Rules of Practice in Patent Cases; Reexamination Proceedings

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. 95-0720187-5187-01]

RIN 0651-AA79

Rules of Practice in Patent Cases; Reexamination Proceedings

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The Patent and Trademark Office (Office) is proposing to amend

its rules of practice in patent cases to provide revised procedures for

the reexamination of patents. H.R. 1732 proposes to authorize the

extension of reexamination proceedings as a means for improving the

quality of United States patents. The Office intends, through this

proposed amendment of its rules, to provide patent owners and the

public with guidance on the procedures the Office would follow in

conducting reexamination proceedings.

DATES: A public hearing will be held on Wednesday, September 20, 1995,

at the Stouffer Renaissance Crystal City Hotel, 2399 Jefferson Davis

Highway, Arlington, Virginia, 22202 at 9:30 a.m. Those wishing to

present oral testimony must request an opportunity to do so no later

than September 14, 1995. Written comments must be submitted on or

before September 22, 1995.

ADDRESSES: Written comments concerning the rule changes should be

addressed to the Assistant Commissioner for Patents, Box DAC,

Washington, D.C. 20231, marked to the attention of Gerald A. Dost,

Senior Legal Advisor, Special Program Law Office, Crystal Park 1, Suite

520. In addition, written comments may also be sent by facsimile

transmission to (703) 308-6919 with a confirmation copy mailed to the

above address, or by electronic mail messages over the Internet to

[email protected].

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Written comments concerning reexamination rule matters will be

available for public inspection on October 2, 1995, in Room 520 of

Crystal Park One, 2011 Crystal Drive, Arlington, Virginia.

FOR FURTHER INFORMATION CONTACT: Gerald A. Dost or Lawrence E. Anderson

by telephone at (703) 305-9285, by electronic mail at

[email protected], or by mail to Gerald A. Dost to his attention

addressed to the Assistant Commissioner for Patents, Box DAC,

Washington, D.C. 20231.

SUPPLEMENTARY INFORMATION:

Background

This proposed rulemaking sets forth distinct procedures directed

towards determining and improving the quality and reliability of United

States patents. The procedures are proposed to provide for the expanded

reexamination of patents as proposed in H.R. 1732.

Discussion of General Issues Involved

The proposals are in response to H.R. 1782 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 rules proposed herein, third party

requesters will have greater opportunity to participate in

reexamination proceedings in keeping with the spirit and intent of the

proposed law. At the same time, participation will be limited to

minimize the costs and other effects of reexamination requests on

patentees.

If H.R. 1732 is amended during the legislative process, the final

rules will comply with this legislation as enacted. If H.R. 1732 is not

enacted, the proposed rules for expanded reexamination of patents would

be withdrawn.

Because reexamination filed before the proposed law takes effect

will continue to be governed by 37 CFR 1.501-1.570, to avoid confusion

between the new and old rules the newly proposed reexamination rules

have been numbered 37 CFR 1.901-1.997.

Regarding the reexamination fee, 35 U.S.C. 41(d) requires the

Commissioner to set the fee for reexamination at a level which will

recover the estimated average cost to the Office. The estimated average

cost is $4,500 per patent owner requested reexamination and $11,000 for

third party requested reexaminations. The difference in price takes

into account the estimate that the examiner will spend twice the amount

of time examining a case where a third party requester is present and

additional costs incurred during the appellate stages incident to

additional processing steps required in the third party proceedings.

Discussion of the Major Specific Issues Involved

The proposed rules relating to reexamination proceedings are

directed to the procedures set forth in proposed Chapter 30 of Title 35

of the United States Code (35 U.S.C. 301-307). This proposed Chapter

provides for the citation of prior art in patents, filing of requests

for reexamination, decisions on such requests, reexamination and appeal

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

termination of the reexamination proceedings.

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

includes the reexamination Secs. 1.901-1.997.

Section 1.6 is proposed to be amended so that paragraph (d)(5)

includes Sec. 1.913, which related to the exception of the use of

facsimile transmission for filing the request for reexamination.

Section 1.11 is proposed to be amended so that paragraph (c), which

relates to reexaminations at the initiative of the Commissioner,

includes the reference to reexamination Sec. 1.929.

Section 1.17 is proposed to be amended so that paragraph (l)

reflects the fact that in the case of reexaminations filed after

January 1, 1996, petitions for revival of a reexamination proceeding

terminated for an unavoidable failure to respond require the fees of

$55.00 for a small entity and $110.00 for other than small entity.

Also, Sec. 1.17 is proposed to be amended so that paragraph (m)

reflects the fact that in the case of reexaminations filed after

January 1, 1996, petitions for revival of a reexamination proceeding

terminated for an unintentional failure to respond require the fees of

$605.00 for a small entity and $1,1210.00 for other than small entity.

The Office has proposed an increase in the fee set by Sec. 1.17(m). See

``Revision of Patent and Trademark Fees'' published in the Federal

Register at 60 FR 27934 (May 26, 1995) and in the Patent and Trademark

Office Official Gazette at 1174 Off. Gaz. Pat. Office 134 (May 30,

1995).

Section 1.20 is proposed to be amended so that paragraph (c)

reflects the fact that in the case of reexaminations filed after

January 1, 1996, there is a two tier fee scale in which patent owner

requesters will be charged $4,500 and third party requesters will be

charged $11,000.

Section 1.25 is proposed to be amended so that paragraph (b), which

relates to requests for reexaminations, includes the reference to

reexamination Sec. 1.913.

Section 1.26 is proposed to be amended so as to reflect that in the

case of reexaminations filed after January 1, 1996, a refund of

seventy-five percent (75%) of the fee paid for filing the request for

reexamination will be made to the requester.

Section 1.112 is proposed to be amended so that the last sentence

reflects the fact that in the case of reexamination filed after January

1, 1996, the examiner may close prosecution prior to making the action

final. Section 1.113, which provides for a final rejection or action in

a reexamination proceeding, is proposed to be amended so that its

application is limited to applicants and patent owners in

reexaminations filed before January 1, 1996. For reexaminations filed

after January 1, 1996, the new reexamination rules will apply.

Section 1.115, which provides for amendments by the patent owner in

a reexamination proceeding, is proposed to be amended so that its

application is limited to applicants and patent owners in

reexaminations filed before January 1, 1996. For reexaminations filed

after January 1, 1996, the new reexamination rules will apply.

Section 1.116, which provides for amendments after final action in

reexamination proceedings, is proposed to be amended so that its

application is permissible after an action closing prosecution for

patent owners in reexaminations filed on or after January 1, 1996.

Also, for clarity, the rule is amended to provide that for

reexaminations filed after January 1, 1996, no appeal is permitted

until a right of appeal notice has been issued.

Section 1.136, which provides for filing of timely responses with

petitions and fee for extension of time and extensions of time for

cause, is amended to make it clear that for reexamination proceedings

filed on or after January 1, 1996, Sec. 1.957 is controlling for

extensions of time.

Section 1.137, which provides for revival of abandoned applications

or lapsed patents, is proposed to be amended to change the title and

add new paragraphs (g) and (h). Paragraph (f) is proposed to be

utilized for provisional applications. Paragraph (g) is proposed to be

added to provide for revival of unavoidably terminated proceedings for

reexamination proceedings filed before January 1,

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1996. Paragraph (h) is proposed to be added to make it clear that for

reexamination proceedings filed on or after January 1, 1996, Sec. 1.958

is controlling.

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

reexaminations filed before January 1, 1996. For reexamination

proceedings filed on or after January 1, 1996, Sec. 1.959 is

controlling.

Section 1.192, which provides two months from the date of the

Notice of Appeal for the patent owner to file an appeal brief in a

reexamination proceeding, is proposed to be amended so as to be

applicable to reexaminations filed before January 1, 1996. For

reexamination proceedings filed on or after January 1, 1996, Sec. 1.965

is controlling.

Section 1.193, which provides for the Examiner's answer and reply

brief, is proposed to be amended so as to be applicable to

reexaminations filed before January 1, 1996. For reexamination

proceedings filed on or after January 1, 1996, Secs. 1.969 and 1.971

are controlling.

Section 1.194, which provides for the oral hearing, is proposed to

be amended so as to be applicable to reexaminations filed before

January 1, 1996. For reexamination proceedings filed on or after

January 1, 1996, Sec. 1.973 is controlling.

Section 1.195, which provides for the affidavits or declarations

after appeal, is proposed to be amended so as to be applicable to

reexaminations filed before January 1, 1996. For reexamination

proceedings filed on or after January 1, 1996, Sec. 1.975 is

controlling.

Section 1.196, which provides for the decision of the Board of

Patent Appeals and Interferences, is proposed to be amended so as to be

applicable to reexaminations filed before January 1, 1996. For

reexamination proceedings filed on or after January 1, 1996, Sec. 1.977

is controlling.

Section 1.197, which provides for action following the decision, is

proposed to be amended so as to be applicable to reexaminations filed

before January 1, 1996. For reexamination proceedings filed on or after

January 1, 1996, Sec. 1.979 is controlling.

Section 1.198, which provides for reopening after the decision, is

proposed to be amended so as to be applicable to reexaminations filed

before January 1, 1996. For reexamination proceedings filed on or after

January 1, 1996, Sec. 1.981 is controlling.

Section 1.301, which provides for appeal by the owner of a patent

in reexamination proceedings to the U.S. Court of Appeals for the

Federal Circuit, is proposed to be amended so as to be applicable to

reexaminations filed before January 1, 1996. For reexamination

proceedings filed on or after January 1, 1996, Sec. 1.983 is

controlling.

Section 1.303, which provides for remedy by civil action under 35

U.S.C. 145 for the owner of a patent in reexamination proceedings, is

proposed to be amended so as to be applicable to reexaminations filed

before January 1, 1996. For reexamination proceedings filed on or after

January 1, 1996, Sec. 1.993 is controlling.

Section 1.304 which provides for time for appeal or civil action,

is proposed to be amended so as to refer also to Sec. 1.957.

The title to Subpart D is proposed to be amended to provide that

the reexamination rules in this part apply only to reexamination

proceedings filed before January 1, 1996.

The proposed title to Subpart H provides that the reexamination

rules in this part apply only to reexamination proceedings filed on or

after January 1, 1996.

Proposed Sec. 1.901 provides a system for citation of patents and

printed publications to the Office for placement in the patent file by

an person during the period of enforceability of the patent in

accordance with 35 U.S.C. 301. The section provides for citations

limited to patents and printed publications when the person making the

citation states the pertinency and applicability of the citation to the

patent and the bearing the citation has on the patentability of at

lease one claim of the patent. The rule provides that a citation made

by the patent owner may include an explanation of how the claims differ

from the prior art cited. Any citations which include items other than

patents and printed publications will not be entered in the patent

file. This does not, of course, limit in any manner the kinds and types

of information which can be relied upon in protests against pending

patent applications, whether such be original applications or reissue

applications. The term ``period of enforceability of a patent''

includes any period for which recovery can be had for infringement.

Under usual circumstances, this would be the term of the patent plus

the six years provided by 35 U.S.C. 286.

Proposed Sec. 1.902 provides for the processing of prior art

citations during a reexamination proceeding.

