DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
37 CFR Part 1
[Docket No. 000308064-0064-01]
RIN 0651-AB04
Rules To Implement Optional
Inter Partes Reexamination Proceedings
AGENCY: U.S. Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The U. S. Patent and Trademark Office (the Office) is proposing
to amend its rules of practice in patent cases to provide revised
procedures for the reexamination of patents and thereby implement
certain provisions of ``the American Inventors Protection Act of 1999.''
``The American Inventors Protection Act of 1999'' included an amendment
to the Patent Act to authorize the extension of reexamination
proceedings via an optional inter partes reexamination procedure in
addition to the present ex parte reexamination procedure as a means for
improving the quality of United States patents. The Office intends,
through this amendment of its rules, to provide patent owners and the
public with guidance on the procedures that the Office will follow in
conducting optional inter partes reexamination proceedings in addition
to the present ex parte reexamination proceedings.
The American Inventors Protection Act of 1999'' also made other
miscellaneous changes to the Patent Act which relate to reexamination,
and it is intended that this amendment of the Office's rules will
implement those changes relating to reexamination.
DATES: Comment Deadline Date: To ensure consideration of written
comments, they must be received at the Office no later than June 12,
2000. While comments may be submitted after this date, the Office cannot
ensure that consideration will be given to such comments. No public
hearing will be held.
Public Inspection of Comments: Written comments will be available for
public inspection on or about June 20, 2000.
ADDRESSES: Those interested in submitting written comments should send
their written comments to the attention of Kenneth M. Schor, Senior
Legal Advisor, by electronic mail message over the Internet addressed to
reexam.rules@uspto.gov and titled ``Inter Partes Reexamination.''
Written comments may also be submitted by mail addressed to U.S. Patent
and Trademark Office, Box Comments--Patents, Commissioner for Patents,
Washington, DC 20231, marked to the attention of Kenneth M. Schor; or by
facsimile transmission to (703) 872-9408, marked to the attention of
Kenneth M. Schor. Although comments may be submitted by e-mail, mail, or
facsimile, the Office prefers to receive comments via e-mail over the
Internet. Where comments are submitted by mail, the Office would prefer
that the comments be submitted on a DOS formatted 3 1/4 inch disk
accompanied by a paper copy.
Written comments will be available for public inspection at the
Patent Examination Policy Law Office, Office of the Deputy Assistant
Commissioner for Patent Policy and Projects, located at Crystal Plaza
Four, Room 3C23 (receptionist), 2201 South Clark Place, Arlington,
Virginia. In addition, written comments in electronic form may be made
available via the Office's World Wide Web site at http://www.uspto.gov.
FOR FURTHER INFORMATION CONTACT: Kenneth M. Schor or Gerald A. Dost,
Senior Legal Advisors. Kenneth M. Schor may be contacted (a) by
telephone at (703) 305-1616; (b) by mail addressed to: U.S. Patent and
Trademark Office, Box Comments--Patents, Commissioner for Patents,
Washington, DC 20231, marked to the attention of Kenneth M. Schor; (c)
by facsimile transmission to (703) 872-9408, marked to the attention of
Kenneth M. Schor; or (d) by electronic mail message over the Internet
addressed to reexam.rules@uspto.gov and titled ``Inter Partes
Reexamination.''
Gerald A. Dost may be contacted (a) by telephone at (703) 305-1616;
(b) by mail addressed to: U.S. Patent and Trademark Office, Box
Comments--Patents, Commissioner for Patents, Washington, DC 20231,
marked to the attention of Gerald A. Dost; (c) by facsimile transmission
to (703) 308-6916, marked to the attention of Gerald A. Dost; or (d) by
electronic mail message over the Internet addressed to
reexam.rules@uspto.gov and titled ``Inter Partes Reexamination.''
SUPPLEMENTARY INFORMATION:
Background
This proposed rulemaking sets forth distinct procedures directed
toward determining and improving the quality and reliability of United
States patents. The procedures provide for the optional inter partes
reexamination procedures in addition to the present ex parte
reexamination procedures for the reexamination of patents as provided
for by the American Inventors Protection Act of 1999 as part of the
conference report (H. Rep. 106-479) on H.R. 3194, Consolidated
Appropriations Act, Fiscal Year 2000. The text of the American Inventors
Protection Act of 1999, is contained in Title IV of S. 1948, the
Intellectual Property and Communications Omnibus Reform Act of 1999
(Pub. L. 106-113), the Act which is incorporated by reference in
Division B of the conference report. The procedures also provide for
implementation of other miscellaneous changes to the reexamination of
patents also provided for in Public Law 106-113.
In 1995, the Office published proposed rules in anticipation of H.R.
1732, 104th Cong., 1st Sess. (1995), a predecessor for the present inter
partes reexamination statute. H.R. 1732 did not, however, mature into a
statute. H.R. 1732 resulted from suggestions and comments to the
Administration by the public, bar groups, and the August 1992 Advisory
Commission on Patent Law Reform suggesting more participation in the
reexamination proceeding by third-party requesters. In response to H.R.
1732, the Office issued a Notice of Proposed Rulemaking entitled ``Rules
of Practice in Patent Cases; Reexamination Proceedings,'' which Notice
was published in the Federal Register at 60 FR 41035 (August 11, 1995)
and in the Official Gazette at 1177 Off. Gaz. Pat. Office 130 (August
22, 1995). Sixteen written comments were received in response to the
August 1995 Notice of Proposed Rulemaking. A public hearing was held at
9:30 a.m. on September 20, 1995. Eight individuals offered oral comments
at the hearing. The sixteen written comments and a transcript of the
hearing are available for public inspection in the Patent Examination
Policy Law Office, Office of the Deputy Commissioner for Patent
Examination Policy, located at Crystal Plaza Four, Room 3C23
(receptionist), 2201 South Clark Place, Arlington, Virginia. The present
proposed rulemaking addresses, and takes into consideration, the
comments received in response to the 1995 proposed rules.
Discussion of General Issues Involved
This proposed rulemaking is in response to Public Law 106-113, the
Act which resulted from suggestions and comments to the Administration
by the public, bar groups, and the August 1992 Advisory Commission on
Patent Law Reform suggesting more participation in the reexamination
proceeding by third-party requesters. Under the inter partes
reexamination rules proposed herein, third-party requesters will have
greater opportunity to participate in reexamination proceedings in
keeping with the spirit and intent of the new law. At the same time,
participation will be limited to minimize the costs and other effects of
reexamination requests on patentees, especially individuals and small
businesses.
Ex parte reexamination proceedings filed under Chapter 30 of 35 U.S.C.
(both before and after the effective date, November 29, 1999, of the new
law) will continue to be governed by 37 CFR 1.501-1.570. The proposed
rules for optional inter partes reexaminations under Chapter 31 of 35
U.S.C. have been numbered 37 CFR 1.902-1.997.
The effective date of the statute with respect to the optional inter
partes reexamination proceedings as well as to the existing ex parte
reexamination proceedings is complex. With the exception of the
amendments to 35 U.S.C. 41(a)(7) directed to the revival of terminated
ex parte and inter partes reexamination proceedings, the new statute and
the conforming amendments to the present statute take effect on the date
of enactment, November 29, 1999. The changes, however, only apply to a
reexamination of a patent that issues from an original application which
was filed in the United States on or after November 29, 1999. Thus, for
inter partes reexaminations, the effective date language (in section
4608 of S. 1948) limits the applicability of the new inter partes
reexamination Chapter 31 of 35 U.S.C., and that of the conforming
amendments to 35 U.S.C. 134, 141, 143 and 145, to any patent that issues
from an original application filed in the United States on or after
November 29, 1999, the effective date of Public Law 106-113. For ex
parte reexaminations filed under Chapter 30 of 35 U.S.C., the conforming
amendments to 35 U.S.C. 134, 141, 143 and 145, only apply to those ex
parte reexamination proceedings filed under Sec. 1.510 for patents that
issue from an original application that is filed in the United States on
or after November 29, 1999. The conforming amendments to 35 U.S.C. 134,
141, 143 and 145, correspondingly, will not apply to ex parte
reexamination proceedings filed under 1.510 for patents that issue
from an original application filed in the United States prior to
November 29, 1999.
The conforming amendments also amend 35 U.S.C. 41(a)(7) to include the
words ``any reexamination proceeding'' under the ``unintentional''
revival provisions of the statute for an unintentionally delayed
response by the patent owner in any reexamination proceeding. These
words ``any reexamination proceeding'' clearly make this section
applicable to both ex parte reexaminations and inter partes
reexaminations. The effective date of the amendment to 35 U.S.C.
41(a)(7), however, is one year after the date of enactment of the Act,
or November 29, 2000. See section 4608 of S. 1948. Thus, as of November
29, 2000, any ex parte or inter partes reexamination filed before, on,
or after November 29, 2000, is subject to the ``unintentional'' revival
provisions of the statute.
Regarding the reexamination fee, 35 U.S.C. 41(d) requires the Director
of the United States Patent and Trademark Office (the Director) to set
the fee for the new optional inter partes reexamination at a level which
will recover the estimated average cost of the reexamination proceeding
to the Office. The estimated average cost is $8,800 for an inter partes
reexamination proceeding. The difference in price between an ex parte
reexamination ($2,520) and an inter partes reexamination ($8,800) takes
into account that the Office will expend substantially more resources
for examination, supervision, training, etc., where the third-party
requester participates in an inter partes reexamination proceeding, and
for the additional processing steps that are expected during an inter
partes reexamination proceeding.
Considerations of the Comments Responding to the August 1995 Notice of
Proposed Rulemaking
In 1995 the Office published proposed rules in anticipation of a
predecessor bill to the present inter partes reexamination statute,
which bill did not mature into a statute. The Office issued a notice of
proposed rulemaking entitled ``Rules of Practice in Patent Cases;
Reexamination Proceedings,'' which was published in the Federal Register
at 60 FR 41035 (August 11, 1995) and in the Official Gazette at 1177
Off. Gaz. Pat. Office 121 (August 22, 1995). Sixteen written comments
were received in response to the August 1995 notice. Also, a public
hearing was held on September 20, 1995, during which eight individuals
offered oral comments. The following 28 issues summarize the comments,
and the Office response.
Issue 1
Eleven comments addressed the issue of the reexamination filing fees
set in the August 11, 1995, Notice of Proposed Rulemaking. The fees set
in 1995 were $4,500 for a request by a patent owner and $11,000 for a
request by a third-party requester. The discussion below relates to the
1995 proposed fees. The current proposed $8,800 inter partes
reexamination fee is the result of a reevaluation of the inter partes
reexamination parameters, and how inter partes reexamination will be
conducted in view of the comments.
A first comment questioned why the reexamination filing fees set
in the August 11, 1995, Notice of Proposed Rulemaking were many times
those for original and reissue applications. A second comment
questioned the disparity between fees for the patent owner and
the third-party requester, suggesting that more reasonable fees
be set initially until actual costs become known, since higher fees will
discourage reexaminations. Further, it was urged that the distinction in
the fees was inappropriately being based upon the legal positions of the
parties (upholding or striking down a patent). Even further, it was
pointed out that the fee structure provides a possibility of a windfall
of $15,500 should both a patent owner and a third-party requester file a
request for reexamination. A third comment asserted that the disparity
was greater than a factor of two, whereas the reason given was that it
would entail twice the effort. A fourth comment supported the fees,
suggesting that the fee of $11,000 will discourage inappropriate requests
and the harassing of individual inventors and small businesses. A fifth
comment suggested that the cost of the reexamination proceedings be
subsidized by fees collected from other services offered by the Office,
that the fees should be apportioned in stages and charged as the
reexamination progresses (e.g., higher fees for appeals), and that there
should be legislation to permit small entity discounts for reexamination
fees. A sixth comment also suggested that the fees should be apportioned
and charged as the reexamination progresses. The sixth comment
additionally suggested that if the higher fees are warranted, there should
be a more thorough examination of all cited and searched prior art by an
independent supervisory examiner or a board of three examiners. A seventh
comment asserted that since no new search is required of the examiner in
the reexamination proceeding, the time and effort expended in a
reexamination do not warrant a fee that is 14 times that of a regular
application, which is not consistent with Congressional intent to provide
a low cost alternative to litigation, and in view of the alternative to
prepare and file another patent application and where appropriate initiate
a more costly interference proceeding. An eighth comment suggested that
there should be a special reduced fee for reexamination requested within
a short period (e.g., six months) following the issuance of a patent,
since the reexamination could be assigned to an examiner already familiar
with the case, which fee should be the same as a continuing application
for patent owners and double for third-party requesters. The ninth and
tenth comments were directed to the impact of the $11,000 fee on
independent inventors and small companies. The ninth comment suggested
that the fees favored large businesses. The tenth comment suggested that
a fee waiver system similar to that for Freedom of Information Act (FOIA)
requests be adopted. In contrast, the eleventh comment stated that the fee
was not a pivotal issue with respect to third parties participating in
reexaminations, rather the pivotal issue is the perception today
(under current rules) that the reexamination proceeding is not a level
playing field. Accordingly, the fee should not be subsidized.
