2667 Handling of Inappropriate or Untimely Filed Papers [R-10.2019]

The applicable regulations (such as 37 CFR 1.501, 1.902 and 1.905, 1.948 and 1.939) provide that certain types of correspondence will not be considered. Whenever reexamination correspondence is received, a decision is required of the Office as to the action to be taken on the correspondence based on what type of paper it is and whether it is timely. In certain instances, the submitted correspondence (submission) will be entered into the reexamination file and be considered. In other instances, the correspondence will be entered into the reexamination file, but will not be considered. In still other instances, the correspondence will not be entered into the reexamination file and will be returned to the party that sent it. The return of certain inappropriate submissions, not being considered, reduces the amount of paper which would ultimately have to be scanned into the record. Where an inappropriate (unauthorized, improper) paper has already been scanned into the Image File Wrapper (IFW) of the reexamination proceeding before discovery of the inappropriate nature of the paper, the paper cannot be physically returned to the party that submitted it. Instead, the paper will be “returned” by expunging it, i.e., by marking the paper as “non-public” and “closed” so that the paper does not appear in the active IFW record with the other active papers that comprise the public record of the reexamination proceeding.

Where papers are filed during reexamination proceedings which are inappropriate because of some defect, such papers will be expunged from the official file by marking the papers “closed” and “non-public”.

I. TYPES OF PAPERS EXPUNGED WITH APPROVAL OF THE CENTRAL REEXAMINATION UNIT DIRECTOR OR SPRS

A.Filed by Patent Owner

1. Premature Response/Comments by Patent Owner

Any response/comments as to materials of record or any amendment filed by the patent owner prior to the first Office action is premature and will not be considered, and will be expunged. 37 CFR 1.939. Where a paper is to be expunged based on the above reason, and the paper is not accompanied by a petition under 37 CFR 1.182 or 1.183, the CRU Director or SPRS will expunge the paper. Where the submission is accompanied by a petition under 37 CFR 1.182 or 1.183, the reexamination proceeding should be addressed in the Office of Patent Legal Administration (OPLA) to issue a decision on the petition.

Any petition requesting merger of a reexamination with a reexamination or reissue, or a stay of a reexamination or reissue in place of merger, that is filed prior the order to reexamine (37 CFR 1.931) will be expunged and will not be considered. See MPEP §§ 2686.01 and 2686.03. The reexamination proceeding should be addressed in OPLA to issue a decision on the petition.

2. Response Is Too Long

Where the length of the patent owner submission exceeds that permitted by 37 CFR 1.943, the submission is improper. Accordingly, pursuant to 37 CFR 1.957(d), if the submission is made prior to the mailing of an ACP, a Notice will be mailed to the patent owner. The Notice will be issued by the examiner and will permit the patent owner to exercise one of the following two options:

• (A) Submit a re-drafted response that does not exceed the page limit set by 37 CFR 1.943; or
• (B) File a copy of the supplemental response with pages redacted to satisfy the 37 CFR 1.943 page limit requirement.

The Notice will set a period of 15 days from the date of the notice to respond. If no response is received, the improper (too-long) patent owner submission will not be considered. If the submission was necessary to respond to an outstanding Office action, the prosecution of the reexamination proceeding is either terminated pursuant to 37 CFR 1.957(b) or limited pursuant to 37 CFR 1.957(c). Any previously submitted third party comments in response to this improper (too-long) patent owner submission would also not be considered, as being moot, since the patent owner did not in fact respond to the Office action in accordance with the rules.

If a response to the Notice is received, then under 37 CFR 1.947, the third party requester may once file written comments, limited to issues raised by the Office action or the patent owner’s response to the Notice, within 30 days from the date of service of the patent owner’s response to the Notice.

With respect to the length of the papers, the following additional information is to be noted. Similar to the Federal Rules of Appellate Procedure, the provisions of 37 CFR 1.943(c) are waived to the extent that the table of contents pages, the table of case law pages, and the pages of the claims (but not claim charts applying the art to the claims) are excluded from the page limits that are set forth by 37 CFR 1.943(c). The claims appendix is expressly excluded from the length (see 37 CFR 1.943(c)). Also, the sections of the appellant and respondent briefs required under 37 CFR 41.67(c)(1)(i)-(iv) and (ix)-(xi) and 37 CFR 41.68(b)(1)(i) - 37 CFR 41.68(b)(1)(iv) and (viii)-(xi) respectively (i.e., Real Party in Interest, Related Appeals and Interferences, Status of Claims, Status of Amendments, Evidence Appendix, Related Proceedings Appendix, and Certificate of Service) are excluded from the page limits that are set forth by 37 CFR 1.943(c). Sections are excluded if and only if those sections are limited to the information required by those sections. If other information is included, the entire page count of the section containing such other information will be included.