Proposed Sec. 1.903 provides for the service of papers on parties.

Proposed Sec. 1.904 provides that the notices published in the

Official Gazette will be considered to be constructive notice.

Proposed Sec. 1.905 provides for submission of papers by the

public.

Proposed Sec. 1.906 covers the scope of reexamination in a

reexamination proceeding. While it is not intended that the examiners

will routinely complete a new search when conducting reexamination, the

examiners will be free to, and will, very likely, conduct additional

searches and cite and apply additional prior patents and publications

when they consider it is appropriate and beneficial to do so. Insofar

as the actual reexamination is concerned, 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, except for the best mode requirement.

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 questions relating to matters other than those indicated

in paragraphs (a) and (b) of this section will not be resolved in a

reexamination proceeding, but will be noted by the examiner as being an

open question in the record. Patent owners could then file a reissue

application if they wish such questions to be resolved.

Proposed Sec. 1.907 sets forth when reexamination is prohibited.

Once an order to reexamine has been issued under Sec. 1.931, neither

the patent owner nor the third party requester, if any, nor privies of

either, may file a subsequent request for reexamination of the patent

until a reexamination certificate is issued under Sec. 1.997, unless

authorized by the Commissioner. Once a final decision has been entered

against a party in a civil action arising in whole or in part under 28

U.S.C. 1338 in which the party did not sustain its burden of proving

invalidity of any patent claim in suit, then neither that party nor its

privies may thereafter request 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 reexamination requested by that

party or its privies on the basis of such issues may not thereafter be

maintained by the Office.

Proposed Sec. 1.909 provides for estoppel of their party requesters

from previous reexamination proceedings. A third party requester, or

its privy, who,

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during a reexamination proceeding, has filed a notice of appeal to the

Court of Appeals for the Federal Circuit, or who has participated as a

party to an appeal by the patent owner, under the provisions of 35

U.S.C. 141 to 144, is estopped from later asserting, in a subsequent

reexamination proceeding, the invalidity of any claim determined to be

patentable on appeal on any ground which the third party requester, or

its privy, raised or could have raised during the prior reexamination

proceeding. A third party requester, or its privy, is deemed not to

have participated as a party to an appeal by the patent owner unless,

within twenty days after the patent owner has filed notice of appeal,

the third party (or its privy) files notice with the Commissioner

electing to participate.

Proposed Sec. 1.911 provides factors for consideration of privies

and persons bound. For the purposes of Sec. 1.907, a determination of

whether person is a privy with respect to the patent owner shall

include consideration of whether there is: (1) a mutual, concurrent or

successive relationship to the same property rights in the patent

involved in the reexamination proceeding; or (2) representation of the

interests of the patent owner concerning the patent. For the purposes

of Secs. 1.907 and 1.909, a determination of whether a person is a

privy with respect to a third party requester shall include

consideration of whether there is: (1) a mutual, concurrent or

successive relationship to the same property rights which are or may be

affected by and/or infringe the patent involved in the reexamination

proceeding; or (2) representation of the interests of the other party

which are or may be affected by and/or potentially infringe the patent.

For the purposes of Secs. 1.907 and 1.909, a person who is not a party

to the reexamination proceeding but who controls or substantially

participates in the control of the presentation of the reexamination

proceeding on behalf of a party is bound by the determination of issues

decided as though he or she were a named party. To have control of the

presentation requires that person to have effective choice as to the

legal theories and/or grounds of rejection or defenses to be advanced

on behalf of the party to the reexamination proceeding. Under this

section a party would be precluded from hiring another law firm and

having that firm file a subsequent reexamination request in order to

avoid the prohibitions of 35 U.S.C. 307(c) or 308.

Proposed Sec. 1.913 sets forth procedures for any person to request

reexamination in accordance with 35 U.S.C. 302 and limits the period

for such request to the period of enforceability of the patent for

which the request is filed.

Proposed Sec. 1.915(a) requires payment of the fee for requesting

reexamination. Paragraph (b) of new Sec. 1.915 indicates what each

request for reexamination must include. Paragraph (c) of new Sec. 1.915

covers amendments which a patent owner can propose. Such amendments can

accompany a request for reexamination by the patent owner. Paragraph

(d) indicates that requests for reexamination may be filed by attorneys

or agents on behalf of a requester, but it is noted that the real party

in interest must be identified in accordance with Sec. 1.915(b)(10).

Proposed Sec. 1.917 indicates what will be done if the request is

incomplete.

Proposed Sec. 1.919 indicates the date on which the entire fee is

received will be considered to be the date of the request for

reexamination.

Proposed Sec. 1.921 provides that prior art submissions by the

third party requester filed after the reexamination order shall be

limited solely to prior art which is used to rebut a finding a fact by

the examiner or a response of the patent owner.

Proposed Sec. 1.923 relates to a determination as to whether the

request has presented a substantial new question of patentability under

35 U.S.C. 303 and requires that the determination be made within 3

months of the filing date of the request.

Proposed Sec. 1.925 refers to the refund provisions.

Proposed Sec. 1.927 provides for review by petition to the

Commissioner of any decision refusing reexamination.

Proposed Sec. 1.929 provides for reexamination at the initiative of

the Commissioner under the provisions of the last sentence of paragraph

(a) of 35 U.S.C. 303.

Proposed Sec. 1.931 provides for ordering reexamination where a

substantial new question of patentability has been found pursuant to

Secs. 1.923 or 1.929. Under paragraph (b), the only limitation placed

on the selection of the examiner by the Office is that the same

examiner whose decision was reversed on petition ordinarily will not

conduct the reexamination.

Proposed Sec. 1.933 covers the duty of disclosure by a patent owner

in a reexamination proceeding involving the owner's patent.

Proposed Sec. 1.935 indicates that the initial Office action

normally accompanies the reexamination order.

Proposed Sec. 1.937 provides that in accordance with 35 U.S.C.

305(c), unless otherwise provided by the Commissioner for good cause,

all reexamination proceedings will be conducted with special dispatch.

Paragraph (b) covers the basic items relating to the conduct of

reexamination proceedings.

Proposed Sec. 1.939 provides that no paper shall be filed before

the first Office action.

Proposed Sec. 1.941 provides for proposed amendments provided for

the second sentence of 35 U.S.C. 305. Amendments submitted by the

patent owner cannot enlarge the scope of a claim in the patent.

Amendments will not be effectively entered into the patent until the

certificate under Sec. 1.997 and 35 U.S.C. 307 is issued.

Proposed Sec. 1.943 provides a page limit for responses and briefs

of 50 pages. Prior art references and Appendix of claims would not be

included in this total.

Proposed Sec. 1.945 provides that a patent owner will be given at

least thirty days to respond to any Office action. Although problems

may arise in certain cases and extensions of time may be granted, it is

felt that relatively short response times are necessary in order to

process reexaminations with ``special dispatch.''

Proposed Sec. 1.9347 provides that in accordance with 35 U.S.C.

305(b)(3), if a patent owner files a response to any Office action on

the merits, the third party requester may once file written comments.

Proposed Sec. 1.949 provides when prosecution may be closed.

Proposed Sec. 1.951 provides for responses by the parties after an

Office action closing prosecution. The responses and time periods

provided for by paragraphs (a) and (b) may run concurrently.

Proposed Sec. 1.953 provides that, following the responses or

expiration of the time for response in Sec. 1.951, the examiner may

issue a right of appeal notice which shall include a final rejection 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 Sec. 1.955 relates to the conduct of interviews in

reexamination proceedings. The third party requested is permitted to

attend all interviews. Interviews are permitted before the first Office

action only when initiated by the examiner.

Proposed Sec. 1.957 relates to extensions of time and termination

of

[[Page 41039]]

reexamination proceedings. In circumstances where the response by the

patent owner is not required by the examiner and is merely

discretionary, such as when all claims are allowed or their

patentability is confirmed and the patent owner is merely given the

opportunity for comment, such a failure to comment is not type of lack

of response contemplated by paragraphs (b) and (c) and, therefore, not

grounds for termination or limiting prosecution.

Proposed Sec. 1.958 relates to revival of terminated proceedings.

Proposed Sec. 1.959 relates to appeals and cross appeals to the

Board of Patent Appeals and Interferences. Both patent owners and third

party requesters are given appeal rights in accordance with 35 U.S.C.

306.

Proposed Sec. 1.961 relates to time of transfer of the jurisdiction

of the appeal over to the Board of Patent Appeals and Interferences.

Proposed Sec. 1.962 relates to the definition of appellant and

respondent.

Proposed Sec. 1.963 relates to the time periods for filing briefs.

Proposed Sec. 1.965 relates to the appellant brief.

Proposed Sec. 1.967 relates to the respondent brief.

Proposed Sec. 1.969 relates to the examiner's answer.

Proposed Sec. 1.971 relates to the reply brief.

Proposed Sec. 1.973 relates to the oral hearing.

Proposed Sec. 1.975 relates to affidavits or declarations after

appeal.

Proposed Sec. 1.977 relates to the decision by the Board of Patent

Appeals and Interferences.

Proposed Sec. 1.979 relates to the procedures following the

decision by the Board of Patent Appeals and Interferences.

Proposed Sec. 1.981 relates to the procedure for reopening

prosecution following the decision by the Board of Patent Appeals and

Interferences.

Proposed Sec. 1.983 relates to appeals to the United States Court

of Appeals for the Federal Circuit, in accordance with 35 U.S.C. 306.

Under H.R. 1732, civil actions under 35 U.S.C. 145 are not permitted in

reexamination proceedings filed on or after January 1, 1996.

Proposed Sec. 1.985 relates to notification or prior or concurrent

proceedings.

Proposed Sec. 1.987 relates to the stay of concurrent proceedings.

Decisions as to whether to delay or combine cases will be made on a

case-by-case basis to minimize delays and to protect the interests of

all parties concerned.

Proposed Sec. 1.989 relates to the merger of concurrent

proceedings.

Proposed Sec. 1.991 relates to the merger of a concurrent reissue

application and a reexamination proceeding.

Proposed Sec. 1.993 relates to the stay of a concurrent

interference and reexamination proceeding.

Proposed Sec. 1.995 relates to a third party requester's

participation rights being preserved in merged proceeding.

Proposed Sec. 1.997 concerns the issuance of the reexamination

certificate under 35 U.S.C. 307 after the conclusion of reexamination

proceedings. 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 claim

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 or other Office proceeding relating to

a patent in which such a certificate has been issued will be

terminated.

This provides a degree of assurance to the public that patents with

all the claims canceled via reexamination proceedings will not again be

asserted. It is intended that copies of the certificate will continue

to be part of subsequently sold copies of the patent.

Other Considerations

The proposed rule changes are in conformity with the requirements

of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive

Order 12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et

seq. It has been determined that this rulemaking is not significant for

the purposes of Executive Order 12866.

The Assistant General Counsel for Legislation and Regulation of the

Department of Commerce has certified to the Chief Counsel for Advocacy,

Small Business Administration, that these proposed rule changes will

not have a significant economic impact on a substantial number of small

entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal

impacts of these proposed changes are to expand the grounds for

requesting a reexamination and to permit the third party to participate

more extensively during the reexamination proceeding as well as having

appeal rights.