Response to Issue 1
Initially, it is noted that the inter partes reexamination fee
structure has been reevaluated by the Office. The estimated average cost
is $8,800 for an inter partes reexamination. Accordingly, 1.20, as
proposed in the present rule making, will require a filing fee of $8,800
for an inter partes reexamination under 1.915(a).
As to the first and seventh comments asserting the disparity between
costs for a regular patent application and an inter partes
reexamination, it is not appropriate to compare these figures. Fees for
filing an application are set by statute under 35 U.S.C. 41(a) and are
not set at a cost recovery level. In fact, the statutory filing fee for
an application is much lower than the average cost of the examination of
the application. In contrast, the statutory patent maintenance fees set
forth in 35 U.S.C. 41(b) are a significant source of income to the
Office for very little actual work, which are, in effect, an offset for
the application filing fee. On the other hand, the reexamination fees
under 35 U.S.C. 41(d) must fully recover the cost of the reexamination.
The submissions will be numerous in an inter partes reexamination
proceeding, e.g., multiple responses and comments by the patent owner
and third-party requester responsive to the Office and to each other.
Further, these responses and comments are expected to be thorough and
extensive which in turn must be analyzed by the examiner, requiring the
expenditure of substantial time and resources. The additional
examination hours, supervisory oversight, and other processing steps
unique to inter partes reexamination have to be factored into the fees.
The inter partes examination process is expected to require close policy
oversight by legal advisors in the Patent Examination Policy Law Office,
in addition to the extra resources needed to handle the anticipated
increased number of submissions by the parties. The reexamination filing
fee being set in the present rule package is $8,800 for filing a request
for an inter partes reexamination under proposed 1.913(a). This fee
is considered to be appropriate based on the Office projections of the
amount of work that will be required.
As to the second and third comments, directed to the disparity between
fees for the patent owner and the third-party requester, it is noted
that the current statute retains the current ex parte reexamination
statute and provides an optional inter partes reexamination. It is
anticipated that the expense of an inter partes reexamination will be
substantially more than the expense of an ex parte reexamination and,
consequently, the fees reflect this. Generally speaking, during the
examination of an ex parte reexamination, the examiner applies the best
art and normally limits the number of rejections made for a given claim
to the best grounds. When responding to a third-party requester of an
inter partes reexamination, the Office's preparation of an Office action
will include responding to all of the multiple alleged grounds for
rejections put forward (proposed) by the third-party requester. All of
the grounds proposed by the third- party requester must be addressed by
the examiner, because any proposed ground of rejection not adopted is a
decision favorable to patentability which is subject to appeal by the
third-party requester to the Board of Patent Appeals and Interferences.
Thus, the extra effort needed for an inter partes reexamination entails
not merely responding to amendments and arguments of the patent owner,
but the substantially higher burden of responding to the arguments of
the third-party requester and the many multiple decisions as to why a
particular rejection is or is not an appropriate one to make. As to the
second comment in particular, the difference in the amount of the fees
is based on these projected costs and not on the legal position of the
parties. As to the fourth comment regarding the discouragement of
inappropriate requests, the setting of the filing fees is strictly based
on cost expectations and not for the purpose of discouraging
inappropriate reexamination requests.
Subsidizing of the cost of the reexamination proceedings (as suggested
by the fifth comment and opposed by the eleventh comment) through
increased costs to users of other services offered by the Office (as an
alternative to pricing based on cost recovery) would naturally be viewed
with disfavor by the users of other services. Also, the Office is not
authorized to permit small entity reductions in reexamination filing
fees. As to the suggestion regarding the apportionment of costs in
stages as the proceeding evolves (e.g., higher fees at the appeal stage)
(mentioned in the fifth and sixth comments), this is not practical since
there would be no way to guarantee recovery of the total cost of
reexamination. A third-party requester may decide to drop out of the
reexamination and not pay the next required fee. The reexamination,
however, would have to continue to resolve issues that had been raised.
Moreover, appeal fees are set by statute under 35 U.S.C. 41(a)(6) and
are not part of the reexamination filing fee. As to the utilization of a
team of examiners to facilitate a review by a panel prior to forwarding
the reexamination to the Board of Patent Appeals and Interferences, it
is anticipated that appeal conferences will be made mandatory so that
all work of an examiner will be thoroughly reviewed prior to the filing
of an examiner's answer. Implementation of such review is better set by
Office policy rather than by rule making.
As to the suggestion in the eighth comment that the fees be reduced for
filing a request for reexamination within a short period (e.g., six
months) following the issuance of a patent, reexaminations are generally
based upon new prior art raising new issues so that the benefits (if
any) of filing a reexamination within a short time after issuance of a
patent would not warrant a reduction in fees. The ninth and tenth
comments were directed to the impact the $11,000 fee required in the
August 11, 1995, Notice of Proposed Rulemaking (for all reexaminations)
will have on independent inventors and small companies. With respect to
this, it should be noted that, as the statute has now been drafted and
passed into law (Pub. L. 106-113), the filing of an ex parte
reexamination is still available to a third-party requester, and the
filing fee for such is $2,520. Thus, a less costly ex parte
reexamination will be available to members of the public who may not be
able to afford a full scale inter partes reexamination which has a
currently proposed filing fee of $8,800.
Issue 2
Two comments in response to the August 11, 1995, Notice of Proposed
Rulemaking suggested that the Office reconsider the refund provisions.
One comment suggested that the 75% refund of the fee should be reduced,
since third parties who file unjustified requests should not be rewarded
by so great a refund. Another comment suggested that the difference
between the fees for a patent owner and a third-party requester varied
by more than a factor of two and that it was difficult to rationalize
why a refund of 75% would be provided for both instead of charging a
flat fee of $1500 if the Director decides not to institute a
reexamination proceeding (since the amount of work done in both cases
should not differ).
Response to Issue 2
The comments have been adopted. Section 1.26(c), as currently
proposed, sets the amount of refund to provide for the retention of a
uniform fee of $830, with the remainder of the filing fee being
refunded, for all reexamination requests where the Director decides not
to institute a reexamination proceeding. For the ex parte reexamination
fee of $2,520, an amount of $1,690 will be returned, thus resulting in a
retention of $830. For the inter partes reexamination fee of $8,800, an
amount of $7,970 will be returned, again resulting in a retention of
$830. The amount of $830 being retained by the Office is based on
projected cost expectations and is not for the purposes of penalizing
unwarranted requests, since it is neither desirable nor appropriate to
penalize parties for whom requests for reexamination are denied.
Issue 3
One comment in response to the August 11, 1995, Notice of Proposed
Rulemaking suggested that the third-party requester should be
required to certify that the request for reexamination contains all
information that the requester regards as materially adverse to the
patentability of the patent.
Response to Issue 3
This suggestion has not been adopted since it is in the third-party
requester's best interests to submit all information that the requester
regards as materially adverse to patentability with the request for
reexamination in order to increase the possibility of the request for
reexamination being granted. Moreover, proposed 1.948 of the present
rule package now provides that prior art submissions by the third-party
requester filed after the inter partes reexamination order shall be
limited to: (1) Any prior art which is necessary to rebut a finding of
fact by the examiner or a response of the patent owner; or (2) any prior
art which became known or available to the third-party requester after
the filing of the inter partes reexamination proceeding. This is
additional incentive to submit all known (and available) material prior
art with the request.
Issue 4
Four comments in response to the August 11, 1995, Notice of Proposed
Rulemaking were directed to the selection of the examiner and/or number
of examiners. A first comment opined that it was Office practice to
assign the reexamination to the examiner who originally examined and
issued the patent and not on the basis of the classification of the art.
The comment further noted the assignment to the same examiner defeats
the underlying purpose of reexamination and petitioning for a transfer
to a different art unit based on the classification of the art can also
be unsuccessful, despite the ``Transfer Procedure'' in MPEP Section 2237
for those times when a reexamination request should be assigned to a
different group art unit. The comment suggested that if a third-party
requester requests a reexamination, it should be conducted by a
different examiner, and further, if appropriate, assigned to a different
art unit. A second comment noted that 1.931(b) of the August 11, 1995,
Notice of Proposed Rulemaking provides the only limitation placed on the
selection of the examiner, namely that an examiner whose decision
refusing reexamination has been reversed will not ordinarily conduct the
reexamination. The comment suggested reevaluating the practice of
assigning the same examiner who prosecuted the application which issued
as a patent to conduct the reexamination, since many practitioners feel
that the original examiner may have a bias against fully considering prior
art during a reexamination proceeding. A third comment stated that since
an inter partes reexamination proceeding is more complicated to manage
than an ex parte reexamination proceeding, the inter partes reexamination
proceeding is likely to require a higher degree of technical and legal
competence in making a determination of patentability than is normally
required in an ex parte reexamination proceeding. An examiner in an inter
partes reexamination proceeding will be required to weigh and assess the
credibility of often conflicting arguments, theories of operation, and
evidence when making a determination of patentability. Although statistics
appear to indicate that there is no inherent bias in the conduct of a
reexamination proceeding when the proceeding is assigned to the same
examiner who issued the patent, many perceive a bias (in favor of the
patent owner) when the reexamination proceeding is assigned to the same
examiner. The comment advocated assigning the reexamination proceeding to
the best qualified examiner available, given the technical, legal, and
procedural complexities that are likely to arise in the reexamination
proceeding. The comment also suggested the formation of a separate unit
of examiners to handle the new reexamination proceedings, or at least
those which involve a third-party requester. The fourth comment suggested
that the number of examiners be increased from one to three, including a
supervisory primary examiner and a Group Director, in order to increase
the probability of a ``correct'' decision and develop a higher degree of
confidence in the reexamination process, and avoid situations where a
third-party requester feels the examiner did not understand the prior art,
the interview, or the declarations, etc. The comment suggested that the
small increase in Office costs, and fees to be charged to participants,
will probably be offset by having fewer appeals (and law suits) filed
(which is of benefit to the public), and will still be a cost-effective
means of resolving patent disputes, as compared to litigation. The fifth
comment suggested that more than one examiner be responsible for issuing
the Right of Appeal Notice, similar to the European Patent Office.
Modification of the proposed rules to allow a decision from a panel of
three capable examiners, would result in a higher degree of quality in
the reexamination process and less ancillary issues later being raised
(such as examiner bias or an examiner's lack of understanding of the
relevant art or law). The comment suggested that the panel could include,
for example, a legal specialist within the Examining Group, the original
examiner of the application, and a primary examiner having knowledge of
the relevant technical field and the record would reflect when a panel
member concurs or dissents.
Response to Issue 4
As to the selection of the examiner, studies conducted by the Office
have not discovered any bias irrespective of whether the same or a
different examiner handles the reexamination. The same examiner should
not be biased toward confirming patentability, because a reexamination
is not a rehash of old issues, but rather, a new question of
patentability. In spite of the above, the Office is, for the most part,
adopting the comment suggesting assignment of the reexamination to an
examiner other than the one who originally examined and issued the patent.
The comment is being adopted in order to eliminate public perception
of bias by the original examiner who handled the patent. The comment
will be implemented as a matter of policy, rather than by rule change.
The MPEP will be revised to set policy that unless a Group Director
needs to make an exception, a reexamination will not be assigned to a
Supervisory Patent Examiner, a primary examiner, or a junior examiner
who was actually involved (by preparing/signing an action on the merits)
in the examination and issuance of the patent undergoing reexamination.
As to the Office personnel to be involved in the reexamination
proceedings, the Office is considering the creation of a special group/
unit having legal advisors trained in inter partes reexamination
procedures to oversee the examination of the inter partes reexamination
by the patent examiner in the examining group. For technical expertise,
an examiner selected from the groups will be assigned the reexamination.
The advantage of such a special group/unit is that it will include the
examiner most familiar with the technology to make the patentability
decisions and legal advisors to provide uniformity of the reexamination
practice and procedure.
As to the comment suggesting that the number of examiners handling a
reexamination proceeding be increased from one to three, the following
is to be noted. In order to provide a thorough review by a team of
examiners, a practice is being considered to hold a panel review just
prior to the decision on the request for reexamination (order/denial) is
issued and at the close of prosecution (i.e., just prior to
``allowance'' of the reexamination or just prior to issuing a right of
appeal notice and final rejection). The panel review will be similar to
the appeal conference review done in an application on appeal. It should
further be noted that appeal conferences are already mandatory before a
reexamination leaves the examiner for a decision by the Board of Patent
Appeals and Interferences. If adopted, this will be implemented as a
matter of policy, rather than by rule change.
