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2227    Incomplete Request for Ex Parte Reexamination [R-11.2013]

37 C.F.R. 1.510   Request for ex parte reexamination.

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  • (c) If the request does not include the fee for requesting ex parte reexamination required by paragraph (a) of this section and meet all the requirements by paragraph (b) of this section, then the person identified as requesting reexamination will be so notified and will generally be given an opportunity to complete the request within a specified time. Failure to comply with the notice will result in the ex parte reexamination request not being granted a filing date, and will result in placement of the request in the patent file as a citation if it complies with the requirements of § 1.501.
  • (d) The filing date of the request for ex parte reexamination is the date on which the request satisfies all the requirements of this section.

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Request papers that fail to satisfy all the requirements of 37 CFR 1.510(a) and (b) are incomplete and will not be granted a filing date.

  OFFICE PROCEDURE WHERE THE REQUEST FAILS TO COMPLY WITH REQUIREMENTS FOR A FILING DATE

A.   Discovery of Non-Compliance with Filing Date Requirement(s) Prior to Assigning a Filing Date

1.   Notice of Failure to Comply with Reexamination Request Filing Requirement

The Central Reexamination Unit (CRU) Legal Instrument Examiner (LIE) and CRU Paralegal check the request for compliance with the reexamination filing date requirements. If it is determined that the request fails to meet one or more of the filing date requirements (see MPEP § 2214), the person identified as requesting reexamination will be so notified and will be given an opportunity to complete the requirements of the request within a specified time (generally 30 days). Form PTOL-2077, “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements,” is used to provide the notification for ex parte reexamination. If explanation is needed as to a non-compliance item, the box at the bottom of the form will be checked. An attachment will then be completed to specifically explain why the request does not comply. If there is a filing fee deficiency, a form, PTOL-2057, is completed and attached to form PTOL-2077.

2.   Failure to Remedy Defect(s) in “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements”

If after receiving a “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements,” the requester does not remedy the defects in the request papers that are pointed out, then the request papers will not be given a filing date, but the assigned control number will be retained. Examples of a failure to remedy the defect(s) in the notice are (A) where the third party requester does not timely respond to the notice, and (B) where requester does respond, but the response does not cure the defect(s) identified to requester and/or introduces a new defect or deficiency.

If the third party requester timely responds to the “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements,” the CRU LIE and CRU Paralegal will check the request, as supplemented by the response, for correction of all non-compliance items identified in the notice. If any identified non-compliance item has not been corrected, a filing date will not be assigned to the request papers. It is to be noted that a single failure to comply with the “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements” will ordinarily result in the reexamination request not being granted a filing date. 37 CFR 1.510(c) provides that “[f]ailure to comply with the notice may result in the ex parte reexamination request not being granted a filing date.” Thus, absent extraordinary circumstances, requester will be given only one opportunity to correct the non-compliance. Similarly, if the response introduces a new defect or deficiency into the request papers, the ex parte reexamination request will not be granted a filing date absent extraordinary circumstances.

If the request papers are not made filing-date-compliant in response to the Office’s “Notice of Failure to Comply with Ex Parte Reexamination Request Filing Requirements,” the CRU LIE will prepare a “Notice of Disposition of Ex Parte Reexamination Request,” form PTOL-2079, identifying what defects have not been corrected.

B.   Non-Compliance with Filing Date Requirement(s) Discovered After Initial Issuance of Notice of Reexamination Request Filing Date

1.   Decision Vacating Filing Date

After a filing date and control number are assigned to the request papers, the examiner reviews the request to decide whether to grant or deny reexamination. If, in the process of reviewing the request, the examiner notes a non-compliance item not earlier recognized, the examiner will forward a memo to his/her CRU Supervisory Patent Reexamination Specialist (SPRS) detailing any such non-compliance item(s); a “cc” of the e-mail is provided to the Director of the CRU and to a Senior Legal Advisor in the Office of Patent Legal Administration (OPLA) overseeing reexamination. The CRU SPRS will screen the memo and discuss the case with an appropriate OPLA Legal Advisor. Upon confirmation of the existence of any such non-compliant item(s), OPLA will issue a decision vacating the assigned reexamination filing date. In OPLA’s decision, the requester will be notified of the non-compliant item(s) and given time to correct the non-compliance. As noted above, 37 CFR 1.510(c) provides that “[f]ailure to comply with the notice may result in the ex parte reexamination request not being granted a filing date.” Thus, absent extraordinary circumstances, requester will only be given one opportunity to correct the non-compliant item(s) identified in the Decision Vacating Filing Date. This category also includes instances where the Office becomes aware of a check returned for insufficient fund or a stopped payment of a check after a filing date has been assigned, and prior to the decision on the request for reexamination.

2.   Failure to Remedy Defect in Decision Vacating Filing Date

If the third party requester does not timely respond to the Office’s notice, the CRU LIE will so inform a Senior Legal Advisor in the OPLA overseeing reexamination, and OPLA will issue a Decision Vacating the Proceeding.

If the requester timely responds to the Decision Vacating Filing Date, but the response fails to satisfy all the non-compliance items identified in the decision or introduces a new defect into the request papers, the examiner will prepare a memo to that effect. In the memo, the examiner will point out why the defect(s) have not been appropriately dealt with, and whether the non-compliant request papers qualify as a 37 CFR 1.501 submission or not (and why). The examiner will forward the memo to his/her CRU SPRS; a “cc” of the memo is provided to the Director of the CRU and to a Senior Legal Advisor in the OPLA overseeing reexamination. The CRU SPRS will screen the memo and discuss the case with an appropriate OPLA Legal Advisor. Where the defects are not remedied or a new defect has been added, OPLA will issue a Decision Vacating the Proceeding.

The Decision Vacating the Proceeding will identify the items that do not comply with the filing date requirements which were not rectified, or are newly added, using the content of the examiner’s memo to explain why the defects are present. The decision will also point out the disposition of the request papers (treated as a 37 CFR 1.501 submission or discarded) and why.

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Last Modified: 03/27/2014 10:10:34