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Rules of Practice in Patent Cases; Reexamination Proceedings




                           [BILLING CODE 3510-16] 

 

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 

 

 

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) 308-6916 with a confirmation copy mailed to the  

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

reexamrule@uspto.gov. 

 

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  landerso@uspto.gov, 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 reexaminations 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 §§ 1.901 -1.997. 

 

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

§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 § 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,  § 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  

$1,210.00 for other than small entity.  The Office has proposed  an  

increase in the fee set by  § 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 § 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 reexaminations 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,  § 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, 1996. Paragraph (h) is  

proposed to be added to make it clear that for reexamination proceedings  

filed on or after January 1, 1996,  § 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,  § 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,  § 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,  §§ 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,   

§ 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,  § 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,  § 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,  § 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,  § 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,  § 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,  § 1.983 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 § 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 § 1.901 provides a system for citation of patents and printed  

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

person during the period of enforceability of the patent in accordance  

with 35 U.S.C. 301.  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 least 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  § 1.902 provides for the processing of prior art citations  

during a reexamination proceeding. 

 

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

 

Proposed § 1.904 provides that the notices published in the Official  

Gazette will be considered to be constructive notice. 

 

Proposed § 1.905 provides for submission of papers by the public.  

 

Proposed § 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 § 1.907 sets forth when reexamination is prohibited. Once an  

order to reexamine has been issued under § 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 §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 a reexamination requested by that party or its  

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

the Office. 

 

Proposed § 1.909 provides for estoppel of third party requesters 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 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 § 1.911 provides factors for consideration of privies and  

persons bound.   For the purposes of § 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.   For the purposes  

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

reexamination.  Paragraph (b) of new 

§ 1.915 indicates what each request for reexamination must include.    

Paragraph (c) of new  § 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 § 1.915(b) (10).  

 

Proposed § 1.917 indicates what will be done if the request is  

incomplete. 

 

Proposed § 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 § 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 of fact by the examiner or a  

response of the patent owner.   

 

Proposed § 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 § 1.925 refers to the refund provisions. 

 

Proposed § 1.927  provides for review by petition to the Commissioner of  

any decision refusing reexamination. 

 

Proposed § 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 § 1.931 provides for ordering reexamination where a substantial  

new question of patentability has been found pursuant to §§ 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 § 1.933 covers the duty of disclosure by a patent owner in a  

reexamination proceeding involving the owner's patent. 

 

Proposed § 1.935 indicates that the initial Office action normally  

accompanies the reexamination order.  

 

Proposed § 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 § 1.939 provides that no paper shall be filed before the first  

Office action. 

 

Proposed § 1.941 provides for proposed amendments provided for in 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 §

1.997 and 

35 U.S.C. 307 is issued.    

 

Proposed § 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 § 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 § 1.947  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 § 1.949  provides when prosecution may be closed. 

 

Proposed § 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  § 1.953 provides that, following the responses or expiration  

of the time for response in 

§ 1.951, the examiner may issue a right of appeal notice which shall  

include a final rejection or final decision favorable to patentability  

in accordance with 35 U.S.C. 134.   The intent of limiting the appeal  

rights until after the examiner issues a "Right of  Appeal Notice" is to  

specifically  preclude the possibility of one party attempting to appeal  

prematurely while prosecution before the examiner is being continued by  

the other party. 

 

Proposed  § 1.955 relates to the conduct of interviews in reexamination  

proceedings.  The third party requester is permitted to attend all  

interviews. Interviews are permitted before the first Office action only  

when initiated by the examiner.  

 

Proposed  § 1.957 relates to extensions of time and termination of  

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 the type of  

lack of response contemplated by paragraphs (b) and (c) and, therefore,  

not grounds for termination or limiting prosecution. 

 

Proposed  § 1.958 relates to revival of terminated proceedings. 

 

Proposed  § 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  § 1.961 relates to time of transfer of the jurisdiction of the  

appeal over to the Board of Patent Appeals and Interferences. 

 

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

 

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

 

Proposed  § 1.965 relates to the appellant brief. 

 

Proposed  § 1.967 relates to the respondent brief. 

 

Proposed  § 1.969 relates to the examiner's answer. 

 

Proposed  § 1.971 relates to the reply brief. 

 

Proposed  § 1.973 relates to the oral hearing. 

 

Proposed  § 1.975 relates to affidavits or declarations after appeal. 

 

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

and Interferences. 