Any affidavit or declaration (or a clearly defined portion thereof) that contains opinion(s) of the affiant/declarant, or argument(s) that the art either does or does not anticipate or render obvious the claims, or specific claim elements, of the patent under reexamination, is considered to be part of the comments submitted by the patent owner, or by the third party requester, and is subject to the page limit requirements of 37 CFR 1.943. Affidavits or declarations that are excluded from the page limit requirements include declarations attempting to swear behind (antedate) the filing date of a reference, or to establish the date of a printed publication; declarations that provide comparative tests and results and a scientific or technological analysis of the results; and other declarations which are limited to establishing facts. However, if the patent owner’s affidavit or declaration includes any legal argument as to how an outstanding/proposed rejection is overcome, then the page(s) of the affidavit or declaration in which the argument appears would be included against the page limit count. Likewise, if a third party requester affidavit or declaration includes any legal argument as to how a rejection is supported, then the page(s) of the affidavit or declaration in which the argument appears would be included against the page limit count. Similarly, attached exhibits presenting data or drawings are not included against the page limit count, unless an exhibit or drawing includes argument as to how the outstanding rejection is overcome. Any page(s) of the exhibit or sheet(s) of drawings that include such argument would be included against the page limit count.

3. Improper Patent Owner Response

The patent owner can only file once under 37 CFR 1.951(a). Any second or supplemental submission after ACP by the patent owner will be expunged, unless prosecution has been reopened. See MPEP § 2672.

Where a paper is to be expunged based on the above reason or other appropriate reasons, and the paper is not accompanied by a petition under 37 CFR 1.182 or 1.183, the CRU Director or the SPRS will expunge the paper. Where a petition under 37 CFR 1.182 or 1.183 has been filed, the reexamination proceeding should be addressed in OPLA to issue a decision on the petition.

4. Improper Petition

Note that after an opposition to any patent owner petition is filed by a third party requester (regardless of whether such opposition has an entry right or not), any further patent owner paper in opposition/rebuttal/response to the third party opposition paper will not be considered and will be expunged. There must be a limitation on party iterations of input, especially given the statutory mandate for special dispatch in reexamination. Further, any petition requesting that an extension of time be denied will be expunged, since a third party requester does not have a statutory right to challenge this discretionary procedural process in the reexamination proceeding; whether or not the time is extended clearly does not go to the merits of the reexamination proceeding. The same would apply to oppositions as to requester petitions for accepting late papers, e.g., an appeal brief, and the like. The patent owner could, however, file a petition in opposition to a third party requester’s 37 CFR 1.181 petition, to support the action taken by the Office, since the Office has an unequivocal right to enforce its rules and practice, and patent owner can explain why the Office acted within its right.

B.Filed by Third Party Requester

1. Premature Comments by Third Party Requester

Any comments filed by a third party requester subsequent to the request for reexamination (i.e., not part of it) and prior to the first Office action is premature and will not be considered, and will be expunged. 37 CFR 1.939. Any petition to stay a reexamination proceeding because of an interference (MPEP § 2686.02), which is filed prior to the first Office action in the reexamination proceeding will be expunged and will not be considered.

Any submission of comments filed by a third party requester where the patent owner has not responded to the outstanding Office action is premature, and it will be expunged and will not be considered. 37 CFR 1.947.

Where a paper is to be expunged based on the above reason, and the paper is not accompanied by a petition under 37 CFR 1.182 or 1.183, the CRU Director or the SPRS will expunge the paper. Where the premature submission is accompanied by a petition under 37 CFR 1.182 or 1.183, the reexamination proceeding should be addressed in OPLA to issue a decision on the petition.

2. Submission Is Too Long

Where the length of the third party requester submission exceeds that permitted by 37 CFR 1.943, the submission is improper. Accordingly, if the submission is made prior to the mailing of an ACP, a Notice will be issued by the examiner and mailed to the third party requester permitting the third party requester to exercise one of the following two options:

• (A) Submit a re-drafted submission that does not exceed the page limit set by 37 CFR 1.943; or
• (B) File a copy of the supplemental submission with pages redacted to satisfy the 37 CFR 1.943 page limit requirement.

The Notice will set a period of 15 days from the date of the notice to respond to the notice. If no response is received, the improper third party requester submission will not be considered.

For additional information with respect to the length of the papers, see subsection I.A.2. above, which is incorporated herein by reference.

3. Improper Comments

Where the third party requester comments are not limited to the scope provided by the rules, they are improper and will not be considered, and will be expunged. 37 CFR 1.947 and 1.951(b). For example, comments following the patent owner’s response to a first Office action must be limited to issues and/or points covered by the first action and/or the patent owner’s response (in accordance with 37 CFR 1.947); if they are not, they will be expunged. See MPEP § 2666.05 for action to be taken by the examiner.