Issue 5
One comment responding to the August 11, 1995, Notice of Proposed
Rulemaking suggested that the content of the ``prior art'' made
available for review by the Office should also include inter partes
sworn testimony of the inventor(s) and others associated with the
implementation of the invention and any patent work thereon covering
their knowledge of the known prior art, related industry practices, and
the like, which evidence may also impeach the inventor(s) and others in
the sense of withholding known prior art from the Office.
Response to Issue 5
The Advisory Commission on Patent Law Reform: A Report to the
Secretary of Commerce, August 1992, at page 117, recommended limitations
on the scope of documentary prior art evidence and cautioned against
reliance on testimonial evidence in light of the abuses of the process
which occurred in the reissue protest proceedings under the Dann
Amendments. The Commission found the Office to be an inappropriate forum
for addressing all issues of validity. Affidavits or declarations which
merely explain the contents or pertinent dates of prior patents or
printed publications in more detail may be considered during
reexamination, but any rejection must be in accordance with proposed
1.906(a) (Scope of reexamination in reexamination proceeding). Proposed
1.906(a) limits the scope of reexamination in that claims in an inter
partes reexamination proceeding will be examined on the basis of patents
or printed publications and, with respect to subject matter added or
deleted in the reexamination proceeding, on the basis of the
requirements of 35 U.S.C. 112.
Issue 6
One comment in response to the August 11, 1995, Notice of Proposed
Rulemaking suggested that when an examiner allows a claim, the decision
of the examiner should be supported by a well-reasoned opinion
establishing the examiner's reasons for allowance. The comment stated
that although 1.109 provides that the examiner ``may set forth such
reasoning'' for the allowance, this is rarely done and often with only a
brief note. It was pointed out that well-reasoned opinions are
critically important in inter partes reexamination procedure to third-
party requesters (or patent owners) who are actively participating and
who need the reasons for allowance (or for final rejection) in deciding
whether to appeal.
Response to Issue 6
Office policy will direct the examiner to make a complete record of
the reasons for allowing or rejecting a claim at various stages during
the proceeding. Note further that, according to currently proposed
1.953 (Examiner's Right of Appeal Notice), the Right of Appeal Notice is
required to include ``an identification of the status of each claim, and
the reasons for patentability and/or the grounds of rejection for each
claim.'' Thus, the examiner's reasons for patentability and/or the
grounds of rejection will be available in inter partes reexamination
procedure to the third-party requesters (and patent owners) who are
actively participating and who need the reasons for allowance (or the
grounds for final rejection) in deciding whether to appeal.
Issue 7
One comment in responding to the August 11, 1995, Notice of Proposed
Rulemaking questioned whether in view of the new fee structure, the
examiner will be required to do a new search of the prior art.
Response to Issue 7
The Office has chosen to rely upon the examiner's judgment and
expertise in determining how much searching should be done in the
reexamination proceeding. If the examiner believes that additional prior
art patents and publications can be readily obtained by searching to
supply any deficiencies in the prior art cited in a request, the
examiner has the option of performing an additional search. The examiner
is not required to, and will not routinely, make a full search.
Comments Directed to Specific Rules
Issue 8
One comment stated the belief that 1.901 of the August 11, 1995,
Notice of Proposed Rulemaking (which relates to the submission of prior
art) places an unnecessary burden on a person to cite art to be placed
in the file of an issued patent. A patentee who obtains prior art as a
result of a foreign search report or by a competitor may believe it to
be irrelevant and should be encouraged to file it without any statement
that the art is pertinent, since it may turn out to be relevant when
combined with other unknown prior art.
Response to Issue 8
Current 1.501 is being retained, and thus there is no need for
proposed 1.901 of the August 11, 1995, Notice of Proposed Rulemaking
which was to track and replace 1.501. Section 1.501 provides a system
for citation of patents and printed publications to the Office for
placement in the patent file by any person during the period of
enforceability of the patent in accordance with 35 U.S.C. 301. Section
1.501 requires the citation to state the pertinency and applicability of
the cited documents to the patent and the bearing the documents have on
the patentability of at least one claim of the patent pursuant to the
same statutory requirement set forth in 35 U.S.C. 301.
Issue 9
Two comments suggested clarification of the language of the
third-party estoppel provisions proscribed by 1.907 and 1.909 of
the August 11, 1995, Notice of Proposed Rulemaking, specifically the
language ``could have raised'' used in both rules. One comment
recommended that the third-party requester have the same obligation to
raise issues known to him as the patent owner has. Another comment
opined that the phrase ``or could have raised during the prior
reexamination proceeding'' could be construed broadly, so as to stop a
third-party requester from challenging the invalidity of a claim based
on prior art which was in the possession of the third-party requester at
the time of a prior reexamination proceeding, but which was not
discovered at that time. Thus, depending on how the expression ``could
have'' is interpreted, this could place a substantial burden on a large
corporation. It was also suggested that the duty of individuals to
disclose information known to them to be material to patentability is
another difficult provision, particularly the phrase ``and every other
individual who is substantively involved on behalf of the patent owner
in a reexamination proceeding.''
Response to Issue 9
35 U.S.C. 315(c) and 317(b) of the Act use the phraseology ``could
have raised'' with respect to issues of the third-party. The Office, as
the sole agency that administers the patent statute, properly interprets
statutory language in the first instance, subject to review by the
courts. The question of whether an issue could have been raised must be
decided on a case-by-case basis, evaluating all the facts and
circumstances of each individual situation. It would not be appropriate
at this time to provide an ``all encompassing'' definition, that might
not account for facts which could arise in the future which cannot be
anticipated. As to the duty of disclosure, proposed 1.933 is
substantially unchanged from existing 1.555, which was formulated to
balance the interests of the patent owner with the benefits to the
public interest of the disclosure of material prior art.
Issue 10
One comment suggested that 1.915(b)(7) of the August 11, 1995,
Notice of Proposed Rulemaking be amended to specifically refer to
reexaminations under the newly proposed regulations. As 1.915(b)(7)
was drafted, the required certification that the person filing an
additional reexamination during the pendency of an ongoing reexamination
is not a privy of the patent owner or of the third-party requester of
the ongoing reexamination would include an ongoing reexamination
proceeding ordered under the old regulations. Since one of the purposes
of the new reexamination legislation is to permit participation by a
third-party requester, no useful or public purpose would be served by
precluding a third-party requester from filing a request for
reexamination under the new regulations where there was a pending
reexamination initiated under the old regulations.
Response to Issue 10
The language of proposed 1.915(b)(7) has been drafted to
specifically refer to an inter partes reexamination; this should
accurately track the statutory prohibition of a third-party requester of
an ongoing (pending) inter partes reexamination from requesting another
inter partes reexamination. Note, however, that the current proposed
rules do not preclude an ex parte third-party requester from filing an
inter partes reexamination request.
Issue 11
Two comments responding to the August 11, 1995, Notice of Proposed
Rulemaking were directed to the identification of the real party in
interest. One comment suggested that as to the identification of the
real party in interest, 1.915(b)(10) of the August 11, 1995, Notice
needs to be clarified on the question of whether a third-party requester
filing in the name of an attorney must be identified. A second comment
suggested that the real party in interest should be identified at least
by the time of filing of the notice of appeal to the Court of Appeals
for the Federal Circuit.
Response to Issue 11
The real party in interest must be set out in the request. 35 U.S.C.
311(b)(1) requires that the request ``include the identity of the real
party in interest.'' Proposed 1.915(b)(8) (previously 1.915(b)(10)
in the 1995 rule package) tracks this provision of the statute and
requires the requester to identify the real party in interest at the
time of filing the request. If an attorney is filing a request for inter
partes reexamination on behalf of another party, that other party must
be identified. Thus, the third-party requester will be identified. As to
the patent owner, proposed 1.965(c)(1) requires the identification of
the real party in interest at the time of the filing of the appellant
brief, and proposed 1.967(b)(1) requires the identification of the
real party in interest at the filing of the respondent brief.
Accordingly, the real parties in interest, for both the third-party
requester and the patent owner, should be identified prior to an appeal
to the Court of Appeals for the Federal Circuit by the patent owner (the
current statute prohibits the third-party requester from appealing to
the courts).
Issue 12
One comment responding to the August 11, 1995, Notice of Proposed
Rulemaking was concerned that active third-party requesters representing
large businesses could mount a series of attacks through ``fourth
parties'' and ``tie up'' the invention of a small inventor for years.
Response to Issue 12
The statute is structured to balance the interests of the patent
owners (to reduce costs and prevent harassment) and the public interest
in promoting the validity of patents. Proposed 1.907 tracks 35 U.S.C.
317 and is intended to prevent repeated challenges to the patent by
third parties and their privies. In accordance with 35 U.S.C. 317(a),
proposed 1.907(a) prohibits the filing of a subsequent inter partes
request for reexamination of the patent by the third-party requester or
its privies until a reexamination certificate has been issued. In
accordance with 35 U.S.C. 317(b), 1.907(c) provides that if a final
decision in an inter partes reexamination proceeding instituted by a
third-party requester is favorable to patentability of a claim, the
third-party requester and its privies may not later request another
inter partes reexamination of any such patent claim on the basis of
issues which that party, or its privies, raised or could have raised in
such inter partes reexamination proceeding. Moreover, proposed
1.915(b)(8) (previously 1.915(b)(10) in the 1995 rule package) tracks
35 U.S.C. 311(b)(1) and requires the requester to identify the real
party in interest at the time of filing of the inter partes request.
Issue 13
One comment suggested that in regard to 1.921 and 1.945 of the
August 11, 1995, Notice of Proposed Rulemaking, supplemental responses
and new prior art submissions should be permitted by the patent owner in
order to substantiate certain points at issue (e.g., secondary
considerations). It was further suggested that supplementation of
responses be permitted. It was also suggested that submission of new
publications by the third-party requester should be permitted in
response to any amendment made by the patent owner which reduces the
scope of the original claims.
Response to Issue 13
Proposed 1.945 permits the patent owner to respond to any Office
action, which response may include arguments and proposed amendments.
There is no proscription regarding the submission of evidence relating
to secondary considerations. As to third-party requesters, proposed
1.948 provides that prior art submissions by the third-party requester
filed after the inter partes reexamination order shall be limited to:
(1) Any prior art which is necessary to rebut a finding of fact by the
examiner or a response of the patent owner; or (2) any prior art which
became known or available to the third-party requester after the filing
of the inter partes reexamination proceeding. Accordingly, submission of
new publications by the third-party requester in response to an
amendment made by the patent owner which reduces the scope of the
original claims would be permitted as a rebuttal of a ``response of the
patent owner.''
Issue 14
One comment stated that as to 1.927 of the August 11, 1995, Notice
of Proposed Rulemaking, a determination by the Director refusing to
initiate reexamination is final and nonappealable by a third-party. The
rule should be amended to allow the third-party to appeal, since without
an opportunity to appeal, a third-party's interests would be seriously
jeopardized.
Response to Issue 14
Proposed 1.927 of the present rule package (petition to review
denial of the request for reexamination) has been drafted to track 35
U.S.C. 312(c). Proposed 1.927 provides that ``[t]he third-party
requester may seek review by a petition to the Director under 1.181
within one month of the mailing date of the examiner's determination
refusing reexamination. Any such petition must comply with 1.181(b).
If no petition is timely filed or if the decision on petition affirms
that no substantial new question of patentability has been raised, the
determination shall be final and nonappealable.'' Thus, although the
third-party requester does not have an appeal right, it may obtain a
review of the decision of the examiner refusing reexamination by filing
a petition. If the decision on the petition, however, affirms that no
substantial new question of patentability has been raised, the
determination is final and nonappealable, as is statutorily required by
35 U.S.C. 312(c).
Issue 15
Two comments were directed to the length of briefs specified in
1.943 of the August 11, 1995, Notice of Proposed Rulemaking. One comment
suggested that the length of briefs would be more meaningful if the size
of the paper and the type font were specified. A second comment stated
that the page limitation on briefs in 1.943 is too restrictive,
especially for patent owners, since there is no limitation on the number
of issues which a third-party can raise, which may require a longer
response from the patent owner. It was suggested that the rule should
permit longer briefs upon a showing of good cause.
Response to Issue 15
As to the first comment, this comment is being adopted. Section
1.943, as proposed in the present rule package, has been drafted to set
forth (by reference to 1.530(d)(5)) the requirements for responses,
amendments, briefs, appendices and other documents including the size of
the paper, the minimum size of the type font (11-point), the line
spacing and the margin requirements.
As to the second comment, the 50-page limit for amendments proposed to
be set in 1.943 is considered to be sufficient to deal with the
third-party requester's comments. Note that the 50-page limit excludes
reference materials such as prior art references. Where an extraordinary
situation arises where justice requires the 50-page limit to be
exceeded, the patent owner may petition under 1.183 to suspend the
page limit requirement of 1.943.