The Office has also determined that this notice has no Federalism

implications affecting the relationship between the National Government

and the States as outlined in Executive Order 12612.

These rule changes contain collection of information requirements

subject to the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.,

which is currently approved by the Office of Management and Budget

under Control No. 0651-0033. The public reporting burden for the

collection of information for requests for reexamination is estimated

to average 2.0 hours each including the time for reviewing

instructions, searching existing data sources, gathering and

maintaining the data needed, and completing and reviewing the

collection of information. Send comments regarding this burden estimate

or any other aspect of this collection of information, including

suggestions for reducing this burden to the Office of System Quality

and Enhancement, Patent and Trademark Office, Washington, D.C. 20231,

and to the Office of Information and Regulatory Affairs, Office of

Management and Budget, Washington, DC 20503 (ATTN: Paperwork Reduction

Act Project 0651-0033).

Notice is hereby given that pursuant to the authority granted to

the Commissioner of Patents and Trademarks by 35 U.S.C. 6, the Patent

and Trademark Office proposed to amend Title 37 of the Code of Federal

Regulations as set forth below.

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 Commissioner of Patents and Trademarks by 35 U.S.C. 6,

Part I of Title 37 CFR is proposed to be 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:

Sec. 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, Secs. 1.31 to 1.378; of international applications in

Subpart C, Secs. 1.401 to 1.499; or reexamination of patents filed

before January 1, 1996, in Subpart D,

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1.501 to 1.570, and of reexaminations filed on or after January 1,

1996, in Subpart H, Secs. 1.901-1.997; of interferences in Subpart E;

Secs. 1.601 to 1.690; of extension of patent term in Subpart F,

Secs. 1.710 to 1.785; and of trademark applications Secs. 2.11 to

2.189.

* * * * *

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

Sec. 1.6 Receipt of correspondence.

* * * * *

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

* * * * *

4. Section 1.11(c) is proposed to be revised to read as follows:

Sec. 1.11 Files open to the public.

* * * * *

(c) All requests for reexamination for which the fee under 1.20(c)

has been paid, will be announced in the Official Gazette. Any

reexaminations at the initiative of the Commissioner pursuant to 1.520

or 1.929 will also be announced in the Official Gazette. The

announcement shall include at least the date of the request, if any,

the reexamination request control number of the Commissioner initiated

order control number, patent number, title, class and subclass, name of

the inventor, name of the patent owner of record, and the examining

group to which the reexamination is assigned.

* * * * *

5. Section 1.17 (l) and (m) are proposed to be revised to read as

follows:

Sec. 1.17 Patent application processing fees.

* * * * *

(l) For filing a petition:

(1) For the revival of an unavoidably abandoned application under

35 U.S.C. 111, 133, 364, or 371,

(2) For delayed payment of the issue fee under 35 U.S.C. 151, or,

(3) For the revival of an unavoidably terminated reexamination

proceeding:

By a small entity (Sec. 1.9(f))

55.00

By other than a small entity

110.00

(m) For filing a petition:

(1) For revival of an unintentionally abandoned application,

(2) For the unintentionally delayed payment of the fee for issuing

a patent, or

(3) For reexamination proceedings filed on or after January 1,

1996, for the revival of an unintentionally terminated reexamination

proceeding:

By a small entity (Sec. 1.9(f))

605.00

By other than a small entity

1,210.00

* * * * *

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

Sec. 1.20 Post issuance fees.

* * * * *

(c) For filing a request for reexamination (Sec. 1.915(a)):

By a patent owner

$4,500.00

By a third party requester

$11,000.00

* * * * *

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

Sec. 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 Secs. 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 charge to a

deposit account the fee for a request for reexamination pursuant to

Sec. 1.510 or Sec. 1.915 and any other fees required in a reexamination

proceeding in a patent may also be filed with the request for

reexamination. 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.

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

Sec. 1.26 Refunds.

* * * * *

(c) If the Commissioner decides not to institute a reexamination

proceeding, for reexaminations filed on or after January 1, 1996, a

refund of seventy-five percent (75%) of the fee paid for filing the

request for reexamination will be made to the requester. Reexamination

requesters should indicate whether any refund should be made by check

or by credit to a deposit account.

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

Sec. 1.112 Reconsideration.

After response by applicant or patent owner (Sec. 1.111), the

application or patent under reexamination will be reconsidered and

again examined. The applicant or patent owner will be notified if

claims are rejected, or objections or requirements made, in the same

manner as after the first examination. Applicant or patent owner may

respond to such Office action in the same manner provided in

Sec. 1.111, with or without amendment. Any amendments after the second

Office action must ordinarily be restricted to the rejection or to the

objections or requirements made. The application or patent under

reexamination will be again considered, and so on repeatedly, unless

the examiner has indicated that the action is final or is an action

closing prosecution.

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

Sec. 1.113 Final rejection or action.

(a) On the second or any subsequent examination or consideration

the rejection or other action may be made final, whereupon applicant's

or (for reexaminations filed before January 1, 1996) patent owner's

response is limited to appeal in the case of rejection of any claim

(Sec. 1.191), or to amendment as specified in Sec. 1.116. Petition may

be taken to the Commissioner in the case of objections or requirements

not involved in the rejection of any claim (Sec. 1.181). Response 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

response to a final rejection or action must comply with any

requirements or objection as to form.

* * * * *

11. Section 1.115 is proposed to be revised to read as follows:

Sec. 1.115 Amendment.

The applicant may amend before or after the first examination and

action and also after the second or subsequent examination or

reconsideration as specified in Sec. 1.112 or when and as specifically

required by the examiner. For reexaminations filed before January 1,

1996, the patent owner may amend in accordance with Secs. 1.510(e) and

1.530(b) prior to reexamination, and during reexamination proceedings

in accordance with Secs. 1.112 and 1.116. For reexaminations filed on

or after January 1, 1996, the patent owner may amend in accordance with

Sec. 1.915(c) prior to reexamination, and during reexamination

proceedings in accordance with Secs. 1.941 and 1.945.

12. Section 1.116(a) is proposed to be revised to read as follows:

Sec. 1.116 Amendments after final action.

(a) After final rejection or action (Sec. 1.113) or action closing

prosecution (Sec. 1.949) for reexaminations filed on or after January

1, 1996, amendments may be made cancelling claims or complying with any

requirement of form which has been made. Amendments presenting

[[Page 41041]]

rejected claims in better form for consideration on appeal may be

admitted. The admission of, or refusal to admit, any amendment after

final rejection, and any proceedings relative thereto, shall 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 Sec. 1.135. Notwithstanding the above, for

reexamination proceedings filed on or after January 1, 1996, no appeal

may be had until a right of appeal notice has been issued pursuant to

Sec. 1.953.

* * * * *

13. Section 1.136(a)(2) and (b) are proposed to be revised to read

as follows:

Sec. 1.136 Filing of timely responses with petition and fee for

extension of time and extensions of time for cause.

(a) * * *

(2) The date on which the response, the petition, and the fee have

been filed is the date of the response and also 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. In no case may an applicant respond 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 Sec. 1.136(b) for extensions of time

relating to proceedings pursuant to Sec. 1.193(b), 1.194, 1.196 or

1.197. See Sec. 1.304 for extension of time to appeal to the U.S. Court

of Appeals for the Federal Circuit or to commence a civil action. See

Sec. 1.550(c) for extension of time in reexamination proceedings filed

before January 1, 1996, Sec. 1.957 for extension of time in

reexamination proceedings filed on or after January 1, 1996, and

Sec. 1.645 for extension of time in interference proceedings.

(b) When a response with petition and fee for extension of time

cannot be filed pursuant to paragraph (a) of this section, the time for

response will be extended only for sufficient cause and for a

reasonable time specified. Any request for such extension must be filed

on or before the day on which action by the applicant is due, but in no

case will the mere filing of the request effect any extension. In no

case can any extension carry the date on which response to an Office

action is due beyond the maximum time period set by statute or be

granted when the provisions of paragraph (a) of this section are

available. See Sec. 1.304 for extension of time to appeal to the U.S.

Court of Appeals for the Federal Circuit or to commence a civil action,

Sec. 1.645 for extension of time in interference proceedings,

Sec. 1.550(c) for extension of time in reexamination proceedings filed

before January 1, 1996, and Sec. 1.957 for extension of time in

reexamination proceedings filed on or after January 1, 1996.

14. Section 1.137 (g) and (h) are proposed to be added and the

Section heading revised to read as follows:

Sec. 1.137 Revival of abandoned application, lapsed patent or

terminated reexamination.

* * * * *

(g) A reexamination proceeding filed before January 1, 1996, which

is terminated for failure to prosecute may be revised as a pending

proceeding if it is shown to the satisfaction of the Commissioner that

the delay was unavoidable. A petition to revive an unavoidably

terminated reexamination proceeding must be promptly filed after the

patent owner is notified of, or otherwise becomes aware of, the

termination of the proceeding, and must be accompanied by:

(1) a proposed response to continue prosecution of that proceeding

unless it has been previously filed;

(2) the petition fee as set forth in Sec. 1.17(1); and

(3) a showing that the delay was unavoidable. The showing must be a

verified showing if made by a person not registered to practice before

the Patent and Trademark Office.

(h) For reexamination proceedings filed on or after January 1,

1996, see Sec. 1.958.

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

Sec. 1.191 Appeal to Board of Patent Appeals and Interferences.

(a) Every applicant for a patent or for reissue of a patent, or

every owner of a patent under reexamination (for reexaminations filed

before January 1, 1996), any of the claims of which have been twice

rejected or who has been given a final rejection (Sec. 1.113), may,

upon the payment of the fee set forth in Sec. 1.17(e), appeal from the

decision of the examiner to the Board of Patent Appeals and

Interferences within the time allowed for response. Notwithstanding the

above, for reexamination proceedings filed on or after January 1, 1996,

Sec. 1.959 et seq., is controlling.

* * * * *

16. Section 1.192(a) is proposed to be revised to read as follows:

Sec. 1.192 Applicant's brief.

(a) The appellant shall, within 2 months from the date of the

notice of appeal under Sec. 1.191 in an application, reissue

application, or patent under reexamination (for reexaminations filed

before January 1, 1996), or within the time allowed for response to the

action appealed from, if such time is later, file a brief in

triplicate. The brief must be accompanied by the requisite fee set

forth in Sec. 1.17(f) and must set forth the authorities and arguments

on which the appellant will rely to maintain the appeal. Any arguments

or authorities not included in the brief may be refused consideration

by the Board of Patent Appeals and Interferences. Notwithstanding the

above, for reexamination proceedings filed on or after January 1, 1996,

Sec. 1.965 is controlling.

* * * * *

17. Section 1.193 is proposed to be amended by adding a paragraph

(c) to read as follows:

Sec. 1.193 Examiner's answer.

* * * * *

(c) Notwithstanding the above, for reexamination proceedings filed

on or after January 1, 1996, Secs. 1.969 and 1.971 are controlling.

18. Section 1.194 is proposed to be amended by adding a paragraph

(d) to read as follows:

Sec. 1.194 Oral hearing.

* * * * *

(d) Notwithstanding the above, for reexamination proceedings filed

on or after January 1, 1996, Sec. 1.973 is controlling.