For any third party requester comments containing a submission of prior art, the prior art must be limited solely to prior art which is necessary to rebut a finding of fact by the examiner, which is necessary to rebut a response of the patent owner, or, which for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination. Prior art submitted for the reason that it became known or available to the third party requester for the first time after the filing of the request for inter partes reexamination must be accompanied by a statement as to when the prior art first became known or available to the third party requester and must include a discussion of the pertinency of each reference to the patentability of at least one claim. If the prior art submission does not satisfy at least one of the criteria noted above, the submission is improper and will be expunged and will not be considered. See MPEP § 2666.05 for action to be taken by the examiner.

Supplemental third party requester comments are improper since 37 CFR 1.947 states that comments can “once” be filed. Such supplemental comments are improper, will not be considered, and will be expunged. However, supplemental third party comments are permitted in response to the patent owner’s completion of a response, even where the initial third party comments were provided after the incomplete patent owner response, unless patent owner’s submission correcting the defect is solely directed to form and does not go to the merits of the case (e.g. payment of a fee other than excess claims fee). Supplemental third party comments are also permitted in response to a supplemental patent owner response.

The third party requester can only respond to a patent owner submission after an Action Closing Prosecution (ACP), and may only do so once under 37 CFR 1.951(b). Any original third party requester comments (where the patent owner does not respond) or any second or supplemental responsive comments after ACP are improper and will be expunged. See MPEP § 2672.

Third party comments in response to a patent owner submission which does not respond to an Office action are not permitted, since 37 CFR 1.947 only permits comments in response to the patent owner’s response to an Office action. For example, where the patent owner submits a new power of attorney, the third party requester is not permitted to submit a set of comments, because the patent owner submission is not a response to an Office action. If the third party requester does comment, it will be expunged.

4. Improper Petition

Any petition to stay a reexamination proceeding because of an interference (MPEP § 2686.02), which is filed prior to the first Office action in the reexamination proceeding will be expunged and will not be considered. 37 CFR 1.939.

Any petition by a third party requester to stay a reexamination proceeding because of an interference where the third party is not a party to the interference will be expunged and will not be considered. See MPEP § 2686.02.

Any third party requester petition requesting merger of a reexamination with a reexamination or an application for reissue will not be considered. See MPEP §§ 2686.01 and 2686.03. Also, a petition by the requester requesting that a later-filed case should not be merged (see MPEP § 2640 “Second Or Subsequent Request...”) will be expunged and will not be considered, where it is filed prior the order to reexamine. Prior to the order, such a petition is not ripe for decision, because it is possible that reexamination will not be granted and there will be nothing to merge.

In all these situations, the reexamination proceeding should be addressed in OPLA to issue a decision on the petition.

Note that after an opposition to any third party requester petition is filed by a patent owner (regardless of whether such opposition has an entry right or not), any further requester paper in opposition/rebuttal/response to the patent owner opposition paper will not be considered and will be expunged. There must be a limitation on party iterations of input, especially given the statutory mandate for special dispatch in reexamination. Further, any petition requesting that an extension of time be denied will be expunged, since a requester does not have a statutory right to challenge this discretionary procedural process in the reexamination proceeding; whether or not the time is extended clearly does not go to the merits of the reexamination proceeding. The same would apply to oppositions as to petitions for revival of a terminated prosecution, petitions challenging not making an action a final rejection or an Action Closing Prosecution (ACP), reopening prosecution, and entry of an amendment after final rejection or ACP, and the like. The third party requester could, however, file a petition in opposition to a patent owner’s 37 CFR 1.181 petition, to support the action taken by the Office, since the Office has an unequivocal right to enforce its rules and practice, and requester can explain why the Office acted within its right.

C.Filed by Third Party Other Than Third Party Requester

No submissions on behalf of any third parties other than third party reexamination requesters will be considered unless such submissions are in accordance with 37 CFR 1.915 or are one of the exceptions noted below. Thus, a petition to merge a reexamination, or stay one of them because of the other, which is filed by a party other than the patent owner or the third party requester of reexamination will not be considered, but will be expunged as being improper under 37 CFR 1.905. See also MPEP § 2686.01 and MPEP § 2686.03.