The page limit set in proposed 1.943 of the present rule package for
briefs is such that appellant briefs shall not exceed 30 pages or 14,000
words in length (excluding appendices of claims and reference
materials), and all other briefs by any party shall not exceed 15 pages
or 7,000 words in length. These numbers of pages are in line with
procedural rules of the Federal Courts; see for example Rule 32(a)(7)(A)
of the Federal Rules of Appellate Procedure or Rule 33 of the Rules of
the Supreme Court of the United States (Practice & Procedure).
Issue 16
Several comments were concerned with the time periods for response
and extensions of time. Two comments suggested that the time periods for
response for 1.945 (patent owner) and 1.947 (third-party
requester) of the August 11, 1995, Notice of Proposed Rulemaking should
be a minimum of two months for each party. A third comment suggested
only that the patent owner be given two months to respond. The first
comment suggested that the first month extension should be available
upon payment of a fee (as in regular patent applications), with further
requests requiring justification or cause. The second comment suggested
that 1.945 and 1.947 should be made consistent with each other (30
days versus one month) to alleviate any confusion by stating the number
in months. The second comment further suggested that the extension of
time procedure is unworkable since the Office could not act on the
request for an extension of time (if filed within the one-month period
of time) before the deadline for the response. Instead, the usual
extension of time procedure used for regular patent applications should
be available. The fourth comment stated that the time periods for
submitting a response, a written comment, an appeal brief, and a
respondent brief and for appealing or cross-appealing ( 1.945,
1.947, 1.951, 1.953, 1.959, 1.963, 1.971, 1.973, 1.979, 1.983, and
1.993) are too short, especially for residents outside of the United
States (due to mailing delay).
Response to Issue 16
Proposed 1.947 of the present rule package has been drafted to
provide for a 30-day response period (from service of the patent owner's
response on the third-party requester) for third-party requester
comments. This tracks the requirement of 35 U.S.C. 314 that third-party
requester comments be filed ``within 30 days after the date of service
of the patent owner's response.'' Proposed 1.945 has been drafted to
provide for an ``at least 30 days'' response period for the patent
owner. This tracks the requirement of 35 U.S.C. 133 that the time for
response to an Office action shall be ``not less than 30 days.'' A
shortened statutory period of two months will generally be set for
patent owner responses to Office actions on the merits; however, where
litigation has been suspended pending a determination in the
reexamination proceeding, or for a like reason, the period will be
shortened to one month or 30 days as is appropriate.
The suggestion that 1.945 and 1.947 be made consistent with each
other has been adopted to the extent that the currently proposed rules
( 1.945 and 1.947) recite both time periods in terms of days rather
than months. The period for the patent owner response to an Office
action will not, however, be made 30 days to correspond to the
third-party comment period mandated by statute. While the statute limits
the third-party requester to 30 days to comment on patent owner
responses, a longer period for the patent owner to respond is
appropriate in view of the potential need for counsel to consult with
the patent owner, consider amendments, etc.
As to extensions of time, 35 U.S.C. 305 provides that all reexamination
proceedings will be conducted with special dispatch within the Office.
Section 1.956 provides that extensions of time will be available to the
patent owner upon a showing of sufficient cause. Third-party requester's
30-day time period for comments is statutory; thus, it cannot be
extended. This is consistent with the recommendation (VII-B) of The
Advisory Commission on Patent Law Reform: A Report to the Secretary of
Commerce, August 1992 to provide for the opportunity for the third-party
requester to submit written comments ``within strict time deadlines.''
Issue 17
One comment suggested that, as to 1.949 of the August 11, 1995,
Notice of Proposed Rulemaking, a more flexible policy on closing
prosecution be adopted in a reexamination proceeding than is currently
applied by the Office in its final action practice. Specifically, this
proposed section indicates that prosecution will not normally close if
there is a new ground of rejection (not previously addressed by the
patent owner) which was not necessitated by an amendment to the claims
by the patent owner. There was particular concern in the comments about
a situation where new prior art is relied on even if it was necessitated
by an amendment to the claims. It was noted that the proposed practice
may serve a useful purpose in the normal examination of patent
applications, where an applicant always has the opportunity to file a
continuing application to make any further amendments to the claims that
may be desirable to address the new ground of rejection; however, in a
reexamination proceeding, where the patent owner is precluded from
having any right to amend the claims to address the new ground of
rejection or to file another request for reexamination, the patent owner
may be trapped with no effective way to address new prior art that has
been introduced for the first time in the Office action that
simultaneously closes the prosecution. It was urged that this could be
fundamentally unfair to the patent owner. Where new prior art is
asserted by the examiner, the patent owner should have the opportunity
to amend the claims.
Response to Issue 17
By weighing and balancing the interests of the parties, it is
believed the rule as proposed is fair and reasonable. A rule which would
prohibit an Office action from closing prosecution following a new art
rejection responsive to a patent owner amendment would conceivably be
subject to abuse, since patent owners could purposely add an amendment
in each response to thus necessitate a new art rejection and thereby
preclude the closing of prosecution for an unlimited number of cycles.
Issue 18
Eight comments were directed to interviews (provided for in 1.955
of the August 11, 1995, Notice of Proposed Rulemaking). One comment
suggested the need for a more accurate statement of why claims were found
to be allowable as the result of an interview. A second comment suggested
that the Office rules be modified to specifically require a means for more
accurately recording what transpires at interviews, regardless of which
party requests the interviews or whether all parties are present.
The comment further stated that ``recording'' did not imply physical
recording by electronic means or by a court reporter, but by a more
thorough method of reporting by an examiner as to what transpired at the
interview (which would be particularly effective with a multi-examiner
review system). The comment indicated that the reporting of the
``minutes'' should be done to all parties, including a brief,
non-binding, and informal opinion by the examiner on the resolution of
the issues presented, so as to give all parties the opportunity to respond
to the issues raised at the interview. A third comment suggested that the
proposed rules should be modified to achieve two objectives. The first
objective would be to provide an opportunity to better communicate
issues to examiners (particularly those issues which are difficult to
express on paper and might be better demonstrated; e.g., by charts,
tables, or physical demonstration) of what is purported to be the main
technical aspect of an invention, and how that technical aspect is or is
not suggested by the prior art, either before or after the formal
submission, so that they will have a better understanding of what the
data represents. A second objective should be to provide a complete record
for later review for a judge or an attorney who reviews the file history
for a decision on patentability or infringement assessment. The proposed
1.955 was stated to benefit the patent owner, who is the only party
allowed to request an interview, thereby providing a tremendous advantage
and, therefore, the rule should be modified to allow a third-party
requester the opportunity to initiate an interview. The comment further
criticized the lack of a specific requirement for recording what
transpires at interviews, on the basis that an Examiner Interview Summary
Record would be of little value in an inter partes reexamination
proceeding, since the record is too abbreviated to be of any real value
in subsequent proceedings and it is unlikely that much detail could be
put into any interview record if more than one party, as well as a senior
level official (whose presence would be required under the proposed rule)
are all present and are relying upon an examiner to hurriedly write a
summary of the interview. The comment suggested modification of 1.955
to include an effective procedure for recording the details of what
transpired at an interview. A fourth comment suggested that, in view of
the criticality of the content of interviews in subsequent litigation,
a mechanism should be made available for recording statements made at
substantive interviews that occur during reexamination, whereby any party
to a reexamination should be permitted to have a transcript of the
substantive interviews made of record at their own expense. The comment
further suggested that requesting parties would both supply the means for
transcription and would bear the costs associated therewith. A fifth
comment suggested that the third-party requester be allowed not only to
participate but also initiate an interview, and that the third-party
requester be provided, at a sufficient time prior to the interview,
the particulars of the claim at issue at the interview, the objective
of the interview, and the specific data to be used at the interview, so
that the third-party requester would be able to take substantial part in
the discussion at the interview. A sixth comment was in favor of the
third-party requesters having the right to participate in interviews
but opposed giving third parties the right to initiate them. The reason
given was that the rules need to balance the right to encourage third
parties to participate with the need to keep reexamination quick and
inexpensive. The comment further stated that in view of the expense,
including the time required to review the transcript and the continuing
attempts to make corrections and clarifications, a rule change to permit
or require transcription of interviews is not recommended. Such a rule
would make reexaminations more like court proceedings. A seventh comment
suggested that 1.955 should be changed to permit the third-party
requester to request an interview because the third-party requester,
like the patent owner, may have experts and/or documentary evidence
that is not suitable for written declarations. An eighth comment
suggested that if interviews are to be recorded, consideration should be
given as to whether participants would be under oath.
Response to Issue 18
The Office has reconsidered its initial position (taken in the August
11, 1995, Notice of Proposed Rulemaking) to permit owner-initiated
interviews in which the patent owner and the third-party requester
participate. The presence of a third-party requester will complicate the
reexamination proceeding and delay it. There is no reason to further
complicate and delay the proceeding with inter partes interviews, which
past history has shown to be not only resource intensive, but unwieldy.
Inter partes interviews are difficult to arrange, control, and conduct.
There would be interaction between the patent owner's representative and
its experts, the third-party's representative and its experts, the
examiner, and the ``senior level official'' which would be difficult to
regulate and control. It is difficult to record what happened, and
cross-transcripts would result in delay and complications. In addition,
the time to arrange and conduct the interview would greatly extend the
inter partes proceeding time line, and this is clearly contrary to the
``special dispatch'' required by 35 U.S.C. 314(c) for the inter partes
reexamination proceeding. As to the comments suggesting that the
third-party should be permitted to initiate interviews, this would even
further complicate the proceeding, adding undue cost to the parties and
the Office and further delay to the proceeding.
Accordingly, the Office has decided that the third-party requester of
the inter partes reexamination should neither be permitted to initiate
nor be permitted to participate in an interview which addresses the
merits of the proceeding. If, however, the patent owner is permitted to
initiate and participate in an interview which addresses the merits of
the proceeding while the third-party requester is not, this will create
an advantage to the patent owner which is contrary to the intent and
purpose of the inter partes reexamination addition to the statute.
Thus, to ``level the playing field'' in the Office, in accordance
with the intent and purpose of the statute, the patent owner will
neither be permitted to initiate nor be permitted to participate in an
interview which addresses the merits of the proceeding. In other words,
no interviews which address the merits of the proceeding will be
permitted (or held) in an inter partes reexamination proceeding.
This offers the additional advantage of further shortening the
proceeding, pursuant to the dictates of ``special dispatch'' in 35
U.S.C. 314(c). Even further, this deals with the comments which argued
that the content of the inter partes interview cannot be adequately
captured without the use of expensive and complex transcripts.
Anything stated or decided in the proceeding will be on the record,
in writing.
As to the comments regarding improving the record of what transpired at
interviews, clarity of the record is a concern to the Office.
Accordingly, in 1.560(b) (Interviews in ex parte reexamination
proceedings), it is required for interviews in ex parte reexamination
proceedings that ``[i]n every instance of an interview with an examiner,
a complete written statement of the reasons presented at the interview
as warranting favorable action must be filed by the patent owner.''
(Emphasis added). The written statement must be filed as a separate part
of a response to an Office action outstanding at the time of the ex parte
reexamination interview, or as a separate paper within one month from
the date of the ex parte reexamination interview, whichever is later.
Regarding inter partes reexamination proceedings, there will be no
interviews at all which address the merits of the inter partes
reexamination proceeding, as discussed in the previous paragraph, thus
the comments regarding improving the record of what transpired at
interviews are moot as to inter partes reexamination proceedings.
With respect to the suggestion of prior notice of what issues will be
discussed (the specific objective of the interview and the materials to
be presented), patent owners requesting interviews in ex parte
reexamination proceedings are in fact expected to submit such materials
prior to the interview with ample time for review. As to whether
participants at recorded interviews (which are only permitted in special
circumstances in ex parte reexamination proceedings) should be under oath,
this is believed to be unnecessary in view of 18 U.S.C. 1001, which
provides ``[w]hoever, in any matter within the jurisdiction of any
department or agency of the United States knowingly and willfully
falsifies, conceals or covers up by any trick, scheme, or device a
material fact, or makes any false, fictitious or fraudulent statements or
representations, or makes or uses any false writing or document knowing
the same to contain any false, fictitious or fraudulent statement or
entry, shall be fined not more than $10,000 or imprisoned not more than
five years, or both.''