19. Section 1.195 is proposed to be revised to read as follows:

Sec. 1.195 Affidavits or declarations after appeal.

Affidavits, declarations, or exhibits submitted after the case has

been appealed will not be admitted without a showing of good and

sufficient reasons why they were not earlier presented. Notwithstanding

the above, for reexamination proceedings filed on or after January 1,

1996, Sec. 1.975 is controlling.

20. Section 1.196 is proposed to be amended by adding a paragraph

(g) to read as follows:

Sec. 1.196 Decision by the Board of Patent Appeals and Interferences.

* * * * *

(g) Notwithstanding the above, for reexamination proceedings filed

on or after January 1, 1996, Sec. 1.977 is controlling.

21. Section 1.197 is proposed to be amended by adding a paragraph

(d) to read as follows:

[[Page 41042]]

Sec. 1.197 Action following decision.

* * * * *

(d) Notwithstanding the above, for reexamination proceedings filed

on or after January 1, 1996, Sec. 1.979 is controlling.

22. Section 1.198 is proposed to be revised to read as follows:

Sec. 1.198 Reopening after decision.

Cases which have been decided by the Board of Patent Appeals and

Interferences will not be reopened or reconsidered by the primary

examiner except under the provisions of Sec. 1.196 without the written

authority of the Commissioner, and then only for the consideration of

matters not already adjudicated, sufficient cause being shown.

Notwithstanding the above, for reexamination proceedings filed on or

after January 1, 1996, Sec. 1.981 is controlling.

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

Sec. 1.301 Appeal to U.S. Court of Appeals for the Federal Circuit.

Any applicant or any owner of a patent involved in a reexamination

proceeding (filed before January 1, 1996) 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 Patent and Trademark Office file a

written notice of appeal directed to the Commissioner (see Secs. 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.

Notwithstanding the above, for reexamination proceedings filed on or

after January 1, 1996, Sec. 1.983 is controlling.

24. Section 1.303 is proposed to be amended by revising paragraphs

(a) and (b) and adding a new paragraph (d) to read as follows:

Sec. 1.303 Civil action under 35 U.S.C. 145, 146, 306.

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

reexamination proceeding (filed before January 1, 1996) dissatisfied

with the decision of the Board of Patent Appeals and Interferences, and

any party 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 (Sec. 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 Sec. 1.304.

(b) If an applicant in an ex parte case or an owner of a patent

involved in a reexamination proceeding (filed before January 1, 1996)

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 reexamination proceedings filed on or after January 1,

1996, no remedy by civil action under 35 U.S.C. 145 is available.

25. Section 1.304(a)(2) is proposed to be revised to read as

follows:

Sec. 1.304 Time for appeal or civil action.

(a) * * *

(2) The time periods set forth in this section are not subject to

the provisions of Secs. 1.136, 1.550(c), 1.957 or 1.645 (a) or (b).

* * * * *

26. The heading for Subpart D is proposed to be revised to read as

follows:

Subpart D--Reexamination of Patents for Proceedings Filed Before

January 1, 1996 (For Proceeding beginning on or after January 1,

1996, see Subpart H)

27. Subpart H is proposed to be added to read as follows:

Subpart H--Reexamination of Patents for Proceedings Filed On or

After January 1, 1996 (For Proceedings beginning Before January 1,

1996, see Subpart D)

Sec.

1.901 Citation of prior art in patents file.

1.902 Processing of prior art citations in patent files during a

reexamination proceeding.

Reexamination Proceedings

1.903 Service of papers on parties.

1.904 Notice of reexamination in Official Gazette.

1.905 Submission of papers by public.

1.906 Scope of reexamination in reexamination proceeding.

1.907 Reexamination prohibited.

1.909 Estoppel of third party requester from previous reexamination

proceedings.

1.911 Privies and persons bound.

Determining if Reexamination Will Be Ordered

1.913 Persons eligible.

1.915 Content of request.

1.917 Omission of a requirement in the request for reexamination.

1.919 Filing date for request for reexamination.

1.921 Submission of prior art by third party following the order

for reexamination.

1.923 Examiner's consideration of the request for reexamination.

1.925 Partial refund if request is denied.

1.927 Petition to review denial of the request for reexamination.

Reexamination of Patients

1.929 Reexamination at the initiative of the Commissioner.

1.931 Order to reexamine.

Information Disclosure

1.933 Information material to patentability in reexamination

proceedings.

Office Actions and Responses (Before the Examiner)

1.935 Initial Office action normally accompanies order to

reexamine.

1.937 Conduct of Reexamination.

1.939 Unauthorized papers.

1.941 Amendments by patent owner and their effective date.

1.943 Length of responses and briefs.

1.945 Response by patent owner.

1.947 Response by third party requester to patent owner's response.

1.949 Examiner's Office action closing prosecution.

1.951 Responses after Office action closing prosecution.

1.953 Examiner's Right of Appeal Notice.

Interviews

1.955 Interviews in reexamination proceedings.

Extensions of Time and Revival of Proceedings

1.957 Extensions of time and cause for termination in reexamination

proceedings.

1.958 Revival of terminated proceedings.

Appeal to the Board of Patent Appeals and Interferences

1.959 Notice of appeal and cross appeal to Board of Patent Appeals

and Interferences.

1.961 Jurisdiction over appeal.

1.962 Appellant and respondent defined.

1.963 Time for filing briefs.

1.965 Appellant brief.

1.967 Respondent brief.

1.969 Examiner's answer.

1.971 Reply brief.

1.973 Oral hearing.

1.975 Affidavits or declarations after appeal.

1.977 Decision by the Board of Patent Appeals and Interferences.

1.979 Action following decision.

1.981 Reopening after decision.

Appeal to the United States Court of Appeals for the Federal Circuit

1.983 Appeal to the United States Court of Appeals for the Federal

Circuit.

Proceedings Including Same Patient as in Reexamination

1.985 Notification of prior or concurrent proceedings.

1.987 Stay of concurrent proceeding.

1.989 Merger of concurrent reexamination proceedings.

[[Page 41043]]

1.991 Merger of concurrent reissue application and reexamination

proceeding.

1.993 Stay of concurrent interference and reexamination proceeding.

1.995 Third party requester's participation rights preserved in

merged proceedings.

Certificate

1.997 Issuance of reexamination certificate after reexamination

proceedings.

Sec. 1.901 Citation of prior art in patent files.

(a) At any time during the period of enforceability of a patent,

any person may cite to the Patent and Trademark 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 a particular

patent. If the citation is made by the patent owner, the explanation of

pertinency and applicability may include an expansion of how the claims

differ from the prior art.

(b) If the person making the citation wishes his or her identity to

be excluded from the patent file and kept confidential, the citation

papers must be submitted without any identification of the person

making the submission.

(c) Citations of patent or printed publications by the public in

patent files should either:

(1) reflect that a copy of the same has been mailed to the patent

owner at the address as provided in Sec. 1.33(c); or in the event

service is not possible,

(2) be filed with the Office in duplicate.

(d) Except as provided in Sec. 1.902, citations submitted in

accordance with this section will be placed and made of record in the

patent file.

Sec. 1.902 Processing of prior art citations in patent files during a

reexamination proceeding.

Citations by the patent owner in accordance with Sec. 1.933 and by

a reexamination third party requester under Sec. 1.915 will be entered

in the patent file. The entry in the patent file of other citations

submitted after the date of an order to reexamine pursuant to

Sec. 1.931 will be delayed until the reexamination proceeding has been

terminated.

Reexamination Proceedings

Sec. 1.903 Service of papers on parties.

The patent owner and any third party requester will be sent copies

of Office actions issued during the reexamination proceeding. After

filing of a request for reexamination by a third party requester, any

document filed by either the patent owner or the third party requester

must be served on every other party in the reexamination proceeding in

the manner provided in Sec. 1.248. Any document must reflect service or

the document may be refused consideration by the Office. The failure of

the third party requester, if any, to timely file or serve documents

may result in their being refused consideration.

Sec. 1.904 Notice of reexamination in Official Gazette.

A notice of the filing of a reexamination request or initiation of

a Commissioner-ordered reexamination will be published in the Official

Gazette. The notice in the Official Gazette under Sec. 1.11(c) will be

considered to be constructive notice of the reexamination proceeding

and reexamination will proceed.

Sec. 1.905 Submission of papers by public.

Unless specifically provided for, no submissions on behalf of any

third parties other than third party requesters as defined in 35 U.S.C.

100(e) will be considered unless such submissions are in accordance

with Sec. 1.915 or entered in the patent file prior to the date of the

order to reexamine pursuant to Sec. 1.931. Submissions by third

parties, other than third party requesters, filed after the date of the

order to reexamine pursuant to Sec. 1.931, must meet the requirements

of Sec. 1.901 (a) through (c) and will be treated in accordance with

Sec. 1.902.

Sec. 1.906 Scope of reexamination in reexamination proceeding.

(a) Claims in a reexamination proceeding will be examined on the

basis of patents or printed publications and on the basis of the

requirements of 35 U.S.C. 112 except for the best mode requirement.

(b) Claims in a reexamination proceeding must not enlarge the scope

of the claims of the patent.

(c) Questions other than those indicated in paragraphs (a) and (b)

of this section will not be resolved in a reexamination proceeding. If

such questions are raised by the patent owner or third party requester

during a reexamination proceeding, the existence of such questions will

be noted by the examiner in the next Office action, in which case the

patent owner may desire to consider the advisability of filing a

reissue application to have such questions considered and resolved.

Sec. 1.907 Reexamination prohibited.

(a) Once an order to reexamine has been issued under Sec. 1.931,

neither the patent owner nor the third party requester, if any, nor

privies of either, may file a subsequent request for reexamination of

the patent until a reexamination certificate is issued under

Sec. 1.997, unless authorized by the Commissioner.

(b) Once a final decision has been entered against a party in a

civil action arising in whole or in part under 28 U.S.C. 1338 that the

party has not sustained its burden of proving invalidity of any patent

claim in suit, then neither that party nor its privies may thereafter

request 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 a reexamination requested by that party, or its

privies, on the basis of such issues may not thereafter be maintained

by the Office.

Sec. 1.909 Estoppel of third party requester from previous

reexamination proceedings.

A third party requester, or its privy, who, during a reexamination

proceeding, has filed a notice of appeal to the Court of Appeals for

the Federal Circuit, or who has participated as a party to an appeal by

the patent owner, under the provisions of 35 U.S.C. 141 to 144, is

estopped from later serving, in a subsequent reexamination proceeding,

the invalidity of any claim determined to be patentable on appeal on

any ground which the third party requester, or its privy, raised or

could have raised during the prior reexamination proceeding. A third

party requester, or its privy, is deemed not to have participated as a

party to an appeal by the patent owner unless, within twenty days after

the patent owner has filed notice of appeal, the third party, or its

privy, files notice with the Commissioner's electing to participate.

Sec. 1.911 Privies and persons bound.

(a) For the purposes of Sec. 1.907, a determination of whether a

person is a privy with respect to the patent owner shall include

consideration of whether there is:

(1) a mutual, concurrent or successive relationship to the same

property rights in the patent involved in the reexamination proceeding;

or

(2) representation of the interests of the patent owner concerning

the patent.

