Dear Mr. Dost,
Thank you for returning my call to the PTO regarding the new proposed rules with respect to optional inter partes reexamination.
As we discussed, I believe new proposed rule 1.951 does not comply with the statutory authority given by Congress. In particular, the new statute 35 U.S.C. 314(b)(3) provides the only explicit authority for third party requesters to file written comments other than the initial request for inter partes reexamination (which is limited to application of the newly cited art to the claims sought to be reexamined). The statute makes it clear that the third party requester's right to comment only matures with the filing of a response by the patent owner. There is nowhere in the statutes allowing a third party requester to file written comments without there being a patent owner response first. Therefore, new proposed rule 1.951, which authorizes the third party requester to file written comments responsive to a "close of prosecution" office action without there being a patent owner response first appears to exceed the authority granted by Congress. The section of the rule allowing a third party response to the patent owner's response is well within the granted authority.
Once the parties reach the appeal stage, the third party requester is permitted to "participate," and therefore would be authorized to file written comments without the necessity of a patent owner response first. However, since the close of prosecution office action does not trigger appeal rights, the parties have not reached the appeal stage and such "participation" is not yet ripe.
1. Leave the close of prosecution office action rule as is, in which case the third party requester must wait for a patent owner response before filing any comments. Of course, if that office action is favorable to patentability, the patent owner is likely to not file any response and thus the third party requester will have no choice but to wait for appeal rights to mature. On the other hand, if the office action is adverse to patentability, the patent owner will likely file a response to which the third party requester may file written comments.
2. Make the close of prosecution office action "final" in order to trigger appeal rights. Either party may then appeal. Unfortunately, I do not see any way to give the third party requester the right to comment where there has been no patent owner response, short of making the office action final and ripening the appeal right. However, I will consider other alternatives and correspond with you some time next week.
Thank you again for your attention to my call, and I look forward to speaking with you again.
Mark J. Rosen
Woodcock Washburn Kurtz Mackiewicz & Norris
One Liberty Place, 46th Floor
1650 Market Street Philadelphia, PA 19103