Issue 19
One comment stated that, as to 1.959(a)(2) of the August 11, 1995,
Notice of Proposed Rulemaking, the introduction of a right to appeal by
a third-party requester who is dissatisfied with an examiner's favorable
consideration of a claim is an important and beneficial aspect of the
new reexamination proceedings. However, the apparent unqualified
opportunity to file an appeal at this advanced stage in the proceedings
raises a concern that the appeal procedure could be used to compromise
the patent owner's ability to address the reasons and the evidence that
the third-party requester might use in its appeal and to add
(perhaps intentionally) considerable length to a proceeding that is to
be conducted with special dispatch. The comment was concerned that the
likelihood exists that the first time the patent owner will be made
aware of the grounds of rejection to be relied upon by the third-party
requester will be upon receiving the third-party's appeal brief, adding
complexity and length to the proceeding. In spite of this, the provisions
in 1.967(b) relating to the respondent brief apparently do not
contemplate any opportunity for the patent owner to offer an amendment or
material appropriate to the new ground of rejection, as is permitted
when an examiner makes a new ground of rejection in the examiner's answer
(see proposed 1.971(b)). The comment suggested that consideration must
be given to setting appropriate limits on the grounds of rejection that
the third-party requester can rely upon in its appeal; including
consideration to requiring the third party requester who files a notice
of appeal under proposed 1.959(a)(2) to identify in this notice the
grounds of rejection that it will rely upon in its appeal.
Response to Issue 19
Third-party requester's prior art submissions in an inter partes
reexamination (after reexamination is ordered) are limited by the
currently proposed 1.948 to prior art: (1) Which is necessary to
rebut a finding of fact by the examiner; (2) which is necessary to
rebut a response of the patent owner; or (3) which became known or
available to the third-party requester after the filing of the inter
partes reexamination proceeding. Under 1.947 (Response by
third-party requester to patent owner's response), the third-party
requester's comments shall be limited to issues raised by the action of
the Office or the patent owner's response. Accordingly, the third-party
requester could not advance a new ground of rejection based upon new
prior art at the appeal stage. Although the notice of appeal does not
require specific identification of the issues, the appellant's brief does.
See currently proposed 1.965(c)(6) (appellant brief), 1.967(b)(6)
(respondent brief) and 1.971 (rebuttal brief), all of which
specifically prohibit the third-party from introducing new grounds of
rejection at each respective stage of the appeal.
Issue 20
One comment submitted in response to the August 11, 1995, Notice of
Proposed Rulemaking suggested that the enforcement role of the Office
should be such that the examiner is obligated to issue an examiner's
answer in every reexamination proceeding. The comment noted that present
(1995) rules provide that an examiner may issue an examiner's answer.
It was urged that when the Office decides that an invention is
unpatentable, it is incumbent that the Office not rely upon the
third-party requester exclusively, and therefore, examiner's answers
should be mandatory.
Response to Issue 20
Although the currently proposed 1.969(a) (and 1.193(a)(1))
indicates that an examiner's answer may be furnished, common practice is
to furnish an examiner's answer. This practice is implemented through
procedures set forth in the MPEP. Moreover, the examiner cannot be
obligated to issue an examiner's answer in every instance, since, in
rare instances, it will become necessary to reopen prosecution for
consideration of a recently discovered new ground of rejection or reason
for patentability.
Issue 21
One comment responding to the August 11, 1995, Notice of Proposed
Rulemaking suggested that appellant should be given the opportunity to
reply to both the opening brief of the respondent and the examiner's
answer, either by filing briefs in response to each, or by a single
reply brief after the examiner's answer.
Response to Issue 21
The second option of the comment has been adopted. The currently
proposed 1.971 (Rebuttal Brief) provides that, following the
examiner's answer, any appellant may once submit a rebuttal brief.
The rebuttal brief of the patent owner may be directed to the examiner's
answer and/or any respondent brief. The rebuttal brief of any third-party
requester may be directed to the examiner's answer and/or the respondent
brief of the patent owner. The rebuttal brief of a third-party requester
may not be directed to the respondent brief of any other third-party
requester. No new ground of rejection can be proposed by a third-party
requester appellant.
Issue 22
One comment responsive to the August 11, 1995, Notice of Proposed
Rulemaking suggested that because both the request for oral argument and
the briefs replying to the examiner's answer are due within one month,
the parties will likely not be able to consider each other's final
written submissions before requesting oral argument and, therefore, the
period for requesting an oral hearing be lengthened to 45 days, thus
giving the parties 15 days to consider each other's final written
submissions.
Response to Issue 22
This comment has been adopted as follows. Section 1.973(b) (Oral
Hearing) as proposed provides that the parties have two months after the
date of the examiner's answer to file a written request for oral hearing.
Issue 23
One comment suggested that proposed 1.979(b) of the August 11,
1995, Notice of Proposed Rulemaking provides an opportunity for each
party to file a single request for rehearing (referred to as ``request
for reconsideration'' in the comment) of the decision of the Board of
Patent Appeals and Interferences. However, there is no apparent
opportunity for the other party to provide comments on that request. The
lack of this opportunity is not consistent with the general approach in
the new reexamination process of providing an opportunity for both
parties to provide comments before any action is taken by the Office,
and it was suggested once a request for rehearing has been filed by
either or both parties, that the other party have a one-month period to
offer comments on the request for rehearing.
Response to Issue 23
This comment has been adopted. The third-party requester, by virtue
of the statute, has no opportunity to appeal the decision of the Board
of Patent Appeals and Interferences to the U.S. Court of Appeals for the
Federal Circuit. In addition, 1.979(d), as presently proposed,
permits the party requesting rehearing (in addition to stating ``the
points believed to have been misapprehended or overlooked in rendering
the decision'') to also state ``all other grounds upon which rehearing
is sought.'' It is only fair to give the third-party requester an
opportunity to comment on newly provided ``other grounds upon which
rehearing is sought.'' The patent owner should likewise be given the
same opportunity to comment in order to create a level ``playing field''
in the Office. Accordingly, currently proposed 1.979(b) has been
drafted to give both the patent owner and the third-party requester a
right to comment on each other's request for rehearing of the decision
of the Board of Patent Appeals and Interferences.
Issue 24
One comment suggested that 1.985 of the August 11, 1995, Notice of
Proposed Rulemaking, which permits any person to advise the Office about
a concurrent proceeding involving the patent being reexamined, should be
changed to require the patent owner to advise the Office (and therefore
any third-party requester) of any concurrent proceeding involving the
patent being reexamined. The comment also stated that similar mandatory
requirements are contained in 1.660 relating to the conduct of an
interference proceeding involving an application or a patent.
Response to Issue 24
The suggestion has been adopted. Currently proposed 1.985(a)
(Notification of prior or concurrent proceedings) is drafted to direct
that in any inter partes reexamination proceeding, the patent owner
shall call the attention of the Office to any prior or concurrent
proceedings in which the patent is or was involved such as
interferences, reissue, reexaminations, or litigation and the results of
such proceeding.
Issue 25
Regarding 1.989 of the August 11, 1995, Notice of Proposed
Rulemaking, one comment stated that the merger of multiple reexamination
proceedings on unrelated issues by unrelated parties will result in
undue complications of the proceedings, particularly during interviews
and hearings.
Response to Issue 25
As pointed out above in the response to Comment 18, the Office has
reconsidered its initial position (taken in the August 11, 1995, Notice
of Proposed Rulemaking) and will not permit any interview which
addresses the merits in an inter partes reexamination proceeding. Thus,
the comment is moot as to complications caused by an inter partes
interview. Although multiple parties can, to some degree, increase the
complexity of the proceeding even in areas other than the interviews
focused upon by the commenter, the general policy of the Office is that
concurrent reexamination proceedings will not be conducted separately at
the same time on the same patent. The reasons for this policy is to
prevent inconsistent, and possibly conflicting, amendments from being
introduced into the two proceedings on behalf of the patent owner.
Normally the proceedings will be merged whenever it is desirable to do
so in the interest of expediting the prosecution of all proceedings.
Issue 26
One comment responding to the August 11, 1995, Notice of Proposed
Rulemaking suggested that it would be beneficial for the rules to
provide specific procedures for consolidating multiple reexamination
requests of the same patent, since the procedure is too complicated for
the public to simply rely upon internal Office policy.
Response to Issue 26
Section 1.989, as proposed in the present rule package, provides for
the merging of multiple reexaminations. As to the details of the merger
procedure, it is believed to be more appropriate to incorporate same in
the MPEP, because it is less cumbersome and easier to revise the details
via the MPEP as needed to react to input as the practice evolves, than
it would be to revise the rules. Further, where it becomes known that an
area of the merger procedure is not being understood by the public, it
will be easier to add more explanation to the MPEP, than to make the
rules more comprehensive. Accordingly, the MPEP will contain the
detailed discussion of the merger procedure.
Issue 27
One comment stated that as to 1.991 of the August 11, 1995, Notice
of Proposed Rulemaking, a merged reissue/reexamination proceeding will
be conducted according to provisions applicable to the reissue
application except that the participation by a third-party requester
shall be limited to issues within the scope of reexamination. Since a
third-party requester has a right to inspect a reissue application and
file a protest involving any issue considered in a reissue application,
consideration should be given to permitting participation by a
third-party requester in the full scope of issues addressed under the
reissue statute. It was urged that the right of appeal and participation
in the appeal process by the third-party requester should be limited to
the scope permitted under the reexamination statute. The comment further
questioned how the third-party requester will be notified of its right
to appeal within the scope of the reexamination proceeding, since
typically there would be no separate action closing prosecution and
right to appeal in a reissue proceeding.
Response to Issue 27
When an inter partes reexamination proceeding is merged with a
reissue application, the participation by the third-party requester
shall be limited to issues within the scope of the inter partes
reexamination. This is consistent with the recommendations of The
Advisory Commission on Patent Law Reform: A Report to the Secretary of
Commerce, August 1992 at page 117, ``that a full inter partes
proceeding, even with certain restrictions, would lead to abuses of the
process much as occurred in the reissue protests under the Dann
amendments * * * [and] the USPTO is not an appropriate forum for an
inter partes adversarial proceeding addressing all potential issues of
validity.'' [Emphasis added]
As to how the third-party requester will be notified (in the merged
proceeding) of its right to appeal within the scope of the reexamination
proceeding, since there is no provision in the reissue rules for a
separate action closing prosecution and right to appeal, currently
proposed 1.995 provides that when a third-party requester is involved
in one or more proceedings including an inter partes reexamination
proceeding, the merger of such proceedings will be accomplished so as to
preserve a third-party requester's right to participate to the extent
specifically provided for in these regulations. Due to the complexity of
the merged reissue/reexamination proceedings and the varying issues
presented as a result of the merger, the decision merging the reissue
and reexamination proceedings will set forth the framework for various
courses of action by the parties, including appeal notification and
rights.
Issue 28
One comment asked what relationship will there be between the
1.993 request to stay an interference (of the August 11, 1995, Notice of
Proposed Rulemaking) and the 1.644(a) petition in interference, since
the 1.993 ``request to stay an interference'' is really a form of a
petition and should be covered or cross-referenced in 1.644(a).
Response to Issue 28
The request to stay an interference under 1.993 as currently
proposed, and under present 1.565(e) is not an exact fit under any of
subsections (1)-(3) of 1.644(a); thus, it provides an additional
aspect of relief to the public. While subsection (2) of 1.644(a)
might appear to overlap the 1.565(e) and 1.993 request to stay an
interference, 1.644(b) states that ``[a] petition under paragraph
(a)(2) of this section shall not be filed prior to the party's brief for
final hearing (see 1.656).'' Just as petitions under 1.644 are
decided by the Chief Administrative Patent Judge of the Board of Patent
Appeals and Interferences, a request to stay an interference under
1.565(e) and 1.993 will likewise be decided by the Chief
Administrative Patent Judge of the Board of Patent Appeals and
Interferences. The decision of Shaked v. Taniguchi, 21 USPQ2d 1289
(Comm'r Pat. 1991) should be noted, where it was pointed out that
neither the reexamination nor the interference will ordinarily be stayed
in this situation.
Discussion of the Major Specific Issues Involved (1999 Statute)
The proposed rules relating to inter partes reexamination proceedings
are directed to the provisions set forth in Chapter 31 of Title 35 of
the United States Code (35 U.S.C. 311-318). This Chapter provides for
the filing of requests for inter partes reexamination, decisions on such
requests, inter partes reexamination, appeal from inter partes
reexamination decisions, and the issuance of a certificate at the
termination of the inter partes reexamination proceedings.
Discussion of Specific Rules
Section 1.4 is proposed to be amended so that paragraph (a)(2)
includes the inter partes reexamination under 1.902-1.997.
Section 1.6 is proposed to be amended so that paragraph (d)(5) includes
filing a request for inter partes reexamination under 1.913 as an
exception to the use of facsimile transmission.