(b) For the purposes of Secs. 1.907 and 1.909, a determination of

whether a person is a privy with respect to a third party requester

shall include consideration of whether there is:

(1) a mutual, concurrent or successive relationship to the same

property rights which are or may be affected by and/or infringe the

patent involved in the reexamination proceeding; or

(2) representation of the interests of the other party which are or

may be

[[Page 41044]]

affected by and/or potentially infringe the patent.

(c) For the purposes of Secs. 1.907 and 1.909, a person who is not

a party to the reexamination proceeding but who controls or

substantially participates in the control of the presentation of the

reexamination proceeding on behalf of a party is bound by the

determination of issues decided as though he or she were a named party.

To have control of the presentation requires that person to have

effective choice as to the legal theories and/or grounds of rejection

or defenses to be advanced on behalf of the party to the reexamination

proceeding.

Determining if Reexamination Will Be Ordered

Sec. 1.913 Persons eligible.

Except as otherwise provided, any person may, at any time during

the period of enforceability of a patent, file a request for

reexamination by the Patent and Trademark Office of any claim of the

patent on the basis of prior art patents or printed publications cited

under Sec. 1.901 or on the basis of the requirements of 35 U.S.C. 112

except for the best mode requirement.

Sec. 1.915 Content of request.

(a) The request must be accompanied by the fee for requesting

reexamination set in Sec. 1.20(c).

(b) Any request for reexamination must include the following parts:

(1) A statement pointing out each substantial new question of

patentability based on prior patents and printed publications or based

on the manner in which the patent specification or claims fail to

comply with the requirements of 35 U.S.C. 112 except for the best mode

requirement.

(2) An identification of every claim for which reexamination is

requested.

(3) A detailed explanation of the pertinency and manner of applying

the cited prior art to every claim for which reexamination is requested

or a detailed explanation of the manner in which the specification or

claim(s) fail to comply with 35 U.S.C. 112 except for the best mode

requirement. If appropriate, the party requesting reexamination may

also point out how claims distinguish over cited prior art or how 35

U.S.C. 112 requirements are complied with except for the best mode

requirement.

(4) A copy of every patent or printed publication relied upon or

referred to in paragraphs (b) (1) and (3) of this section accompanied

by an English language translation of all the necessary and pertinent

parts of any non-English language document.

(5) The entire patent for which reexamination is requested must be

furnished in the form of cut-up copies of the original patent with only

a single column of the printed patent securely mounted or reproduced in

permanent form on one side of a separate paper. A copy of any

disclaimer, certificate of correction, or reexamination certificate

issued in the patent must also be included.

(6) A certification that a copy of the request filed by a person

other than the patent owner has been served in its entirety on the

patent owner at the address as provided for in Sec. 1.33(c). The name

and address of the party served must be indicated. If service was not

possible, a duplicate copy must be supplied to the Office.

(7) If the patent is currently involved in a reexamination

proceeding for which a reexamination certificate has not been issued, a

certification that the person making the request is not a privy of the

patent owner or third party requester, unless otherwise authorized by

the Commissioner.

(8) In a request filed by a third party requester, a certification

that

(i) no final decision has been entered against that party or its

privies in a civil action arising in whole or in part under 28 U.S.C.

1338 in which that party or its privies did not sustain its burden of

proving the invalidity of any patent claim in suit, and

(ii) neither that party nor its privies are requesting

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.

(9) In a request filed by a third party requester, a certification

that the request does not assert the invalidity of any claim determined

to be patentable on appeal on any ground which the third party

requester or its privy raised or could have raised during a prior

reexamination proceeding in which that party or its privies filed a

notice of appeal to the Court of Appeals for the Federal Circuit and/or

participated as a party to an appeal by the patent owner, under the

provisions of 35 U.S.C. 141 to 144.

(10) A statement identifying the real party in interest to the

extent necessary for a subsequent person filing a reexamination request

to determine whether that person is a privy.

(c) A request filed by the patent owner may include a proposed

amendment in accordance with Sec. 1.121(f).

(d) If a request is filed by an attorney or agent identifying

another party on whose behalf the request is being filed, the attorney

or agent must have a power of attorney from that party or be acting in

a representative capacity pursuant to Sec. 1.34(a).

Sec. 1.917 Omission of a requirement in the request for reexamination.

If the request is not accompanied by the fee for requesting

reexamination or all of the other parts required by Sec. 1.915, the

person identified as requesting reexamination will be so notified and

given an opportunity to complete the request within a specified time.

If the fee for requesting reexamination has been paid but the defect in

the request is not corrected within the specified time, the

determination whether or not to institute reexamination will be made on

the request as it then exists. If the fee for requesting reexamination

has not been paid, no determination will be made and the request will

be placed in the patent file as a citation if it complies with the

requirements of Sec. 1.901 and/or Sec. 1.902.

Sec. 1.919 Filing date for request for reexamination.

The filing date of the request is the date on which the request

including the entire fee for requesting reexamination is received; or,

if the request is not initially accompanied by the entire fee, the date

on which the last portion of the fee is received in the Patent and

Trademark Office.

Sec. 1.921 Submission of prior art by third party following the order

for reexamination.

Prior art submissions by the third party requester filed after the

reexamination order shall be limited solely to prior art which is used

to rebut a finding of fact by the examiner or a response of the patent

owner.

Sec. 1.923 Examiner's consideration of the request for reexamination.

Within three months following the filing date of a request for

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, or by the failure of the patent specification or

claim(s) to comply with the requirements of 35 U.S.C. 112 except for

the best mode requirement. The examiner's determination will be used 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 Sec. 1.33(c) and to the

person requesting reexamination.

Sec. 1.925 Partial refund if request is denied.

Where no substantial new question of patentability has been found,

a refund of a portion of the fee for requesting

[[Page 41045]]

reexamination will be made to the requester in accordance with

Sec. 1.26(c).

Sec. 1.927 Petition to review denial of the request for reexamination.

The requester may seek review by a petition to the Commissioner

under Sec. 1.181 within one month of the mailing date of the examiner's

determination refusing reexamination. Any such petition must comply

with Sec. 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.

Reexamination of Patents

Sec. 1.929 Reexamination at the initiative of the Commissioner.

The Commissioner, 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 Commissioner or which have been brought to the

Commissioner's attention or by the failure of the patent specification

or claim(s) to comply with the requirements of 35 U.S.C. 112 except for

the best mode requirement. The Commissioner may order reexamination

even though no request for reexamination has been filed in accordance

with Sec. 1.915. Normally requests from outside the Patent and

Trademark Office that the Commissioner undertake reexamination on his

or her own initiative will not be considered. Any determination to

initiate reexamination under this section will become a part of the

official file of the patent and will be given or mailed to the patent

owner at the address as provided for in Sec. 1.33(c).

Sec. 1.931 Order to reexamine.

(a) If a substantial new question of patentability is found, the

determination will include an order for reexamination of the patent for

resolution of the question.

(b) If the order for reexamination resulted from a petition

pursuant to Sec. 1.927, the reexamination will ordinarily be conducted

by an examiner other than the examiner responsible for the initial

determination under Sec. 1.923.

Information Disclosure

Sec. 1.933 Information material to patentability in reexamination

proceedings.

(a) A patent by its very nature is affected with a public interest.

The public interest is best served, and the most effective

reexamination occurs when, at the time a reexamination proceeding is

being conducted, the Office is aware of and evaluates the teachings of

all information material to patentability in a reexamination

proceeding. Each individual associated with the patent owner in a

reexamination proceeding has a duty of candor and good faith in dealing

with the Office, which includes a duty to disclose to the Office all

information known to that individual to be material to patentability in

a reexamination proceeding. The individuals who have a duty to disclose

to the Office all information known to them to be material to

patentability in a reexamination proceeding are the patent owner, each

attorney or agent who represents the patent owner, and every other

individual who is substantively involved on behalf of the patent owner

in a reexamination proceeding. The duty to disclose the information

exists with respect to each claim pending in the reexamination

proceeding until the claim is cancelled. Information material to the

patentability of a cancelled claim need not be submitted if the

information is not material to patentability of any claim remaining

under consideration in the reexamination proceeding. The duty to

disclose all information known to be material to patentability in a

reexamination proceeding is deemed to be satisfied if all information

known to be material to patentability of any claim in the patent after

issuance of the reexamination certificate was cited by the Office or

submitted to the Office in an information disclosure statement.

However, the duties of candor, good faith, and disclosure have not been

complied with if any fraud on the Office was practiced or attempted or

the duty of disclosure was violated through bad faith or intentional

misconduct by, or on behalf of, the patent owner in the reexamination

proceeding. Any information disclosure statement must be filed with the

items listed in Sec. 1.98(a) as applied to individuals associated with

the patent owner in a reexamination proceeding, and should be filed

within two months of the date of the order for reexamination, or as

sooner thereafter as possible.

(b) Under this section, information is material to patentability in

a reexamination proceeding when it is not cumulative to information of

record or being made of record in the reexamination proceeding, and

(1) It is a patent or printed publication that establishes, by

itself or in combination with other patents or printed publications, a

prima facie case of unpatentability of a claim; or

(2) It refutes, or is inconsistent with, a position the patent

owner takes in:

(i) Opposing an argument of unpatentability relied on by the

Office, or

(ii) Asserting an argument of patentability.

A prima facie case of unpatentability of a claim pending in a

reexamination proceeding is established when the information compels a

conclusion that a claim is unpatentable under the preponderance of

evidence, burden-of-proof standard, giving each term in the claim its

broadest reasonable construction consistent with the specification, and

before any consideration is given to evidence which may be submitted in

an attempt to establish a contrary conclusion of patentability.

(c) The responsibility for compliance with this section rests upon

the individuals designated in paragraph (a) of this section, and no

evaluation will be made by the Office in the reexamination proceeding

as to compliance with this section. If questions of compliance with

this section are discovered during a reexamination proceeding, they

will be noted as unresolved questions in accordance with Sec. 1.906(c).

Office Actions and Responses (Before the Examiner)

Sec. 1.935 Initial Office action normally accompanies order to

reexamine.

The order for reexamination will normally be accompanied by the

initial Office action on the merits of the reexamination.

Sec. 1.937 Conduct of Reexamination.

(a) All reexamination proceedings, including any appeals to the

Board of Patent Appeals and Interference, will be conducted with

special dispatch within the Office, unless the Commissioner makes a

determination that there is good cause for suspending the reexamination

proceding. A final determination that good cause exists shall not be

made until the patent owner and third party requesters (if any) have

had a reasonable opportunity to comment on or oppose any suspension.

(b) Except as otherwise provided, the reexamination proceeding will

be conducted in accordance with the sections governing the application

examination process; Secs. 1.104 through 1.119, and will result in the

issuance of a reexamination certificate under Sec. 1.997.

Sec. 1.939 Unauthorized papers.

Unless authorized by the reexamination regulations (Secs. 1.901-

[[Page 41046]]

1.997), no paper shall be filed prior to the first Office action. If an

unauthorized paper is filed by the patent owner or third party

requester, it will not be considered in making the determination under

Sec. 1.923 and will be returned.