 

Proposed  § 1.979 relates to the procedure following the decision by the  

Board of Patent Appeals and Interferences. 

 

Proposed  § 1.981 relates to the procedure for reopening prosecution  

following the decision by the Board of Patent Appeals and Interferences. 

 

 

 

Proposed  § 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  § 1.985 relates to notification of prior or concurrent  

proceedings. 

 

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

 

Proposed  § 1.991 relates to the merger of a concurrent reissue  

application and a  reexamination proceeding. 

 

Proposed  § 1.993 relates to the stay of  a concurrent interference and  

reexamination proceeding. 

 

Proposed  § 1.995 relates to a third party requester's participation  

rights being preserved in merged proceeding. 

    

Proposed § 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 

 

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: 

 

 §1.4  Nature of correspondence and signature requirements.  

    (a)  * * *   

        (2)   Correspondence in and relating to a particular  

application or other proceeding in the Office. See particularly  the  

rules relating to the filing, processing, or other proceedings  of  

national applications in Subpart B,  §§ 1.31 to 1.378; of international  

applications in Subpart C, §§1.401 to 1.499; of reexamination of  

patents filed before January 1, 1996, in Subpart D, 1.501 to 1.570, and  

of reexaminations filed on or after January 1, 1996, in Subpart H, §§

1.901-1.997;  of interferences in Subpart E;  §§ 1.601 to 1.690; of  

extension of patent term in Subpart F,  §§ 1.710 to 1.785; and of  

trademark applications  §§2.11 to 2.189.  

 

* * * * *  

 

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

 

§ 1.6 Receipt of Correspondence 

 

* * * * * 

 

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

 

* * * * * 

 

 

 

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

 

§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 or 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: 

 

 § 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 (§ 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 (§

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: 

 

§ 1.20 Post issuance fees. 

     

* * * * * 

 

    (c)  For filing a request for reexamination (§ 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: 

 

§ 1.25 Deposit accounts.   

     

* * * * *  

    (b)  Filing, issue, appeal, international-type search report,  

international application processing, petition, and post-issuance fees  

may be charged against these accounts if sufficient funds are on deposit  

to cover such fees.  A general authorization to charge all fees, or only  

certain fees, set forth in §§ 1.16 to 1.18 to a deposit account  

containing sufficient funds may be filed in an individual application,  

either for the entire pendency of the application or with respect to a  

particular paper filed.  An authorization to charge to a deposit account  

the fee for a request for reexamination pursuant to § 1.510 or § 1.915  

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: 

 

§ 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: 

 

§ 1.112 Reconsideration. 

    After response by applicant or patent owner (§ 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  § 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: 

 

§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 (§

1.191), or to amendment as specified in  § 1.116.  Petition may be taken  

to the Commissioner in the case of objections or requirements not  

involved in the rejection of any claim (§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: 

 

§ 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  §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 §§ 1.510(e) and  

1.530(b) prior to reexamination, and during reexamination  

proceedings in accordance with §§ 1.112 and 1.116.   For reexaminations  

filed on or after January 1, 1996, the patent owner may amend in  

accordance with § 1.915(c) prior to reexamination, and during  

reexamination proceedings in accordance with §§ 1.941 and 1.945. 

 

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

 

 § 1.116 Amendments after final action. 

    (a) After final rejection or action (§ 1.113) or action closing  

prosecution (§ 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 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 § 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 § 1.953. 

 

* * * * * 

 

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

follows: 

 

§ 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 § 1.136(b) for extensions of time relating  

to proceedings pursuant to § 1.193(b), 1.194, 1.196 or 1.197.  See  

§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 § 1.550(c) for  

extension of time in reexamination proceedings filed before January 1,  

1996, § 1.957 for extension of time in reexamination proceedings filed  

on or after January 1, 1996, and § 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 § 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, § 1.645 for extension of  

time in interference proceedings, 

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

before January 1, 1996, and § 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: 

 

§ 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 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 § 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.  

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

1996, see § 1.958. 

 

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

 

§ 1.191 Appeal to Board of Patent Appeals and Interferences. 

    (a) Every applicant for a patent or for reissue of a patent, 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 (§ 1.113), may, upon  

the payment of the fee set forth in § 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, § 1.959 et  

seq.,  is controlling. 

 

* * * * * 

  

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

 

§ 1.192 Appellant's brief. 

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

notice of appeal under § 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 § 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, § 1.965 is controlling. 