Section 1.17 is proposed to be amended so that the title includes a
reference to reexamination to clearly indicate that the enumerated fees
may apply to reexaminations as well as to patent applications. Section
1.17 is proposed to be amended so that paragraph (l) reflects the fact
that in the case of reexaminations, petitions for revival of a
reexamination proceeding terminated for an unavoidable failure of the
patent owner to respond will require the fees of $55 for a small entity
and $110 for a large entity. Also, 1.17 is proposed to be amended so
that paragraph (m) reflects the fact that in the case of reexaminations,
petitions for revival of a reexamination proceeding terminated for an
unintentional failure to respond will require the fees of $605 for a
small entity and $1,210 for a large entity. Note, however, that the
unintentional revival provisions of the statute are not effective in any
reexamination until November 29, 2000.
Section 1.20 is proposed to be amended so that paragraph (c) reflects
the fact that a request for an ex parte reexamination under 1.510(a)
will require a filing fee of $2,520; and that a request for an inter
partes reexamination under 1.915(a) will require a filing fee of
$8,800.
Section 1.25, which provides for charging fees to deposit accounts, is
proposed to be amended so that paragraph (b) includes a reference to
inter partes reexaminations under 1.913.
Section 1.26 is proposed to be amended so as to reflect the refund to
the reexamination requester where the Director decides not to institute
a reexamination proceeding. For ex parte reexaminations filed under
1.510, a refund of $1,690 will be made to the reexamination requester.
For inter partes reexaminations filed under 1.913, a refund of $7,970
will be made to the reexamination requester. In both cases $830 of the
filing fee will be retained, which amount reflects the cost of the
reexamination proceeding through the denial of the reexamination request.
Section 1.112 is proposed to be amended so that the last sentence
reflects the fact that in the case of inter partes reexaminations, the
right to reply may be limited by an action closing prosecution under
1.949 (prior to the final action) or by a right of appeal notice under
1.953 (which is a final action).
Section 1.113, which provides for a final rejection or action, is
proposed to be amended to limit its applicability to applications and ex
parte reexaminations filed under 1.510. For final rejections or
actions in an inter partes reexamination filed under 1.913, new
1.953 will control.
Section 1.116 is proposed to be amended so that the title includes a
reference to an action closing prosecution and a right of appeal notice
in inter partes reexaminations. Paragraph (a), which provides for
amendments after final action, is proposed to be amended to apply to
amendments after an action closing prosecution by patent owners in inter
partes reexaminations filed under 1.913. Also 1.116(a) is proposed
to be amended to preclude amendments after the right of appeal notice
under 1.953 except as provided for in 1.116(c). Paragraph (c),
which provides for amendments after the decision on appeal, is proposed
to be amended to provide for amendments after the decision on appeal in
an inter partes reexamination.
Section 1.121(c), which provides for the manner of making amendments to
the description and claims in reexamination proceedings, is proposed to
be amended to specify that such amendments are made in accordance with
1.530(d) in both ex parte reexaminations filed under 1.510 and inter
partes reexaminations filed under 1.913.
Parts (a)(2) and (b) of 1.136, which provide for filing of timely
replies with petitions for extensions of time, are proposed to be
amended to make it clear that 1.956 is controlling for extensions of
time in inter partes reexaminations.
Section 1.137, which provides for revival of abandoned applications or
lapsed patents, is proposed to be amended to provide for revival of ex
parte reexamination proceedings terminated under 1.550(d), for
revival of inter partes reexamination proceedings terminated under
1.957(b), or for revival of rejected claims terminated under 1.957(c)
in an inter partes reexamination proceeding where further prosecution
has been limited to claims found allowable at the time of the failure to
respond. The title is being amended to include a terminated
reexamination proceeding. Paragraph (a) is being amended to include
revival of unavoidably terminated reexamination proceedings. The
unavoidable delay provisions of 35 U.S.C. 133 are imported into and are
applicable to reexamination proceedings by 35 U.S.C. 305 and 314. See In
re Katrapat, 6 USPQ2d 1863 (Comm'r Pats. 1988). Paragraph (b) is being
amended to provide for revival of unintentionally terminated
reexamination proceedings. The unintentional delay fee provisions of 35
U.S.C. 41(a)(7) are imported into and are applicable to all
reexamination proceedings by section 4605 of S. 1948. Note that these
changes pertain to all reexaminations (i.e., both ex parte
reexaminations filed under 1.510 and inter partes reexaminations
filed under 1.913) and become effective on November 29, 2000 (one
year after enactment of statute). Paragraph (d) is being amended to
provide that extensions of time for requesting reconsideration of a
decision dismissing or denying a petition requesting revival of a
terminated reexamination proceeding under subsections (a) or (b) must be
filed under 1.550(c) for a terminated ex parte reexamination
proceeding, or under 1.956 for a terminated inter partes
reexamination proceeding.
Section 1.181, is proposed to be amended so that paragraphs (a) and (c)
reflect the fact that such a petition may be filed in a reexamination
proceeding.
Section 1.191, which provides for appeal to the Board of Patent Appeals
and Interferences by the patent owner from any decision adverse to
patentability, is proposed to be amended so as to be applicable to
applications and ex parte reexaminations filed under 1.510, but not
to inter partes reexamination proceedings filed under 1.913.
Specifically, proposed 1.191 would point out that appeals to the
Board of Patent Appeals and Interferences in inter partes reexamination
proceedings filed under 1.913 are controlled by 1.959 through
1.981, and that 1.191 through 1.198 are not applicable to appeals
in inter partes reexamination proceedings filed under 1.913.
Section 1.191 is further proposed to be amended to distinguish between
ex parte reexamination proceedings filed under 1.510 for patents that
issued from an original application filed in the United States prior to
November 29, 1999 (where an appeal is permitted when claims have been
twice or finally rejected), and ex parte reexamination proceedings filed
for patents that issued from an original application filed in the United
States on or after November 29, 1999 (where an appeal is only possible
when claims have been finally rejected). This date distinction is
necessitated by the conforming amendments to 35 U.S.C. 134 in S. 1948
and the effective date of the changes to the statute which are keyed to
the original filing date of the application which issued as the patent
under reexamination. The effective date language in section 4608 of S.
1948 limits the applicability of the new inter partes reexamination
Chapter 31, and the conforming amendments to 35 U.S.C. 134, 141, 143 and
145, to a reexamination of any patent that issues from an original
application which is filed in the United States on or after November 29,
1999. Thus, for ex parte reexaminations filed under Chapter 30, the
conforming amendments to 35 U.S.C. 134, 141, 143 and 145 only apply to
those ex parte reexamination proceedings filed under 1.510 for
patents that issue from an original application which is filed in the
United States on or after November 29, 1999. The conforming amendments
will not apply to ex parte reexamination proceedings filed under
1.510 for patents that have issued or will issue from an original
application which was filed in the United States prior to November 29,
1999.
Section 1.301, which provides for appeal by the patent owner in a
reexamination proceeding to the U.S. Court of Appeals for the Federal
Circuit, is proposed to be amended so as to be applicable to ex parte
reexamination proceedings filed under 1.510 and to indicate, for
inter partes reexamination proceedings filed under 1.913, that
1.983 is controlling.
Parts (a) and (b) of section 1.303, which provide for remedy by civil
action under 35 U.S.C. 145 for the patent owner in a reexamination
proceeding, are proposed to be amended so as to be applicable in
reexamination only to ex parte reexaminations filed under 1.510 for
patents that issue from an original application which is filed in the
United States prior to November 29, 1999. This date distinction is
necessitated by the conforming amendments to 35 U.S.C. 141 and the
effective date of the statute which is keyed to the original filing date
of the application which issues as the patent under reexamination. See
sections 4605 and 4608 of S. 1948. The effective date language limits
the applicability of the new inter partes reexamination Chapter 31, and
the conforming amendments to 35 U.S.C. 141, to any patent that issues
from an original application which is filed in the United States on or
after November 29, 1999. Thus, for ex parte reexaminations filed under
Chapter 30, the conforming amendments to 35 U.S.C. 141, which limit the
patent owner to an appeal only to the U.S. Court of Appeals for the
Federal Circuit, only apply to those ex parte reexamination proceedings
filed under 1.510 for patents that issue from an original application
which is filed in the United States on or after November 29, 1999. The
conforming amendments in section 4605 of S. 1948 will not apply to ex
parte reexamination proceedings filed under 1.510 for patents that
issue from an original application which is filed in the United States
prior to November 29, 1999. It is further proposed to amend 1.303 by
adding a new subsection (d) to clearly note that no remedy by civil
action under 35 U.S.C. 145 is available to the patent owner for ex parte
reexamination proceedings filed under 1.510 for patents that issue
from an original application which is filed in the United States on or
after November 29, 1999, and for any inter partes reexamination
proceedings filed under 1.913.
Section 1.304, which provides for the time for appeal by the patent
owner in a reexamination proceeding to the U.S. Court of Appeals for the
Federal Circuit, is proposed to be amended so as to be applicable to
inter partes reexamination proceedings filed under 1.913.
The section heading (title) to Subpart D is proposed to be amended by
inserting ``Ex Parte'' before Reexamination to provide that the
reexamination rules in this part generally apply to ex parte
reexamination proceedings. Since some of the rules also apply to inter
partes reexamination, they are specifically incorporated into the inter
partes reexamination rules, e.g., 1.933 (patent owner duty of
disclosure) incorporates 1.555; and 1.943 (manner of making
amendments) incorporates 1.530(d)(5). Unless specifically stated
otherwise, in this subpart the term ``reply'' shall also mean
``response.''
The titles of 1.501-1.570 and the undesignated center headings for
Subpart D are proposed to be amended by revising them to be limited to
ex parte reexamination except as specifically stated otherwise (e.g.,
1.530, 1.555 and 1.565).
Proposed section 1.501, which provides for citations of prior art in
patent files, sets forth the procedure that citations shall be entered
in the patent file unless a reexamination proceeding is pending and
reexamination has been ordered. In this situation, only citations by the
patent owner under 1.555 and by a third-party requester under either
1.510 or 1.535 will be entered during the pendency of the
reexamination proceeding. Citations by other parties filed during the
pendency of the reexamination proceeding will not be entered into the
patent file or the reexamination file until the reexamination proceeding
is concluded. The section is further amended to indicate that processing
of prior art citations in patent files during an inter partes
reexamination proceeding filed under 1.913 is controlled by 1.902.
Section 1.510, which relates to the contents of the reexamination
request, is proposed to be amended to limit the section to ex parte
reexamination proceedings. In addition, 1.510(b)(4) is proposed to be
amended to delete the requirement of mounting the copy of the patent to
be reexamined in single column format. Instead, a copy of the entire
patent including the front face, drawings, and specification/claims (in
double column format) for which reexamination is requested, and a copy
of any disclaimer, certificate of correction, or reexamination
certificate issued in the patent will be required. All copies must have
each page plainly written on only one side of a sheet of paper.
It is proposed to amend 1.515, 1.520, 1.525, 1.530, 1.535, and
1.540 to recite the reexamination as ``ex parte'' reexamination where
appropriate, to eliminate any potential for confusion. Further,
1.530(d) is proposed to be revised so that it applies to both ex parte
reexamination and inter partes reexamination proceedings.
Section 1.550, which provides for the conduct of the reexamination
proceeding, is proposed to be amended to limit the section to ex parte
reexamination proceedings filed under 1.510. In addition, 1.550(d)
is proposed to be amended to clarify that the failure to file a written
statement of an interview required under 1.560(b) shall be the basis
for terminating a reexamination proceeding. Proposed 1.550(e)(1)
specifically provides for the revival of terminated ex parte
reexamination proceedings under the unavoidable delay provisions of
1.137(a). The unavoidable delay provisions of 35 U.S.C. 133 are imported
into and are applicable to ex parte reexamination proceedings by 35
U.S.C. 305. Proposed 1.550(e)(2) provides for the revival of
terminated ex parte reexamination proceedings under the unintentional
provisions of 1.137(b). The unintentional delay fee provisions of 35
U.S.C. 41(a)(7) are imported into and are applicable to ex parte and
inter partes reexamination proceedings by section 4605 of S. 1948. Note,
however, the unintentional delay fee provisions of 35 U.S.C. 41(a)(7)
only become effective in reexamination proceedings on November 29, 2000
(one year after enactment of statute).
Section 1.560, which provides for interviews in reexamination
proceedings, is proposed to be amended to limit the section to ex parte
reexamination proceedings filed under 1.510. Note, however, that
there will be no interviews which address the issues of the proceeding
permitted in inter partes reexamination proceedings under 1.913. See
1.955.
In addition, 1.560(b) is proposed to be amended to clarify that the
patent owner must file a written statement of an interview after an
interview is held. The written statement may be filed either as a
separate paper or as a separate part of a response to an outstanding
Office action, whichever is later.
