in an

ex parte

reexamination proceeding filed under § 1.510 for a patent that issues from an original application filed in the United States before November 29, 1999, has taken an appeal to the U.S. Court of Appeals for the Federal Circuit, he or she thereby waives his or her right to proceed under 35 U.S.C. 145.

(d) For an

ex parte

reexamination proceeding filed under § 1.510 for a patent that issues from an original application filed in the United States on or after November 29, 1999, and for an

inter partes

reexamination proceeding filed under § 1.913, no remedy by civil action under 35 U.S.C. 145 is available.

18. Sections 1.304(a)(1) and (a)(2) are proposed to be revised to read as follows:

§ 1.304

Time for appeal or civil action.

(a)(1) The time for filing the notice of appeal to the U.S. Court of Appeals for the Federal Circuit (§ 1.302) or for commencing a civil action (§ 1.303) is two months from the date of the decision of the Board of Patent Appeals and Interferences. If a request for rehearing or reconsideration of the decision is filed within the time period provided under § 1.197(b), § 1.658(b), or § 1.979(a), the time for filing an appeal or commencing a civil action shall expire two months after action on the request. In interferences the time for filing a cross-appeal or cross-action expires:

(i) 14 days after service of the notice of appeal or the summons and complaint; or

(ii) Two months after the date of decision of the Board of Patent Appeals and Interferences, whichever is later.

(2) The time periods set forth in this section are not subject to the provisions of §§ 1.136, 1.550(c), 1.956, or § 1.645 (a) or (b).

19. The heading for Subpart D is proposed to be revised to read as follows:

Subpart D—

Ex Parte

Reexamination of Patents

20. Section 1.501 is proposed to be amended by revising its heading and paragraph (a) to read as follows:

§ 1.501

Citation of prior art in patent and

ex parte

reexamination files.

(a) At any time during the period of enforceability of a patent, any person may cite to the Office in writing prior art consisting of patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability of any claim of the patent. If the citation is made by the patent owner, the explanation of pertinency and applicability may include an explanation of how the claims differ from the prior art. Such citations shall be entered in the patent file except as set forth in this section. Citations by the patent owner under § 1.555 and by an

ex parte

reexamination requester under either § 1.510 or § 1.535 will be entered in the reexamination file during a reexamination proceeding. The entry in the patent file of citations submitted after the date of an order to reexamine pursuant to § 1.525 by persons other than the patent owner, or an

ex parte

reexamination requester under either § 1.510 or § 1.535, will be delayed until the reexamination proceeding has been terminated. See § 1.902 for processing of prior art citations in patent files and the reexamination file during an

inter partes

reexamination proceeding filed under § 1.913.

21. The undesignated center heading following § 1.501 is proposed to be revised to read as follows:

Request for

Ex Parte

Reexamination

22. Section 1.510 is proposed to be amended by revising its heading and the text of paragraphs (a) and (b)(4) to read as follows:

§ 1.510

Request for ex parte reexamination.

(a) Any person may, at any time during the period of enforceability of a patent, file a request for an

ex parte

reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501. The request must be accompanied by the fee for requesting reexamination set in § 1.20(c)(1).

(b) Any request for

ex parte

reexamination must include the following parts:

(4) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.

23. Section 1.515 is proposed to be revised to read as follows:

§ 1.515

Determination of the request for ex parte reexamination.

(a) Within three months following the filing date of a request for an

ex parte

reexamination, an examiner will consider the request and determine whether or not a substantial new question of patentability affecting any claim of the patent is raised by the request and the prior art cited therein, with or without consideration of other patents or printed publications. The examiner's determination will be based on the claims in effect at the time of the determination and will become a part of the official file of the patent and will be mailed to the patent owner at the

address as provided for in § 1.33(c) and to the person requesting reexamination.

(b) Where no substantial new question of patentability has been found, a refund of a portion of the fee for requesting

ex parte

reexamination will be made to the requester in accordance with § 1.26(c).

(c) The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner's determination refusing

ex parte

reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.

24. Section 1.520 is proposed to be revised to read as follows:

§ 1.520

Ex parte

reexamination at the initiative of the Director.

The Director, at any time during the period of enforceability of a patent, may determine whether or not a substantial new question of patentability is raised by patents or printed publications which have been discovered by the Director or which have been brought to the Director's attention even though no request for reexamination has been filed in accordance with § 1.510 or § 1.913. The Director may initiate

ex parte

reexamination without a request for reexamination pursuant to § 1.510 or § 1.913. Normally requests from outside the Office that the Director undertake reexamination on his own initiative will not be considered. Any determination to initiate

ex parte

reexamination under this section will become a part of the official file of the patent and will be mailed to the patent owner at the address as provided for in § 1.33(c).

25. The undesignated center heading following § 1.520 is proposed to be revised to read as follows:

Ex Parte

Reexamination

26. Section 1.525 is proposed to be revised to read as follows:

§ 1.525

Order for

ex parte

reexamination.

(a) If a substantial new question of patentability is found pursuant to § 1.515 or § 1.520, the determination will include an order for

ex parte

reexamination of the patent for resolution of the question. If the order for

ex parte

reexamination resulted from a petition pursuant to § 1.515(c), the

ex parte

reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.515(a).

(b) The notice published in the

Official Gazette

under § 1.11(c) will be considered to be constructive notice and

ex parte

reexamination will proceed.

27. Section 1.530 is proposed to be amended by revising its heading and paragraphs (a), (b), (c) and (d), introductory text, to read as follows:

§ 1.530

Statement by patent owner in

ex parte

reexamination; amendment by patent owner in

ex parte

reexamination or inter partes reexamination.

(a) Except as provided in § 1.510(e), no statement or other response by the patent owner in an

ex parte

reexamination proceeding shall be filed prior to the determinations made in accordance with § 1.515 or § 1.520. If a premature statement or other response is filed by the patent owner it will not be acknowledged or considered in making the determination.

(b) The order for

ex parte

reexamination will set a period of not less than two months from the date of the order within which the patent owner may file a statement on the new question of patentability including any proposed amendments the patent owner wishes to make.

(c) Any statement filed by the patent owner shall clearly point out why the subject matter as claimed is not anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any reasonable combinations. Where the reexamination request was filed by a third-party requester, any statement filed by the patent owner must be served upon the

ex parte

reexamination requester in accordance with § 1.248.

(d)

Amendments in reexamination proceedings.

Amendments in both

ex parte

and

inter partes

reexamination proceedings are made by filing a paper, in compliance with paragraph (d)(5) of this section, directing that specified amendments be made.

28. Section 1.535 is proposed to be revised to read as follows:

§ 1.535

Reply by third-party requester in

ex parte

reexamination.

A reply to the patent owner's statement under § 1.530 may be filed by the

ex parte

reexamination requester within two months from the date of service of the patent owner's statement. Any reply by the

ex parte

requester must be served upon the patent owner in accordance with § 1.248. If the patent owner does not file a statement under § 1.530, no reply or other submission from the

ex parte

reexamination requester will be considered.

29. Section 1.540 is proposed to be revised to read as follows:

§ 1.540

Consideration of responses in

ex parte

reexamination.

The failure to timely file or serve the documents set forth in § 1.530 or in § 1.535 may result in their being refused consideration. No submissions other than the statement pursuant to § 1.530 and the reply by the

ex parte

reexamination requester pursuant to § 1.535 will be considered prior to examination.

30. Section 1.550 is proposed to be revised to read as follows:

§ 1.550

Conduct of

ex parte

reexamina

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