 

* * * * *  

 

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

to read as follows: 

     

§ 1.193 Examiner's answer. 

 

* * * * * 

    (c) Notwithstanding the above, for reexamination proceedings filed  

on or after January 1, 1996, §§ 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: 

     

§ 1.194   Oral hearing. 

 

* * * * * 

    (d) Notwithstanding the above, for reexamination proceedings filed  

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

         

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

 

§ 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,  § 1.975 is controlling.  

 

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

to read as follows: 

     

§ 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, § 1.977 is controlling. 

 

         

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

to read as follows: 

         

§ 1.197 Action following decision. 

 

* * * * * 

 

    (d) Notwithstanding the above, for reexamination proceedings filed  

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

         

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

         

§ 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  § 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, § 1.981 is controlling. 

 

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

 

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

    Any applicant or any owner of a patent involved in 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  §§ 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,  

§ 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: 

 

§ 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 (§ 1.301), have remedy by civil action under 35  

U.S.C. 145 or 146, as appropriate. Such civil action must be commenced  

within the time specified in § 1.304. 

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

involved in 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: 

  

§ 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 §§ 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 Proceedings 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) 

§ 1.901 Citation of prior art in patent files. 

§ 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 PATENTS 

§ 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 INVOLVING SAME PATENT AS IN REEXAMINATION 

§ 1.985 Notification of prior or concurrent proceedings. 

§ 1.987 Stay of concurrent proceeding. 

§ 1.989 Merger of concurrent reexamination proceedings. 

§ 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  

proceeding. 

CERTIFICATE 

§ 1.997 Issuance of reexamination certificate after reexamination  

proceedings. 

 

§ 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 explanation 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 for in § 1.33(c); or in the  

event service is not possible, 

               (2) be filed with the Office in duplicate. 

    (d)  Except as provided in §1.902, citations submitted in  

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

patent file.  

§ 1.902 Processing of prior art citations in patent files during a  

reexamination proceeding. 

    Citations by the patent owner in accordance with § 1.933 and by a  

reexamination third party requester under § 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 § 1.931 will be  

delayed until the reexamination proceeding has been terminated. 

 

REEXAMINATION PROCEEDINGS 

 

§ 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 § 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.   

 

§ 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 published in the Official Gazette under § 1.11(c)  

will be considered to be constructive notice of the reexamination  

proceeding and 

reexamination will proceed. 

 

§ 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  

§ 1.915 or entered in the patent file prior to the date of the order to  

reexamine pursuant to § 1.931.  Submissions by third parties, other than  

third party requesters, filed after the date of the order to reexamine  

pursuant to § 1.931, must meet the requirements of 

§ 1.901(a) through (c) and will be treated in accordance with § 1.902. 

§ 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. 

 

§ 1.907 Reexamination prohibited. 

    (a) Once an order to reexamine has been issued under § 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 § 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. 

 

§ 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 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. 

  

§ 1.911 Privies and persons bound. 

    (a) For the purposes of § 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 §§ 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. 

    (c) For the purposes of §§ 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 

     

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

except for the best mode requirement. 

 

§ 1.915 Content of request. 

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

reexamination set in § 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 § 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 

§ 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 § 1.34(a). 

 

§ 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 § 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 § 1.901  

and/or § 1.902. 

 

§ 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. 

 

§ 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. 

 

§ 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 based on the  

claims in effect at the time of the determination and will become a part  

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

owner at the address as provided for in § 1.33(c) and to the person  

requesting reexamination. 

 

§ 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 reexamination will be  

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

 

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

    The requester may seek review by a petition to the Commissioner under  

§ 1.181 within one month of the mailing date of the examiner's  

determination refusing reexamination. Any such petition must comply with §

1.181(b).  If no petition is timely filed or if the decision on petition  

affirms that no substantial new question of patentability has been raised,  

the determination shall be final and nonappealable. 

 

REEXAMINATION OF PATENTS 

 

§ 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 § 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 § 1.33(c). 

 

§ 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 § 1.927, the reexamination will ordinarily be conducted by an examiner  

other than the examiner responsible for the initial determination under §

1.923. 

 

INFORMATION DISCLOSURE 

 

§ 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 § 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 soon 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 § 1.906(c). 

 

OFFICE ACTIONS AND RESPONSES (BEFORE THE EXAMINER) 

 

§ 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. 

 

§ 1.937 Conduct of Reexamination. 