A paper submitted by a third party other than a third party requester must be (1) a 37 CFR 1.501 art citation limited to the citation of patents and printed publications and an explanation of the pertinency and applicability of the patents and printed publications, or (2) bare notice of suits and other proceedings involving the patent (see MPEP §§ 2686 and 2686.04) which may include copies of decisions or other court papers, or papers filed in the court, from litigations or other proceedings involving the patent. Such submissions must be without additional comment and cannot include further arguments or information. If the submission by the third party is not one of the above-described two types of papers, it will be expunged or destroyed. If a submission by the third party of either of the above-described two types of papers contains additional material that goes beyond the scope of what is permitted, the paper will be expunged or destroyed. If a proper 37 CFR 1.501 submission is filed by a third party after the order to reexamine, it will be stored.

II. TYPES OF DEFECTIVE PAPERS TO BE RETAINED IN THE “REEXAMINATION FILE”

A.Filed by Patent Owner

1. Unsigned Papers

Papers filed by the patent owner which are unsigned, or signed by fewer than all of the patent owners where no attorney or agent is of record or acting in representative capacity, will be denied consideration, but will be retained in the file. 37 CFR 1.33.

2. No Proof of Service

Papers filed by the patent owner in which no proof of service is included, and proof of service is required, may be denied consideration. Such papers should be denied consideration where it cannot be determined that service was in fact made and the third party requester’s response/comment /appeal/brief period is to be set by the date of service. See 37 CFR 1.248 and MPEP § 2666.06.

3. Late Papers

Where patent owner has filed a paper which was filed after the period for response set by the Office, the paper will be retained in the file but will not be considered.

A patent owner submission following a third party requester submission, where the patent owner submission is filed subsequent to the permitted time from the date of service of third party requester’s submission, will be retained in the file but will not be considered. The date that the Office actually receives the third party requester’s submission has no bearing here; it is the date of service on the patent owner which is critical.

Thus, for example, in instances where there is a right to file an opposition to a petition, any such opposition must be filed within two weeks of the date upon which a copy of the original petition was served on the opposing party, to ensure consideration. Any such opposition that is filed after the two-week period will remain in the record, even though it need not be considered.

4. Defective Amendment

A proposed amendment to the description and claims which does not comply with 37 CFR 1.530(d)-(k) will be retained in the file, but the amendment will not be considered. An exception to this is where the only defect in the amendment is that it enlarges the scope of the claims of the patent or introduces new matter. Such an amendment will be considered, and a rejection will be made in the next Office action.

5. Premature Appeal

Where a notice of appeal or notice of cross appeal is filed before a Right of Appeal Notice (RAN) has been issued, the paper will be retained in the file but will not be considered (other than to inform the parties that the appeal is not acceptable).

B.Filed by Third Party Requester

1. Unsigned Papers

Papers filed by a third party requester which are unsigned or not signed by the third party requester or requester’s attorney/agent of record or attorney/agent acting in representative capacity will be denied consideration. 37 CFR 1.33.

2. No Proof of Service

Papers filed by a third party requester in which no proof of service is included as to the patent owner and/or any other third party requester, and proof of service is required, may be denied consideration. Such papers should be denied consideration where it cannot be determined that service was in fact made and another party’s response/comment/appeal/brief period is to be set by the date of service. 37 CFR 1.248.

3. Late Papers

Any third party requester submission following a patent owner’s submission, where the third party requester submission is filed subsequent to the permitted time from the date of service of the patent owner’s submission, will be retained in the file, but will not be considered. Note, for example, a 37 CFR 1.947 submission of third party comments following the patent owner’s response. Where the third party comments are submitted subsequent to 30 days from the date of service of the patent owner’s response, they will be retained in the file but will not be considered. The date that the Office actually receives the patent owner’s response has no bearing here; it is the date of service on the third party requester which is critical.

Where the third party requester has filed a paper which is untimely, that is, it was filed after the period set by the Office for response, the paper will be retained in the file, but will not be considered.

Thus, for example, in instances where there is a right to file an opposition to a petition, any such opposition must be filed within two weeks of the date upon which a copy of the original petition was served on the opposing party, to ensure consideration. Any such opposition that is filed after the two-week period will remain in the record, even though it need not be considered.

4. Premature Appeal

Where a notice of appeal or notice of cross appeal is filed before a Right of Appeal Notice (RAN) has been issued, the paper will be retained in the file, but will not be considered (other than to inform the parties that the appeal is not acceptable). 37 CFR 41.61.

III. PAPERS LOCATED IN THE “PATENT FILE”

Submissions of art citations in an inter partes reexamination will be stored until the reexamination is concluded. Note 37 CFR 1.902.

Submission of art citations in an inter partes reexamination is permitted by the patent owner and the third party requester to the extent stated in the regulations. 37 CFR 1.501 and 1.902. All other submissions of art citations based solely on prior patents or publications filed after the date of the order to reexamine are retained as stated above. Such citations are not immediately entered into the patent file, but rather are stored until the reexamination proceedings have been concluded. See MPEP § 2602.

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