Section 1.565, which provides for concurrent Office proceedings, is
proposed to be amended to limit the section to ex parte reexamination
proceedings filed under 1.510. In addition, 1.565(e) is proposed
to be amended to change ``examiner-in-chief'' to ``administrative patent
judge'' to reflect their current title. Also, the appropriate references
for concurrent ex parte and inter partes reexamination situations have
been added. Section 1.565(c) is proposed to be amended to make it clear
that after prosecution has been terminated in a pending reexamination
proceeding (e.g., by the issuance of a Notice of Intent to Issue a
Reexamination Certificate) there is no right of merger of any
subsequently filed reexamination request.
It is proposed to amend 1.570 to recite the reexamination as ``ex
parte'' reexamination where appropriate, to eliminate any potential for
confusion.
In the current rules, or portions of the rules, that are amended in this
package, ``Commissioner,'' has been revised to read ``Director'' in
accordance with section 4732 of S. 1948. As to the rules, or portion of
the rules, not being revised in this package, it is anticipated that the
technical correction of ``Commissioner'' to ``Director'' will be
effected in a future rule package directed to technical corrections that
will be issued in due course.
The proposed title to Subpart H provides that the reexamination rules in
this part generally apply to inter partes reexamination proceedings.
Some of the inter partes reexamination rules specifically incorporate ex
parte reexamination rules, e.g., 1.943 (manner of making amendments)
incorporates 1.530(d)(5), and 1.933 (patent owner duty of
disclosure) incorporates 1.555. Unless specifically stated otherwise,
in this subpart the term ``reply'' shall also mean ``response.''
Proposed 1.902 provides for the processing of prior art citations
during an inter partes reexamination proceeding and is consistent with
the provisions of 1.501 which deals with prior art citations in
patent files and in ex parte reexamination proceedings.
Proposed 1.903 provides that the patent owner and the third-party
requester shall be sent copies of all Office actions, and that the
patent owner and the third-party requester must serve copies of all
papers on all other parties in the inter partes reexamination proceeding
or they may be refused consideration by the Office. This is analogous to
the provisions of 1.550(e).
Proposed 1.904 provides that the notices of filing of inter partes
reexamination requests will be published in the Official Gazette under
1.11(c) and that such a notice will be considered to be constructive
notice to the patent owner.
Proposed 1.905 provides that, unless otherwise provided for,
submission of papers by the public other than third-party requesters in
an inter partes reexamination proceeding will not be considered in the
proceeding and will be treated in accordance with the requirements of a
prior art submission under 1.902. Submissions not in accordance with
1.902 will be returned to the sender.
Proposed 1.906 covers the scope of reexamination in an inter partes
reexamination proceeding. While it is not intended that the examiners
will routinely complete a new search when conducting an inter partes
reexamination, the examiners may conduct additional searches and cite
and apply additional prior patents and printed publications when they
consider it appropriate and beneficial to do so. Paragraph (a) provides
that the examination is only on the basis of patents or printed
publications and on the basis of the requirements of 35 U.S.C. 112 with
respect to subject matter added or deleted during the inter partes
reexamination. Paragraph (b) provides that claims in a reexamination
proceeding must not enlarge the scope of the claims of the patent and
must not introduce new matter. Paragraph (c) provides that issues
relating to matters other than those indicated in paragraphs (a) and (b)
of this section (e.g., on sale, public use, duty of disclosure, etc.)
will not be resolved in a reexamination proceeding, but will be noted by
the examiner as being an open issue in the record. The examiner should
only raise an issue under 1.906(c) with caution after careful
consideration, and should only raise the issue once. Patent owners could
then file a reissue application if they wish such issues to be resolved.
Proposed 1.907 sets forth prohibitions on the filing of an inter
partes reexamination request. The basis for this section is 35 U.S.C.
317. Under 1.907(a), once an order for inter partes reexamination has
been issued, neither the third-party requester, nor any of its privies,
may file a subsequent request for an inter partes reexamination of the
patent until an inter partes reexamination certificate is issued, unless
authorized by the Director. Under subsection (b) once a final decision
has been entered against a party in a civil action that the party has
not sustained its burden of proving invalidity of any patent claim in
suit, then that party, and its privies, are thereafter precluded from
requesting an inter partes reexamination of any such patent claim on the
basis of issues which that party, or its privies, raised or could have
raised in such civil action, and an inter partes reexamination requested
by that party, or its privies, on the basis of such issues may not
thereafter be maintained by the Office. Under subsection (c) if a final
decision in an inter partes reexamination proceeding instituted by a
third-party requester is favorable to patentability of any patent claim,
then that party, or its privies, may not thereafter request inter partes
reexamination of any such patent claim on the basis of issues which that
party, or its privies, raised or could have raised in such inter partes
reexamination proceeding.
Proposed 1.913 provides for any third-party requester (except if the
estoppel provisions of 1.907 apply) to file a request under 35 U.S.C.
311 for an inter partes reexamination of a patent which issued from an
original application filed in the United States on or after November 29,
1999. The time period for filing such a request is limited to the period
of enforceability of the patent for which the request is filed.
Proposed 1.915(a) requires payment of the fee for requesting an inter
partes reexamination which is set forth in 1.20(c)(2). Paragraph (b)
of 1.915 indicates what each request for inter partes reexamination
must include. The requirements are analogous to the requirements of
1.510(b) for filing an ex parte reexamination request with the most
notable difference being that the third-party requester must be
identified in an inter partes reexamination request. Paragraph (c)
indicates that requests for an inter partes reexamination may be filed
by attorneys or agents on behalf of a third-party requester, but it is
noted that the real party in interest must be identified. Paragraph (d)
provides that if the request for inter partes reexamination does not
meet all the requirements of paragraph (b), the third-party requester
may be given an opportunity to complete the inter partes reexamination
request to avoid having the proceeding vacated.
Proposed 1.919 indicates that the date on which the entire fee for a
request for inter partes reexamination is received will be considered to
be the filing date of the request for inter partes reexamination.
Proposed 1.923 provides for a determination by the examiner as to
whether the request has presented a substantial new question of
patentability under 35 U.S.C. 312 and requires that the determination be
made within 3 months of the filing date of the request.
Proposed 1.925 provides for a refund under 1.26(c) of a portion of
the filing fee if inter partes reexamination is not ordered. See the
discussion of 1.26(c) above as to the amount of the refund.
Proposed 1.927 provides for review by petition to the Director of a
decision refusing inter partes reexamination.
Proposed 1.931 provides for ordering inter partes reexamination where
a substantial new question of patentability has been found pursuant to
1.923. Under paragraph (b), the only limitation placed on the selection
of the examiner by the Office is that the same examiner whose decision
refusing inter partes reexamination was reversed on petition filed under
1.927 ordinarily will not conduct the inter partes reexamination
ordered in the decision granting the petition.
Proposed 1.933 covers the duty of disclosure by a patent owner in an
inter partes reexamination proceeding. The rule provides that the duty
in an inter partes reexamination proceeding is the same as the patent
owner's duty in an ex parte reexamination proceeding as set forth in
1.555 (a) and (b), and is satisfied by filing a paper in compliance with
1.555 (a) and (b).
Proposed 1.935 indicates that the initial Office action on the merits
usually accompanies the inter partes reexamination order as expressly
provided for as an option in 35 U.S.C. 313. It is contemplated that the
initial paper from the examiner will comprise two parts. The first part
will address the issue as to whether the prior art raises a substantial
new question of patentability (SNQ). If the examiner determines that the
prior art does not raise an SNQ, reexamination is denied. No
patentability question would be addressed by the examiner. If the
examiner determines that the prior art does raise an SNQ, reexamination
will be ordered. In this situation, a second part of the initial Office
action will usually be issued which would address the patentability
issues and will constitute the first Office action on the merits.
Proposed 1.937 would cover the basic items relating to the conduct of
inter partes reexamination proceedings. Paragraph (a) provides that, in
accordance with 35 U.S.C. 314(c), unless otherwise provided by the
Director for good cause, all inter partes reexamination proceedings will
be conducted with special dispatch. Paragraph (b) provides that all
inter partes reexamination proceedings will be conducted according to
the procedures established for initial examination under
1.104-1.116. These proceedings will basically follow the procedures for
examining patent applications. Paragraph (c) provides that all
communications between the Office and the parties to the inter partes
reexamination which are directed to the merits of the proceeding must be
in writing and filed with the Office for entry into the record of the
proceeding.
Proposed 1.939 provides for the return of unauthorized papers filed
by any party in an inter partes reexamination, and that unless otherwise
authorized, no paper shall be filed in an inter partes reexamination
before the initial Office action on the merits.
Proposed 1.941 provides that amendments made by the patent owner in
an inter partes reexamination must be made in accordance with the
requirements of 1.530(d) and 1.943.
Proposed 1.943, paragraph (a) provides that the form of responses,
briefs, appendices, and other papers must be in accordance with
1.530(d)(5). Paragraph (b) provides for page limits for responses by the
patent owner and written comments by the third-party requester (other
than briefs). Amendments, appendices of claims, and reference materials
such as prior art references would not be included in this total.
Paragraph (c) provides for page limits or total word limits for briefs.
Proposed 1.945 provides that a patent owner will be given at least
thirty days to respond to any Office action on the merits. Although
problems may arise in certain cases and extensions of time may be
granted under 1.956, it is felt that relatively short response times
are necessary in order to process reexaminations with ``special
dispatch.'' While the Office intends to set a two-month period for
patent owner to respond to an Office action on the merits in usual
situations, the minimum period will always be at least 30 days.
Proposed 1.947 provides that each time a patent owner files a
response to any Office action on the merits, the third-party requester
may once file written comments within a period of 30 days from the date
of service of the patent owner's response. Since 35 U.S.C. 314(b)(3)
statutorily imposes this period for third-party requester comments, this
time may not be extended. Thus, any third-party comments, including any
supplemental comments, filed after expiration of 30 days from the date
of service of the patent owner's response shall be considered to be
untimely filed and unauthorized, and shall be returned to the
third-party in accordance with 1.939.
Proposed 1.948 provides that additional third-party requester prior
art submissions as defined under 1.501 may be filed after the inter
partes reexamination order only if they are submitted as part of a
comments submission under 1.947 (written comments to a patent owner
response to an Office action on the merits) and limited to: (1) Any
prior art which is necessary to rebut a finding of fact by the examiner;
(2) any prior art which is necessary to rebut a response of the patent
owner; or (3) any prior art which became known or available to the
third-party requester after the filing of the inter partes request for
reexamination where a discussion of the pertinency of each reference to
the patentability of at least one claim is included. The purpose of this
rule is twofold. First, the third-party requester may cite any prior art
needed to rebut a position taken by the examiner or the patent owner.
Second, the third-party requester may submit prior art newly discovered
or newly available since the filing of the inter partes reexamination
request provided a discussion of the pertinency of each reference to the
patentability of at least one claim is included. The only limitation is
that the prior art may only be submitted along with written comments
filed by the third-party requester under 1.947 in response to a
patent owner response to an Office action on the merits. Limiting prior
art submissions to newly discovered or newly available prior art (except
when used for rebuttal purposes) will encourage the third-party
requester to submit all known pertinent prior art along with the initial
request for inter partes reexamination. Later submission of previously
known or available prior art would only be permissible to rebut a
position taken by the examiner or the patent owner, or through the
filing of an ex parte reexamination request (which, if ordered, would be
merged with the inter partes reexamination proceeding). Permitting the
third-party requester to timely submit newly discovered or previously
unavailable prior art, however, will obviate the need for the
third-party requester to have to file an ex parte request for
reexamination. To prevent harassment of the patent owner due to frequent
submissions of prior art citations during a reexamination proceeding,
such submissions may only be filed along with written comments filed by
the third-party requester in response to a patent owner response to an
Office action on the merits or after an action closing prosecution.
Proposed 1.949 provides for the close of prosecution on the second
or subsequent Office action, as opposed to a final rejection or a final
action which would be issued in an ex parte reexamination proceeding.
The distinction between a final action (including a final rejection) and
an action closing prosecution is important as appeal rights to the Board
of Patent Appeals and Interferences under 35 U.S.C. 134 (b) and (c)
mature only with a final action (as opposed to ``twice rejected'' in an
application under 35 U.S.C. 134(a)). The statute permits the patent
owner to appeal finally rejected claims, and the third-party requester
to appeal final decisions favorable to patentability to the Board of
Patent Appeals and Interferences. The rules were drafted to provide for
both the patent owner and the third-party requester to submit comments
on the examiner's patentability findings prior to making such findings
final. The action closing prosecution (in lieu of a final action) is
needed to preclude one party from filing a notice of appeal while
another party is filing comments seeking reconsideration of an
examiner's decision. It is only after the examiner has considered all
the comments submitted by all the parties that a final rejection and
final decision favorable to patentability will be issued by way of the
Right of Appeal Notice under 1.953. At that time, both the patent
owner and the third-party requester may appeal to the Board of Patent
Appeals and Interferences.