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

Board of Patent Appeals and Interferences, will be conducted with special  

dispatch within the Office, unless the Commissioner makes a determination  

that there is good cause for suspending the reexamination proceeding.  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; §§ 1.104 through 1.119, and will result in the  

issuance of a reexamination certificate under § 1.997. 

 

§ 1.939 Unauthorized papers.  

    Unless authorized by the reexamination regulations (§§ 1.901-1.997),  

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 § 1.923 and  

will be returned. 

 

§ 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  

§ 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. 

 

§ 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. 

 

§ 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. 

 

§ 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. 

 

 

 

§ 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. 

 

§ 1.951  Responses after Office action closing prosecution. 

    (a)   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  § 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. 

 

§ 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 §

1.997 in accordance with the last action of the Office.  

 

INTERVIEWS 

 

§ 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 § 1.111. 

 

 

 

EXTENSIONS OF TIME AND REVIVAL OF PROCEEDINGS 

 

§ 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 § 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  § 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, 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. 

 

§ 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 § 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  § 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 paragraphs (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  § 1.957(a). 

 

 

 

 

APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES 

 

§ 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 § 1.953 and paying the fee set  

forth in § 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 §1.953 and paying the fee set  

forth in § 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 § 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 § 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  §§ 1.959 through 1.969 are subject to  

the provisions of 

§ 1.957(a) for reexamination proceedings. See  § 1.304(a) for extensions of  

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

Federal Circuit. 

 

§ 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. 

 

§ 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.  

 

§ 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. 

 

§ 1.965 Appellant brief.  

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

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

accordance with § 1.903.  The brief must be accompanied by the requisite  

fee set forth in § 1.17(f) and must set forth the authorities and 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 to 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, statutes, and parts  

of the record relied 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.  

 

 

 

§ 1.967  Respondent brief. 

    (a)  The brief(s) of the respondent(s) specified in § 1.963 must be  

filed in triplicate, served on all other parties in accordance with § 1.903  

and be accompanied by the requisite fee set forth in 

§ 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 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 §§

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.  

§ 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 § 1.181. 

 

§ 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 directed  

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 § 1.957 for extensions of time for  

filing a reply brief. 

 

§ 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  

§ 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  

§ 1.967, desires an oral hearing, he or she must file a written request for  

such hearing accompanied by the fee set forth in 

§ 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 § 1.967,  

requests an oral hearing and submits therewith the fee set forth in  

§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 § 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 § 1.967,  

the appeal will be assigned for consideration and decision. If an appellant  

or respondent who has filed  a respondent brief under § 1.967  has  

requested an oral hearing and has submitted the fee set forth in § 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 § 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. 

 

§ 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. 

 

§ 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 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 § 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, render 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 § 1.957(a) for extensions of time to take action under this  

section. 

 

§ 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, in 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 § 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 Commissioner will issue a certificate under § 1.997. 

 

§ 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 § 1.979 without the written authority of the  

Commissioner, and then only for the consideration 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 § 1.967 may again  

present comments pursuant to § 1.947 and may appeal or participate in an  

appeal by the patent owner pursuant to § 1.959. 

 

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. 

    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 to the Commissioner (see §§ 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 § 1.909, unless, within twenty days after the  

patent owner has filed notice of appeal pursuant to § 1.983(a), the third  

party requester files notice with the Commissioner electing to participate. 

 

PROCEEDINGS INVOLVING SAME PATENT AS IN REEXAMINATION 

 

§ 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.  

 

§ 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.   

 

§ 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 § 1.997.  

    (b)  A reexamination proceeding filed under § 1.915 which is merged with  

a reexamination proceeding filed under § 1.510 will result in the merged  

proceeding being  governed by  §§ 1.901 - 1.997. 

 

§ 1.991 Merger of concurrent reissue application and reexamination  

proceeding. 

    If a reissue application and a reexamination proceeding on which an  

order pursuant to  § 1.931 has been mailed are pending concurrently on a  

patent, a decision may be made to merge the two proceedings or to  stay  

one of the two proceedings. Where merger of a reissue application and a  

reexamination  proceeding is ordered, the merged examination will be  

conducted in accordance with 

 §§ 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 reissued patent. 

 

§ 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 (§ 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. 

 

§ 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 

 

§ 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 § 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 § 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 § 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. 

  

Date:  August 1, 1995                              Bruce A. Lehman

                                                   Assistant Secretary of Commerce

                                                                 and

                                                Commissioner of Patents and Trademarks





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