Sec. 1.941 Amendments by patent owner and their effective date.

(a) Any proposed amendment to the description and claims must be

made in accordance with Sec. 1.121(f) and be accompanied by an

explanation of the support for the proposed amendment in the disclosure

of the patent. No amendment may enlarge the scope of the claims of the

patent or introduce new matter. No amendment may be proposed for entry

in an expired patent. Moreover, no amendment will be incorporated into

the patent by certificate issued after the expiration of the patent.

(b) Amendments made to a patent during a reexamination proceeding

will not be effective until a reexamination certificate is issued.

Sec. 1.943 Length of responses and briefs.

Responses and appellant briefs by the patent owner (including

amendments) and third party requester, if any, shall not exceed 50

pages in length, excluding Appendix of claims and reference materials

such as prior art references. All further briefs by any party shall not

exceed 35 pages in length.

Sec. 1.945 Response by patent owner.

The patent owner will be given at least thirty (30) days to respond

to any Office action. Such response may include arguments in response

to any rejections and/or proposed amendments or new claims to place the

patent in condition where all claims, if amended as proposed, would be

patentable.

Sec. 1.947 Response by third party requester to patent owner's

response.

If the patent owner files a response to an Office action, any third

party requester may once file written comments within a period of one

month from the date of service of the patent owner's response. These

comments shall be limited to issues covered by the action or the patent

owner's response.

Sec. 1.949 Examiner's Office action closing prosecution.

Upon consideration of the issues and/or grounds of rejection a

second or subsequent time, or upon allowance of all claims, the

examiner shall issue an Office action treating all claims present in

the reexamination proceeding, which may be an action closing

prosecution. An action will not normally close prosecution if it

includes a new ground of rejection which was not previously addressed

by the patent owner, unless the new ground was necessitated by an

amendment.

Sec. 1.951 Responses after Office action closing prosecution.

After any action closing prosecution issued by the examiner, the

third party requester may once file written comments limited to the

issues raised in the Office action closing prosecution. Such comments

must be filed within the time set for response in the action closing

prosecution. When the third party requester does file such comments,

the patent owner may file comments responding to the third party

requester's comments within one month from the date of service of the

third party requester's comments on the patent owner.

(b) After any action closing prosecution issued by the examiner,

the patent owner may once file written comments limited to the issues

raised in the reexamination proceeding and/or present a proposed

amendment to the claims which amendment will be subject to the criteria

of Sec. 1.116 as to whether it shall be entered and/or considered. Such

comments and/or proposed amendments must be filed within the time set

for response in the action closing prosecution. Where the patent owner

does file such comments and/or proposed amendment, the third party

requester may file comments responding to such comments and/or proposed

amendments by the patent owner within one month from the date of

service of patent owner's comments and/or proposed amendment on the

third party requester.

Sec. 1.953 Examiner's Right of Appeal Notice.

Upon considering the responses of the patent owner and any third

party requester subsequent to the Office action closing prosecution, or

upon expiration of the time for submitting such responses, the examiner

shall issue a ``Right of Appeal Notice,'' unless the examiner reopens

prosecution. The ``Right of Appeal Notice'' shall include a final

rejection and/or final decision favorable to patentability which shall

identify the status of each claim and reasons for patentability or

grounds of rejection for each claim. It shall set a 30-day or one month

time period, whichever is longer, for either party to appeal. If no

appeal follows, the reexamination proceeding will be terminated and the

Commissioner will proceed to issue a certificate under Sec. 1.997 in

accordance with the last action of the Office.

Interviews

Sec. 1.955 Interviews in reexamination proceedings.

(a) Interviews in reexamination proceedings pending before the

Office between examiners and the owners of such patents or their

attorneys or agents of record must be had in the Office at such times,

within Office hours, as the respective examiners may designate.

Interviews will not be permitted at any other time or place without the

authority of the Commissioner. Interviews should be arranged for in

advance. A third party requester may not initiate an interview. A third

party requester has a right to participate in an interview initiated by

the patent owner or the examiner and must be given adequate notice and

opportunity to participate. A senior level Office official will be

present when the interview is attended by a third party requester.

(b) Interviews for the discussion of the patentability of claims in

patents involved in reexamination proceedings will not be initiated by

the patent owner prior to the first Office action thereon.

(c) In every instance of an interview with an examiner, each party

must present a statement of the issues which were discussed. An

interview does not remove the necessity for response to Office actions

as specified in Sec. 1.111.

Extensions of Time and Revival of Proceedings

Sec. 1.957 Extensions of time and cause for termination in

reexamination proceedings.

(a) The time for taking any action by a patent owner or third party

requester in a reexamination proceeding will be extended only for

sufficient cause, and for a reasonable time specified. Any request for

such extension must be filed on or before the day on which action by

the patent owner or third party requester is due, but in no case will

the mere filing of a request effect any extension. See Sec. 1.304(a)

for extensions of time for filing a notice of appeal to the U.S. Court

of Appeals for the Federal Circuit.

(b) If the patent owner fails to file a timely and appropriate

response to any Office action in a reexamination proceeding, the

reexamination proceeding will be terminated and the Commissioner will

proceed to issue a certificate under Sec. 1.997 in accordance with the

last action of the Office, unless there is a third party requester and

claims are found patentable.

(c) If there is a third party requester and claims are found

patentable, and the patent owner fails to file a timely and appropriate

response to any action in a reexamination proceeding,

[[Page 41047]]

prosecution will be limited to claims found patentable at the time of

the failure to respond and to claims which do not enlarge the scope of

the claims found patentable at that time.

Sec. 1.958 Revival of terminated proceedings.

(a) A reexamination proceeding terminated for failure to prosecute

may be revived as a pending proceeding if it is shown to the

satisfaction of the Commissioner that the delay was unavoidable. A

petition to revive an unavoidably terminated reexamination proceeding

must be promptly filed after the patent owner is notified of, or

otherwise becomes aware of, the termination of the proceeding, and must

be accompanied by:

(1) a proposed response to continue prosecution of that proceeding

unless it has been previously filed;

(2) the petition fee as set forth in Sec. 1.17(l); and

(3) a showing that the delay was unavoidable. The showing must be a

verified showing if made by a person not registered to practice before

the Patent and Trademark Office.

(b) A reexamination proceeding terminated for failure of the patent

owner to prosecute may be revived as a pending proceeding if the delay

in prosecution was unintentional. A petition to revive an

unintentionally terminated reexamination proceeding must be:

(1) accompanied by a proposed response to continue prosecution of

that proceeding unless it has been previously filed;

(2) accompanied by the petition fee as set forth in Sec. 1.17(m);

(3) accompanied by a statement that the delay was unintentional.

The statement must be a verified statement if made by a person not

registered to practice before the Patent and Trademark Office. The

Commissioner may require additional information where there is a

question whether the delay was unintentional; and

(4) filed either:

(i) within two months of the date of the first Office notification

that the proceeding has been terminated; or

(ii) within two months of the date of the first decision on a

petition to revive under paragraph (a) of this section which was timely

filed within the time period set forth in paragraph (b)(4)(i) of this

section.

(c) Any request for reconsideration or review of a decision

refusing to revive a proceeding upon petition filed pursuant to

paragraph (a) or (b) of 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.

(d) The time periods set forth in this section cannot be extended,

except that the time period set forth in paragraph (c) of this section

may be extended under the provisions of Sec. 1.957(a).

Appeal to the Board of Patent Appeals and Interferences

Sec. 1.959 Notice of appeal and cross appeal to Board of Patent

Appeals and Interferences.

(a) (1) Once a ``Right of Appeal Notice'' has been issued, by

filing a notice of appeal within the time provided in Sec. 1.953 and

paying the fee set forth in Sec. 1.17(e), the patent owner may appeal

to the Board of Patent Appeals and Interferences with respect to any

decision adverse to the patentability of any original or proposed

amended or new claim of the patent.

(2) Once a ``Right of Appeal Notice'' has been issued, by filing a

notice of appeal within the time provided in Sec. 1.953 and paying the

fee set forth in Sec. 1.17(e), a third party requester involved in a

reexamination proceeding may appeal to the Board of Patent Appeals and

Interferences with respect to any final decision favorable to the

patentability of any original or proposed amended or new claim of the

patent.

(b) (1) Within fourteen days of service of a third party

requester's notice of appeal, and upon payment of the fee set forth in

Sec. 1.17(e), a patent owner who has not filed a notice of appeal may

file a notice of cross appeal with respect to any decision adverse to

the patentability of any original or proposed amended or new claim of

the patent.

(2) Within fourteen days of service of a patent owner's notice of

appeal, and upon payment of the fee set forth in Sec. 1.17(e), a third

party requester who has not filed a notice of appeal may file a notice

of cross appeal with respect to any final decision favorable to the

patentability of any original or proposed amended or new claim of the

patent.

(c) The appeal in a reexamination proceeding must identify the

claim(s) appealed, and must be signed by the patent owner or third

party requester, or their duly authorized attorney or agent.

(d) An appeal when taken must be taken from the rejection of all

claims under rejection in a Right of Appeal Notice which the patent

owner proposes to contest, or from the determination of patentability

of all claims indicated as patentable in a Right of Appeal Notice which

the third party requester proposes to contest. Questions relating to

matters not affecting the merits of the invention may be required to be

settled before an appeal can be considered.

(e) The time periods set forth in Secs. 1.959 through 1.969 are

subject to the provisions of Sec. 1.957(a) for reexamination

proceedings. See Sec. 1.304(a) for extensions of time for filing a

notice of appeal of the U.S. Court of Appeals for the Federal Circuit.

Sec. 1.961 Jurisdiction over appeal.

Jurisdiction over the patent under reexamination passes to the

Board of Patent Appeals and Interferences upon transmittal of the file,

including all briefs and examiner's answers, to the Board. Prior to the

entry of a decision on the appeal, the Commissioner may sua sponte

order the patent remanded to the examiner, for action consistent with

the Commissioner's order.

Sec. 1.962 Appellant and respondent defined.

For the purposes of reexamination, appellant is any party filing a

notice of appeal. A respondent is any opposing party responding to the

appeal of the appellant. If more than one party appeals, each is an

appellant with respect to the claims to which his or her appeal is

directed and, to the extent each responds, each is a respondent with

respect to the claims to which his or her opponent's appeal is

directed.

Sec. 1.963 Time for filing briefs.

(a) If a party files a notice of appeal or cross appeal, the party

must file an appellant brief within two months of the date of filing of

their notice of appeal or cross appeal. However, if another party files

a notice of appeal or cross appeal subsequent to that of the party,

then the party must file an appeal brief within two months of the date

of filing of the subsequent notice of appeal or cross appeal, so that

the appellant briefs of all parties filing a notice of appeal or cross

appeal will be due no later than two months after the last-filed

notice.

(b) Once an appellant brief has been properly filed, an opposing

party may file a respondent brief within one month from the date of

service of the appellant brief. The examiner will consider both the

appellant and respondent briefs and prepare an examiner's answer.

(c) The third party requester and the patent owner may each file a

reply brief within one month of the date of the examiner's answer. No

further brief will be acknowledged or considered.

Sec. 1.965 Applellant brief.

(a) Appellant(s) shall, within time limits for filing set forth in

Sec. 1.963, file a brief in triplicate and serve the brief on all

parties in accordance with Sec. 1.903. The brief must be accompanied by

the requisite fee set forth in Sec. 1.17(f) and must set forth the

authorities and

[[Page 41048]]

arguments on which appellant will rely to maintain the appeal. Any

arguments or authorities not included in the brief will be refused

consideration by the Board of Patent Appeals and Interferences, unless

good cause is shown.

(b) On failure of a party to file the brief, accompanied by the

requisite fee, within the time allowed, the appeal shall stand

dismissed with respect to the claims appealed by that party.

(c) The brief shall contain the following items under appropriate

headings and in the order indicated below unless the brief is filed by

a party who is not represented by a registered practitioner:

(1) Real Party in Interest. A statement identifying the real party

in interest, if the party named in the caption of the brief is not the

real party in interest.

(2) Related Appeals and Interferences. A statement identifying by

number and filing date all other appeals or interferences known to the

appellant, the appellant's legal representative, or assignee which will

directly affect or be directly affected by or have a bearing on the

Board's decision in the pending appeal.

(3) Status of Claims. A statement of the status of all the claims,

pending or cancelled, and identifying the claims appealed.

(4) Status of Amendments. A statement of the status of any

amendment filed subsequent to final rejection.

(5) Summary of Invention. A concise explanation of the invention or

subject matter defined in the claims involved in the appeal, which

shall refer the specification by column and line number, and to the

drawing(s), if any, by reference characters.

(6) Issues. A concise statement of the issues presented for review.

(7) Grouping of Claims. For each ground of rejection, or, in the

case where the appeal is by a third party requester, each determination

of patentability or determination of inapplicability of a proposed

rejection, which appellant contests and which applies to a group of two

or more claims, the Board shall select a single claim from the group

and shall decide the appeal as to the ground of rejection on the basis

of that claim alone unless a statement is included that the claims of

the group do not stand or fall together and, in the argument under

paragraph (c)(8) of this section, appellant explains why the claims of

this group are believed to be separately patentable or unpatentable.

Merely pointing out differences in what the claims cover is not an

argument as to why the claims are separately patentable.

(8) Argument. The contentions of appellant with respect to each of

the issues presented for review in paragraph (c)(6) of this section,

and the basis therefor, with citations of the authorities, statues, and

parts of the record relief on. Each issue should be treated under a

separate heading.

(i) For each rejection or, in the case where the appeal is by a

third party requester, any other determination under 35 U.S.C. 112,

first paragraph, the argument shall specify the errors in the rejection

or other determination and how the first paragraph of 35 U.S.C. 112 is

or is not complied with, including, as appropriate, how the

specification and drawings, if any,

(A) describe or fail to describe the subject matter defined by each

of the appealed claims, and

(B) enable or fail to enable any person skilled in the art to make

and use the subject matter defined by each of the appealed claims, and

(ii) For each rejection, or in the case where the appeal is filed

by a third party requester, any determination, under 35 U.S.C. 112,

second paragraph, the argument shall specify the errors in the

rejection or other determination and how the claims do or do not

particularly point out and distinctly claim the subject matter which

appellant regards as the invention.

(iii) For each rejection or, in the case where the appeal is by a

third party requester, each determination of patentability, under 35

U.S.C. 102, the argument shall specify the errors in the rejection or

determination and why the appealed claims are or are not patentable

under 35 U.S.C. 102, including any specific limitations in the appealed

claims which are not described in the prior art.

(iv) For each rejection or, in the case where the appeal is by a

third party requester, each determination of patentability under 35

U.S.C. 103, the argument shall specify the errors in the rejection or

determination and, if appropriate, the specific limitations in the

appealed claims which are or are not described in the prior art, and

shall explain how such limitations render the claimed subject matter

obvious or unobvious over the prior art. If the rejection or

determination is based upon a combination of references, the argument

shall explain why the references, taken as a whole, do or do not

suggest the claimed subject matter, and shall include, as may be

appropriate, an explanation of why features disclosed in one reference

may or may not properly be combined with features disclosed in another

reference. A general argument that all the limitations are or are not

described in a single reference does not satisfy the requirements of

this paragraph.

(v) For any rejection or, in the case where the appeal is by a

third party requester, any determination of patentability, other than

those referred to in paragraphs (c)(8)(i) to (iv) of this section, the

argument shall specify the errors in the rejection or other

determination and the specific limitations in the appealed claims, if

appropriate, or other reasons, which cause the rejection or other

determination to be in error.

(9) Appendix. An appendix containing a copy of the claims involved

in the appeal.

(d) If a brief is filed which does not comply with all the

requirements of paragraph (c) of this section, appellant will be

notified of the reasons for non-compliance and provided with a period

of one month within which to file an amended brief. If the appellant

does not file an amended brief during the one-month period, or files an

amended brief which does not overcome all the reasons for non-

compliance stated in the notification, the appeal will stand dismissed

as to that party.

Sec. 1.967 Respondent brief.

(a) The brief(s) if the respondent(s) specified in Sec. 1.963 must

be filed in triplicate, served on all other parties in accordance with

Sec. 1.903 and be accompanied by the requisite fee set forth in

Sec. 1.17(f). Any arguments or authorities not included in the brief

will be refused consideration by the Board of Patent Appeals and

Interferences, unless good cause is shown. The respondent brief shall

be limited to issues raised in the appellant brief to which the

respondent brief is directed.

(b) The respondent brief shall contain the following items under

appropriate headings and in the order here indicated, and may include

an appendix containing portions of the record on which reliance is

made:

(1) Real party in Interest. A statement identifying the real party

in interest, if the party named as the respondent in the brief is not

the real party in interest.

(2) Related Appeals and Interferences. A statement identifying by

number and filing date all other appeals or interferences known to the

respondent, the respondent's legal representative, or assignee (if any)

which will directly affect or be directly affected by or have a bearing

on the Board's decision in the pending appeal.

(3) Status of claims. A statement accepting or disputing

appellant's

[[Page 41049]]

statement of the status of claims. If appellant's statement of the

status of claims is disputed, the errors in appellant's statement must

be specified with particularity.

(4) Status of amendments. A statement accepting or disputing

appellant's statement of the status of amendments. If appellant's

statement of the status of amendments is disputed, the errors in

appellant's statement must be specified with particularity.

(5) Summary of invention. A statement accepting or disputing

appellant's summary of the invention or subject matter defined in the

claims involved in the appeal. If appellant's summary of the invention

or subject matter defined in the claims involved in the appeal is

disputed, the errors in appellant's summary must be specified with

particularity. A counter explanation of the invention may be made.

(6) Issues. A statement accepting or disputing appellant's

statement of the issues presented for review and identifying any

examiner's determination not to make a rejection proposed by the third

party requester. If appellant's statement of the issues presented for

review is disputed, the errors in appellant's statement must be

specified with particularity. A counter statement of the issues for

review may be made.

(7) Grouping of claims. A statement accepting or disputing any

statement by appellant that allowed or rejected claims stand or fall

together. If appellant's statement is disputed, the errors in

appellant's statement must be specified with particularity. A counter

statement may be made.

(8) Argument. A statement accepting or disputing the contentions of

the appellant with respect to each of the issues. If a contention of

the appellant or a determination of the examiner not to make a

rejection proposed by the requester is disputed, the errors in

appellant's argument or examiner's determination must be specified with

particularity, stating the basis therefor, with citations of the

authorities, statutes and parts of the record relied on. Each issue

should be treated under a separate heading. An argument may be made

with respect to each of the issues stated in the counter statement of

the issues, with each counter stated issue being treated under a

separate heading. The provisions of Secs. 1.965(c)(8)(iii) and (iv) of

these regulations shall apply to any argument raised under 35 U.S.C.

102 or 103.

(c) If a respondent brief is filed which does not comply with all

the requirements of paragraph (b) of this section, respondent will be

notified of the reasons for non-compliance and provided with a period

of one month within which to file an amended brief. If the respondent

does not file an amended brief during the one-month period, or files an

amended brief which does not overcome all the reasons for non-

compliance stated in the notification, the respondent brief will not be

received into the record and will not be considered.

Sec. 1.969 Examiner's answer.

The primary examiner may, within such time as may be directed by

the Commissioner, furnish a written statement in answer to the patent

owner's and/or third party requester's appellant brief or respondent

brief including such explanation of the invention claimed and of the

references and grounds of rejection or reasons for patentability as may

be necessary, supplying a copy to the patent owner and each third party

requester, if any. If the primary examiner shall find that the appeal

is not regular in form or does not relate to an appealable action, he

or she shall so state and a petition from such decision may be taken to

the Commissioner as provided in Sec. 1.181.

Sec. 1.971 Reply brief.

(A) The patent owner and any third party requester may each file a

reply brief directed only to such new points of argument as may be

raised in the examiner's answer, within one month from the date of such

answer. The new points of argument shall be specifically identified in

the reply brief. If the examiner determines that the reply brief is not

directly only to new points of argument raised in the examiner's

answer, the examiner may refuse entry of the reply brief and will so

notify the appellant.

(b) If the examiner's answer expressly states that it includes a

new ground of rejection or allowance of claims not previously allowed,

the party adversely affected must file a reply thereto within one month

from the date of such answer to avoid dismissal of the appeal as to the

claims subject to the new ground of rejection or allowance; such reply

may be accompanied by any amendment (in the case of the patent owner)

or material appropriate to the new ground. See Sec. 1.957 for

extensions of time for filing a reply brief.

Sec. 1.973 Oral hearing.

(a) An oral hearing should be requested only in those circumstances

in which the appellant, or a respondent who has filed a respondent

brief under Sec. 1.967, considers such a hearing necessary or desirable

for a proper presentation of the appeal. An appeal decided without an

oral hearing will receive the same consideration by the Board of Patent

Appeals and Interferences as an appeal decided after oral hearing.

(b) If appellant, or a respondent who has filed a respondent brief

under Sec. 1.967, desires an oral hearing, he or she must file a

written request for such hearing accompanied by the fee set forth in

Sec. 1.17(g) within one month after the date of the examiner's answer.

If appellant, or a respondent who has filed a respondent brief under

Sec. 1.967, requests an oral hearing and submits therewith the fee set

forth in Sec. 1.17(g), an oral argument may be presented by, or on

behalf of, the primary examiner if considered desirable by either the

primary examiner or the Board. See Sec. 1.957 for extensions of time in

a reexamination proceeding.

(c) If no request and fee for oral hearing have been timely filed

by an appellant or a respondent who has filed a respondent brief under

Sec. 1.967, the appeal will be assigned for consideration and decision.

If an appellant or respondent who has filed a respondent brief under

Sec. 1.967 has requested an oral hearing and has submitted the fee set

forth in Sec. 1.17(g), a hearing date will be set, and notice thereof

given to each appellant, to the primary examiner and to each respondent

who has filed a respondent brief under Sec. 1.967. The notice shall set

a period within which all requests for oral hearing shall be submitted.

Hearing will be held as stated in the notice, and oral argument will be

limited to twenty minutes for each appellant and respondent, and

fifteen minutes for the primary examiner unless otherwise ordered

before the hearing begins.

Sec. 1.975 Affidavits or declarations after appeal.

Affidavits, declarations, or exhibits submitted after the case has

been appealed will not be admitted without a showing of good and

sufficient reasons why they were not earlier presented.

Sec. 1.977 Decision by the Board of Patent Appeals and Interferences.

(a) The Board of Patent Appeals and Interferences, in its decision,

may affirm or reverse the decision of the examiner in whole or in part

on the grounds and on the claims specified by the examiner, or on the

grounds presented by a third party requester, or remand the

reexamination proceeding to the examiner for further consideration. The

affirmance of the rejection or allowance of a claim on any of the

grounds

[[Page 41050]]

specified constitutes a general affirmance of the decision of the

examiner on that claim, except as to any ground specifically reversed

or otherwise stated. A rejection of claims by the examiner may also be

affirmed on the basis of the arguments presented by the third party

requester.

(b) Should the Board of Patent Appeals and Interferences have

knowledge of any grounds for rejecting any appealed claim not raised in

the appeal, it may include in the decision a statement to that effect

with its reasons for so holding, which statement shall constitute a new

rejection of the claims. A new rejection shall not be considered final

for purposes of judicial review. When the Board of Patent Appeals and

Interferences makes a new rejection of an appealed claim, the patent

owner may exercise one of the following two options with respect to the

new ground:

(1) The patent owner may submit an appropriate amendment of the

claims so rejected or a showing of facts, or both, and have the matter

reconsidered by the examiner, in which event the patent will be

remanded to the examiner. The statement of the Board of Patent Appeals

and Interferences shall be binding upon the examiner unless an

amendment or showing of facts not previously of record be made which,

in the opinion of the examiner, overcomes the new ground for rejection

stated in the decision. Should the examiner again reject the claims,

the patent owner may again appeal to the Board of Patent Appeals and

Interferences.

(2) The patent owner may have the case reconsidered under

Sec. 1.979(b) by the Board of Patent Appeals and Interferences upon the

same record. The request for reconsideration shall address the new

ground for rejection and state with particularity the points believed

to have been misapprehended or overlooked in rendering the decision and

also state all other grounds upon which reconsideration is sought.

Where request for such reconsideration is made, the Board of Patent

Appeals and Interferences shall reconsider the new ground for rejection

and, if necessary, rendered a new decision which shall include all

grounds upon which a patent is refused. The decision on reconsideration

is deemed to incorporate the earlier decision, except for those

portions specifically withdrawn on reconsideration, and is final for

the purpose of judicial review.

(c) Should the decision of the Board of Patent Appeals and

Interferences include an explicit statement that a claim may be allowed

in amended form, patent owner shall have the right to amend in

conformity with such statement which shall be binding on the examiner

in the absence of new references or grounds of rejection.

(d) Although the Board of Patent Appeals and Interferences normally

will confine its decision to a review of rejections and allowances made

by the examiner and/or arguments of the third party requester, should

it have knowledge of any grounds for rejecting any allowed claim not

advanced by the examiner or third party requester, it may recommend a

rejection of the claim in its decision and remand the case to the

examiner. In such event, the Board shall set a period, not less than

one month, within which the patent owner may submit to the examiner an

appropriate amendment, a showing of facts or reasons, or both, in order

to avoid any grounds for rejection set forth in the recommendation of

the Board of Patent Appeals and Interferences. The examiner shall be

bound by any such recommended rejection and shall enter and maintain

the recommended rejection unless an amendment or showing of facts not

previously of record is filed which, in the opinion of the examiner,

overcomes the recommended rejection. Should the examiner make the

recommended rejection final the patent owner may again appeal to the

Board of Patent Appeals and Interferences.

(e) Whenever a decision of the Board of Patent Appeals and

Interferences includes a remand, that decision shall not be considered

a final decision. When appropriate, upon conclusion of proceedings on

remand before the examiner, the Board of Patent Appeals and

Interferences may enter an order otherwise making its decision final.

(f) See Sec. 1.957(a) for extensions of time to take action under

this section.

Sec. 1.979 Action following decision.

(a) After decision by the Board of Patent Appeals and

Interferences, the case shall be returned to the examiner, subject to a

right of appeal or other review by the appellant or respondent, for

such further action by the patent owner or by the examiner, as the

condition of the case may require, to carry into effect the decision.

(b) Each party may file a single request for reconsideration or

modification of the decision if filed within one month from the date of

the original decision, unless that decision is so modified by the

decision on reconsideration as to become, the effect, a new decision,

and the Board of Patent Appeals and Interferences so states. The

request for reconsideration shall state with particularity the points

believed to have been misapprehended or overlooked in rendering the

decision and also state all other grounds upon which reconsideration is

sought. See Sec. 1.957(a) for extensions of time for seeking

reconsideration.

(c) The appeal proceedings are considered terminated by the

dismissal of an appeal or the failure to timely file an appeal to the

U.S. Court of Appeals for the Federal Circuit. The date of termination

of proceedings is the date on which the appeal is dismissed or the date

on which the time for appeal to the Federal Circuit expires. If an

appeal to the Federal Circuit has been filed, proceedings are

considered terminated when the appeal is terminated. An appeal to the

Federal Circuit is terminated when the mandate is received by the

Office. Upon termination of the reexamination proceeding, the

Commission will issue a certificate under Sec. 1.997.

Sec. 1.981 Reopening after decision.

(a) Cases which have been decided by the Board of Patent Appeals

and Interferences will not be reopened or reconsidered by the primary

examiner except under the provisions of Sec. 1.979 without the written

authority of the Commissioner, and then only for the reconsideration of

matters not already adjudicated, sufficient cause being shown.

(b) In the event prosecution is reopened or the case is

reconsidered by the primary examiner after decision by the Board of

Patent Appeals and Interferences or by the U.S. Court of Appeals for

the Federal Circuit, any third party requester who appealed or

responded under Sec. 1.967 may again present comments pursuant to

Sec. 1.947 and may appeal or participate in an appeal by the patent

owner pursuant to Sec. 1.959.

Appeal to the United States Court of Appeals for the Federal Circuit

Sec. 1.983 Appeal to the United States Court of Appeals for the

Federal Circuit.

Any third party requester or patent owner involved in a

reexamination proceeding who is a party to any appeal to the Board of

Patent Appeals and Interferences and who is 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 and may be a party to

any appeal thereto taken from a reexamination decision of the Board of

Patent Appeals and Interferences. The appellant must take the following

steps in such an appeal:

(a) in the Patent and Trademark Office file a written notice of

appeal directed

[[Page 41051]]

to the Commissioner (see Secs. 1.302 and 1.304); and

(b) in the Court, file a copy of the notice of appeal and pay the

fee, as provided for in the rules of the Court. A third party requester

is deemed not to have participated as a party to an appeal by the

patent owner, and thereby not subject to Sec. 1.909, unless within

twenty days after the patent owner has filed notice of appeal pursuant

to Sec. 1.983(a), the third party requester files notice with the

Commissioner electing to participate.

Proceedings Involving Same Patent as in Reexamination

Sec. 1.985 Notification of prior or concurrent proceedings.

Any person at any time may file a paper in a reexamination

proceeding notifying the Office of a prior or concurrent proceeding in

which the same patent is or was involved, such as interferences,

reissues, reexaminations, or litigation and the results of such

proceedings. Such paper must be limited to merely providing notice of

the other proceeding without discussion of issues of the current

reexamination proceeding.

Sec. 1.987 Stay of concurrent proceeding.

If a patent in the process of reexamination is or becomes involved

in litigation or a reissue application for the patent is filed or

pending, the Commissioner shall determine whether or not to stay the

reexamination or reissue proceeding.

Sec. 1.989 Merger of concurrent reexamination proceedings.

(a) If reexamination is ordered while a prior reexamination

proceeding is pending for the same patent, the reexamination

proceedings will be merged and result in the issuance of a single

certificate under Sec. 1.997.

(b) A reexamination proceeding filed under Sec. 1.915 which is

merged with a reexamination proceeding filed under Sec. 1.510 will

result in the merged proceeding being governed by Secs. 1.901-1.997.

Sec. 1.991 Merger of concurrent reissue application and reexamination

proceeding.

If a reissue application and a reexamination proceeding on which an

order pursuant to Sec. 1.931 has been mailed are pending on a patent, a

decision may be made to merge the two proceedings or to stay one of the

two proceedings. Where merger is a reissue application and a

reexamination proceeding is ordered, the merged examination will be

conducted in accordance with Secs. 1.171 through 1.179 and the patent

owner will be required to place and maintain the same claims in the

reissue application and the reexamination proceeding during the

pendency of the merged proceeding. In a merged proceeding,

participation by the third party requester shall be limited to issues

within the scope of reexamination. The examiner's actions and any

responses by the patent owner or third party requester in a merged

proceeding will apply to both the reissue application and the

reexamination proceeding and be physically entered into both files. Any

reexamination proceeding merged with a reissue application shall be

terminated by the grant of the reissue patent.

Sec. 1.993 Stay of concurrent interference and reexamination

proceeding.

If a patent in the process of reexamination is or becomes involved

in an interference, the Commissioner may stay reexamination or the

interference. The Commissioner will not consider a request to stay an

interference unless a motion (Sec. 1.635) to stay the interference has

been presented to and denied by an administrative patent judge and the

request is filed within ten (10) days of a decision by an

administrative patent judge denying the motion for a stay or such other

time as the administrative patent judge may set.

Sec. 1.995 Third party requester's participation rights preserved in

merged proceeding.

When a third party requester is involved in one or more proceedings

including a reexamination proceeding, the merger of such proceedings

will be accomplished so as to preserve the third party requester's

right to participate to the extent specifically provided for in these

regulations. In merged proceedings involving different requesters, any

paper filed by one party in the merged proceeding shall be served on

all other parties of the merged proceeding.

Certificate

Sec. 1.997 Issuance of reexamination certificate after reexamination

proceedings.

(a) Upon the conclusion of a reexamination proceeding, the

Commissioner will issue a certificate in accordance with 35 U.S.C. 307

setting forth the results of the reexamination proceeding and the

content of the patent following the reexamination proceeding.

(b) A certificate will be issued in each patent in which a

reexamination proceeding has been ordered under Sec. 1.931. Any

statutory disclaimer filed by the patent owner will be made part of the

certificate.

(c) The certificate will be mailed on the day of its date to the

patent owner at the address as provided for in Sec. 1.33(c). A copy of

the certificate will also be mailed to the requester of the

reexamination proceeding.

(d) If a certificate has been issued which cancels all of the

claims of the patent, no further Office proceedings will be conducted

with regard to that patent or any reissue applications or reexamination

requests relating thereto.

(e) If the reexamination proceeding is terminated by the grant of a

reissued patent as provided in Sec. 1.965(d), the reissued patent will

constitute the reexamination certificate required by this section and

35 U.S.C. 307.

(f) A notice of the issuance of each certificate under this section

will be published in the Official Gazette on its date of issuance.

Dated: August 1, 1995.

Bruce A. Lehman,

Assistant Secretary of Commerce and Commissioner of Patents and

Trademarks.

[FR Doc. 95-19488 Filed 8-10-95; 8:45 am]

BILLING CODE 3510-16-M