Proposed 1.951 provides the options available to the parties after
an Office action closing prosecution. Both the patent owner and the
third-party requester may once file a response limited to issues raised
in the action closing prosecution. The patent owner may also submit
proposed amendments (subject to the criteria of 1.116 as to whether
or not the amendments shall be admitted). If one party files a response,
the other party may once file written comments on the other's response.
The time periods within which the patent owner and the third-party
requester may act (as provided for by this section) may run
concurrently. In this manner all parties are provided an equal
opportunity to contest the examiner's patentability findings before the
findings are made final and ripe for appeal.
Proposed 1.953(a) provides that, following the responses or
expiration of the time for response in 1.951, the examiner may issue
a right of appeal notice which shall include a final rejection and/or
final decision favorable to patentability in accordance with 35 U.S.C.
134. The intent of limiting the appeal rights until after the examiner
issues a ``Right of Appeal Notice'' is to specifically preclude the
possibility of one party attempting to appeal prematurely while
prosecution before the examiner is being continued by the other party.
Proposed 1.953(b) provides that any time after the initial Office
action on the merits in an inter partes reexamination, the patent owner
and all third-party requesters may stipulate that the issues are
appropriate for a final action, which would include a final rejection
and/or a final determination favorable to patentability, and may request
the issuance of a Right of Appeal Notice. If the examiner determines
that no other issues are present or should be raised, a Right of Appeal
Notice limited to the identified issues shall be issued. The request for
an expedited notice will enable the parties to accelerate the inter
partes reexamination proceeding. Proposed 1.953(c) provides that the
Right of Appeal Notice shall be a final action, which would include a
final rejection and/or final decision favorable to patentability, and
that no amendment under 1.116 can be made in response to the Right of
Appeal Notice. The Right of Appeal Notice shall set a one-month time
period for either party to appeal. If no appeal is filed, the
reexamination proceeding will be terminated, and the Director will
proceed to issue a certificate under 1.997 in accordance with the
Right of Appeal Notice.
Proposed 1.955 provides that interviews between the examiner and the
patent owner and/or the third-party requester which discuss the merits
of the proceeding will not be permitted in inter partes reexamination
proceedings. Thus, no separate ex parte interviews will be permitted,
and no inter partes interviews will be permitted. All communications
between the Office and the patent owner which are directed to the merits
of the proceeding must be in writing and filed with the Office for entry
into the record of the proceeding. An informal amendment will not be
accepted, as that would amount to an informal ex parte interview. The
Office has reconsidered its initial position taken in the August 11,
1995, Notice of Proposed Rule-making which proposed to permit
owner-initiated interviews in which the patent owner and the third-party
requester participate. Thus, in the present rule package, no interviews
will be held, nor be permitted, in inter partes reexamination cases
which discuss the merits of the proceeding. In other words, neither the
patent owner nor the third-party requester will be able to initiate, nor
participate in, an ex parte nor an inter partes interview which
discusses the merits of the proceeding in an inter partes reexamination
proceeding. The rationale for this is discussed above in Issue 18 of the
consideration of the comments responsive to the August 11, 1995, Notice
of Proposed Rulemaking.
Proposed 1.956 relates to patent owner extensions of time for
responding to a requirement of the Office in inter partes reexamination
proceedings. As in ex parte reexamination practice, a patent owner may
only obtain an extension of time for sufficient cause, and the request
for such extension must be filed on or before the end of the period for
response. Note that the time for the third-party requester to file
comments to patent owner responses may not be extended, as set forth in
1.947.
Proposed 1.957(a) provides that a third-party requester's submission
in inter partes reexamination may be refused consideration if it is
untimely or is inappropriate. Proposed 1.957(b) and (c) relate to the
patent owner's failure to timely or appropriately respond in inter
partes reexamination proceedings. In this event, if no claims are found
patentable, the proceeding shall be terminated and a reexamination
certificate shall be issued. If claims are found patentable, further
prosecution shall be limited to the patentable claims, and any
additional claims that do not expand the scope of the patentable claims.
Proposed 1.957(d) provides that when the action by the patent owner
is a bona fide attempt to respond and to advance the case, and is
substantially a complete response to the Office action, but
consideration of some matter or compliance with some requirement has
been inadvertently omitted, an opportunity to explain and supply the
omission may be given.
Proposed 1.958(a) provides for the revival of terminated inter partes
reexamination proceedings under the unavoidable delay provisions of
1.137(a). The unavoidable delay provisions of 35 U.S.C. 133 are imported
into and are applicable to inter partes reexamination proceedings under
35 U.S.C. 314. Proposed 1.958(b) provides for the revival of
terminated inter partes reexamination proceedings under the
unintentional provisions of 1.137(b). The unintentional delay fee
provisions of 35 U.S.C. 41(a)(7) are imported into and are applicable to
inter partes reexamination proceedings under section 4605 of S. 1948.
Note, however, the unintentional delay fee provisions of 35 U.S.C.
41(a)(7) only become effective in reexamination proceedings on November
29, 2000 (one year after enactment of statute).
Proposed 1.959 relates to appeals and cross appeals to the Board of
Patent Appeals and Interferences in inter partes reexamination
proceedings. Both patent owners and third-party requesters are given
appeal rights in accordance with 35 U.S.C. 315.
Proposed 1.961 relates to time of transfer of the jurisdiction of the
appeal over to the Board of Patent Appeals and Interferences in inter
partes reexamination proceedings.
Proposed 1.962 relates to the definition of appellant and respondent
in inter partes reexamination proceedings.
Proposed 1.963 relates to the time periods for filing briefs in inter
partes reexamination proceedings.
Proposed 1.965 relates to the requirements of the appellant brief in
inter partes reexamination proceedings.
Proposed 1.967 relates to the requirements of the respondent brief in
inter partes reexamination proceedings.
Proposed 1.969 relates to the examiner's answer. An examiner's answer
may not include a new ground of rejection nor a new decision favorable
to patentability. In either case (if there is to be a new ground of
rejection or a new decision favorable to patentability), prosecution
should be reopened.
Proposed 1.971 gives any appellant one opportunity to file a rebuttal
brief following the examiner's answer. The rebuttal brief filed by an
appellant who is the patent owner is limited to the issues raised in the
examiner's answer and/or in any respondent brief. The rebuttal brief
filed by an appellant who is a third-party requester is limited to the
issues raised in the examiner's answer and/or in the patent owner's
respondent brief. The rebuttal brief of a third-party requester may not
be directed to the respondent brief of any other third-party requester.
No new ground of rejection can be proposed by a third-party requester
appellant.
Proposed 1.973 relates to the oral hearing in inter partes
reexamination proceedings.
Proposed 1.975 relates to affidavits or declarations after appeal in
inter partes reexamination proceedings.
Proposed 1.977 relates to the decision by the Board of Patent Appeals
and Interferences in inter partes reexamination proceedings. A reversal
of an examiner's decision favorable to patentability (i.e., a decision
not to make a rejection proposed by the third-party requester)
constitutes a decision adverse to patentability which will be set forth
as a new ground of rejection under 1.977(b).
Proposed 1.979 relates to the procedure following the decision or
dismissal by the Board of Patent Appeals and Interferences in inter
partes reexamination proceedings.
Proposed 1.981 relates to the procedure for the reopening of
prosecution following the decision by the Board of Patent Appeals and
Interferences in inter partes reexamination proceedings.
Proposed 1.983 relates to the patent owner's right to appeal to the
United States Court of Appeals for the Federal Circuit in inter partes
reexamination proceedings. Under section 141, the patent owner in inter
partes reexamination proceedings may appeal the decision of the Board of
Patent Appeals and Interferences only to the United States Court of
Appeals for the Federal Circuit. Under section 134(c), the third-party
requester in inter partes reexamination proceedings may not appeal the
decision of the Board of Patent Appeals and Interferences.
Proposed 1.985 relates to notification of prior or concurrent
proceedings in inter partes reexamination proceedings. Paragraph (a)
requires the patent owner to notify the Office of any prior or
concurrent proceeding involving the patent under inter partes
reexamination. Paragraph (b) permits any member of the public to notify
the Office of any prior or concurrent proceeding involving the patent
under inter partes reexamination. Such notice, however, must be limited
to merely providing notice without discussion of the issues in the inter
partes reexamination. Any notice that includes a discussion of the
issues will be returned to the sender.
Proposed 1.987 provides that when a patent involved in an inter
partes reexamination is concurrently involved in litigation, the
Director shall determine whether or not to suspend the inter partes
reexamination proceeding.
Proposed 1.989 relates to the merger of concurrent reexamination
proceedings.
Proposed 1.991 relates to the merger of a concurrent reissue
application and an inter partes reexamination proceeding.
Proposed 1.993 relates to the suspension of a concurrent interference
or an inter partes reexamination proceeding.
Proposed 1.995 relates to the third-party requester's participation
rights being preserved in a merged proceeding.
Proposed 1.997 provides for the issuance of the reexamination
certificate under 35 U.S.C. 316 after conclusion of an inter partes
reexamination proceeding. The certificate will cancel any patent claims
determined to be unpatentable, confirm any patent claims determined to
be patentable, and incorporate into the patent any amended or new claims
determined to be patentable. Once all of the claims have been canceled
from the patent, the patent ceases to be enforceable for any purpose.
Accordingly, any pending reissue proceeding or other Office proceeding
relating to a patent for which a certificate that cancelled all of the
patent claims has been issued will be terminated. This provides a degree
of assurance to the public that patents with all the claims canceled via
inter partes reexamination proceedings will not again be asserted.
Classification
Regulatory Flexibility Act
The Chief Counsel for Regulation of the Department of Commerce
certified to the Chief Counsel for Advocacy, Small Business
Administration, that the changes proposed in this notice, if adopted,
would not have a significant impact on a substantial number of small
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). This rulemaking
implements the provisions of Title IV, subtitle F (sections 4601 through
4608) of the ``American Inventors Protection Act of 1999,'' which
permits a third-party requester to participate more extensively during
the reexamination proceeding as well as giving them appeal rights. The
changes proposed in this notice (if adopted) would provide procedures
for a third-party to request optional inter partes reexamination of a
patent. The new inter partes proceedings are similar to the ex parte
proceedings, although they are more complicated procedurally to
accommodate the presence of the third-party.
Taking into account the overall similarities and additional complexity,
it is reasonable to assume that a similar proportion of small entities
will request inter partes reexamination as have requested ex parte
reexamination. Furthermore, it is anticipated that inter partes
reexamination requests will be filed by third-party requesters, while
patent owners will continue to file ex parte reexamination requests.
Approximately 400 ex parte reexamination filings have been received each
year since 1992, of which 55% or 220 have been filed by third-party
requesters. Since the beginning of the reexamination procedure, about
22.5% of the ex parte reexamination requesters have been small entities.
If all 220 of the third-party filed reexamination requests were filed as
requests for inter partes reexaminations, approximately 50 requests
(22.5%) would come from small entities. The higher cost of the inter
partes reexamination fee ($8,800) compared to the ex parte reexamination
fee ($2,520) reflects the greatly expanded participation available to
the third-party requester. In the inter partes proceeding, the third
party requester has the right to comment on every response by the patent
owner to the PTO, to be a party to any appeal by the patent owner to the
Board of Patent Appeals and Interferences, and to appeal any
determination of patentability to the Board. In the ex parte proceeding,
the third-party requester's role is limited to the request for
reexamination and a single reply to the patent owner's response. The
third party requester also has no appeal rights in an ex parte
reexamination. Therefore, the number of small businesses affected by
these proposed optional inter parte reexamination rules is not
significant, and the impact on each business, considering the benefits
of greater participation throughout the inter partes proceeding, is not
significant.
Executive Order 13132
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (August 4, 1999).
Executive Order 12866
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (September 30, 1993).
Paperwork Reduction Act
This notice of proposed rulemaking involves information collection
requirements which are subject to review by the Office of Management and
Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501
et seq.). The collection of information involved in this notice of
proposed rulemaking has been reviewed and previously approved by OMB
under OMB control number 0651-0033.
As required by the Paperwork Reduction Act of 1995 (44 U.S.C. 3507(d)),
the Patent and Trademark Office has submitted an information collection
package to OMB for its review and approval of the proposed information
collections under OMB control number 0651-0033. The Patent and Trademark
Office is submitting this information collection to OMB for its review
and approval because this notice of proposed rulemaking will add the
request for optional inter partes reexamination of a patent to that
collection.
The title, description and respondent description of the information
collection is shown below with an estimate of the annual reporting
burdens. Included in this estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information. The principal impact of the
changes in this notice of proposed rulemaking is to implement the
changes to Office practice necessitated by Title IV, subtitle F
(sections 4601 through 4608) of the ``American Inventors Protection Act
of 1999'' (enacted into law by 1000(a)(9), Division B, of Pub. L.
106-113).
OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
Type of Review: Approved through September of 2000.
Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 172,475.
Estimated Time Per Response: