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The undersigned hereby submits the following comments on the Notice of Proposed Rulemaking regarding Changes to Implement Optional Inter Partes Reexamination Proceedings (65 Fed. Reg. 18154).

The undersigned is a partner in the New York City intellectual property law firm of Fish & Neave, but these comments are personal and not those of Fish & Neave.

The undersigned respectfully submits that the Patent and Trademark Office ("PTO") has exceeded its authority in proposed 37 CFR 1.913 in excluding the patent owner or its privies from the class of persons eligible to file a request for inter partes reexamination.

Not only does 35 USC 311 not have such an exclusion, but 35 USC 311(c), requiring the Director to send a copy of an inter partes reexamination request to the patent owner, explicitly relieves the Director of that obligation when the inter partes requester is the patent owner.

Thus, it is clear that Congress intended that the patent owner could file an inter partes reexamination request. Although it is difficult to imagine why a patent owner would want to do so, it is not the place of the PTO to exclude patent owners when Congress clearly intended to include them. For example, a patent owner may feel that the chances of staying a pending litigation are increased by requesting an inter partes reexamination, as compared to an ex parte reexamination, because of the terms of 35 USC 318. Proposed 37 CFR 1.989 states that if an inter partes reexamination is pending, and any other reexamination is ordered (including ex parte reexaminations), the two reexaminations may be merged, or one may be suspended.

The undersigned believes that if an ex parte reexamination is filed by the third-party requester of the original inter partes reexamination, or its privies, then the ex parte reexamination must be suspended rather then merged into the pending inter partes reexamination. Allowing even the possibility that the subsequent ex parte reexamination would be merged with the inter partes reexamination under such circumstances would encourage inter partes requesters to file ex parte requests for reexamination to get around 35 USC 317(a) and proposed 37 CFR 1.907, thereby harassing patent owners contrary to Congressional intent.

Respectfully submitted,

Jeffrey H. Ingerman Reg. No. 31,069

Fish & Neave

1251 Avenue of the Americas

New York, New York 10020-1104

United States Patent and Trademark Office
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Last Modified: 7/4/2009 5:15:03 PM