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2267    Handling of Inappropriate or Untimely Filed Papers [R-11.2013]

The applicable regulations (37 CFR 1.501(a), 1.550(e)) provide that certain types of correspondence will not be considered or acknowledged unless timely received. 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.

The return of inappropriate submissions complies with the regulations that certain papers will not be considered and also 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 it does not appear in the active IFW record with the other active papers that comprise the public record of the reexamination proceeding.

I.   DISPOSITION OF PAPERS

Where papers are filed during reexamination proceedings which are inappropriate because of some defect, such papers will either be returned or discarded at the Office’s option,, or forwarded to one of three files, the “Reexamination File” (paper file or IFW file history), the “Patent File” (paper file or IFW file history), or the “Storage File” (paper file). Any papers returned to the sender from the Central Reexamination Unit (CRU) or a Technology Center (TC) must be accompanied by a letter indicating signature and approval of the CRU or TC Director.

The “Storage Files” will be maintained separate and apart from the other two files at a location selected by the CRU or TC Director. For example, the CRU or TC Director may want to locate the “Storage File” in a central area in the CRU or TC.

II.   TYPES OF PAPERS RETURNED WITH DIRECTOR OF THE USPTO OR CRU/TC DIRECTOR’S APPROVAL REQUIRED

Filed by Owner A. Premature Response by Owner-
§ 1.530(a), § 1.540 Where the patent owner is NOT the requester, any response or amendment filed by owner prior to an order to reexamine is premature and will be returned and will not be considered.
§ 1.550(g) B. Paper Submitted on Behalf of Third Party -
Submission filed on behalf of a third party will be returned and will not be considered. Where third party paper is submitted as part of a patent owner response, see MPEP § 2254 and § 2266.

In those rare instances where an opposition to a patent owner petition is filed, after such opposition is filed by a third party requester (regardless of whether such opposition has an entry right or not), any further paper in opposition/rebuttal/response to the third party opposition paper will not be considered and will be returned. There must be a limitation on party iterations of input, especially given the statutory mandate for special dispatch in reexamination.

Filed by Requester A. No Statement Filed by Owner -
§ 1.535 If a patent owner fails to file a statement within the prescribed limit, any reply by the requester is inappropriate and will be returned and will not be considered.
B. Late Response by Requester -
§ 1.535, § 1.540 Any response subsequent to 2 months from the date of service of the patent owner’s statement will be returned and will not be considered.
C. Additional Response by Requester-
§ 1.550(g) The active participation of the reexamination requester ends with the reply pursuant to § 1.535. Any further submission on behalf of requester will be returned and will not be considered.

In those rare instances where an opposition to a requester petition is filed, after such opposition is filed by the patent owner (regardless of whether such opposition has an entry right or not), any further paper in opposition/rebuttal/response to the patent owner opposition paper will not be considered and will be returned. 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 returned, since a requester does not have a participation right in the reexamination proceeding.

Filed by Third Party
§ 1.501, § 1.565(a) Unless a paper submitted by a third party raises only issues appropriate under 37 CFR 1.501, or consists solely of a prior decision on the patent by another forum, e.g., a court (see MPEP § 2207 and § 2286 or presentation of a paper of record in a litigation (see MPEP § 2282)), it will be returned to an identified third party or destroyed if the submitter is unidentified.

Where a paper is to be returned based on the above criteria, or other appropriate reasons, and the paper is not accompanied by a petition under 37 CFR 1.182 or 1.183, the CRU or TC Director will return the paper. Where a petition under 37 CFR 1.182 or 1.183 has been filed, the reexamination proceeding should be forwarded to the Office of Patent Legal Administration for decision.

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

Filed by Owner A. Unsigned Papers -
§ 1.33 Papers filed by owner which are unsigned or signed by less than all of the owners (no attorney of record or acting in representative capacity).
B. No Proof of Service -
§ 1.248 Papers filed by the patent owner in which no proof of service on requester is included and proof of service is required may be denied consideration.
C. Untimely Papers -
§ 1.530(b), § 1.540 Where owner has filed a paper which is untimely, that is, it was filed after the period set for response, the paper will not be considered.
Filed by Requester A. Unsigned Papers -
Papers filed by requester which are unsigned will not be considered.
B. No Proof of Service -
§ 1.510(b)(5), § 1.33, § 1.248 Papers filed by requester in which no proof of service on owner is included and where proof of service is required may be denied consideration.

In those limited 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 which is filed after the two-week period will remain in the record, even though it is not considered.

IV.   PAPERS LOCATED IN THE “STORAGE FILE”

§ 1.501 Citations by Third Parties
§ 1.550(h) Submissions by third parties based solely on prior art patents or publications filed after the date of the order to reexamine are not entered into the patent file but delayed until the reexamination proceedings have been concluded. See MPEP § 2206.

Proper timely filed citations by third parties (i.e., filed prior to the order) are placed in the reexamination file.

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