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2685    No Interviews on Merits in Inter Partes Reexamination Proceedings [R-08.2012]

37 C.F.R. 1.955   Interviews prohibited in inter partes reexamination proceedings.

There will be no interviews in an inter partes reexamination proceeding which discuss the merits of the proceeding.

Pursuant to 37 CFR 1.955, an interview which discusses the merits of a proceeding will not be permitted in inter partes reexamination proceedings. Thus, in an inter partes reexamination proceeding, there will be no inter partes interview as to the substance of the proceeding. Also, there will be no separate ex parte interview as to the substance of the proceeding with either the patent owner or the third party requester. Accordingly, where a party requests any information as to the merits of a reexamination proceeding, the examiner will not conduct a personal or telephone interview with that party to provide the information. Further, an informal amendment by the patent owner will not be accepted, because that would be tantamount to an ex parte interview. All communications between the Office and the patent owner (and the third party requester) 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.

Questions on strictly procedural matters may be discussed with the parties. The guidance to follow is that any information which a person could obtain by reading the file (which is open to the public) is procedural, and it may be discussed. Matters not available from a reading of the file are considered as relating to the merits of the proceeding, and may not be discussed. Thus, for example, a question relating to when the next Office action will be rendered is improper as it relates to the merits of the proceeding (because this information cannot be obtained from a reading of the file).

The Office may, in its sole discretion, telephone a party as to matters of completing or correcting the record of a file, where the subject matter discussed does not go to the merits of the reexamination proceeding. This informal telephone call may take the form of inquiring as to whether a timely response, timely appeal, etc., was filed with the Office, so as to make certain that a timely response, timely appeal, etc. has not been misdirected within the Office. This may also take the form of telephoning to obtain a paper stated to have been attached to, or included in, a filing, but not found to be present in the record. Likewise, calls to obtain a certificate of service, or to have a party re-submit a paper (e.g., where it was submitted via an improper means), may be made by the Office. Any such telephone call IS NOT TO BE MADE by the examiner, or any other Office employee who addresses the proceeding on its merits. Thus, a paralegal or Legal Instruments Examiner (or support staff in general), may make such a telephone call. If the party is reached by telephone and the matter is resolved, then the next Office communication as may be appropriate (e.g., Office action, NIRC) should make the telephone call of record. Any statement of the telephone call in the next communication must provide that “the content of the telephone call was limited solely to” the non-merits matter discussed, and “nothing else was discussed.” Such a telephone call is not to be recorded on an interview summary record form.

It is also permitted for a paralegal or Legal Instruments Examiner (or support staff in general) to call a requester to discuss a request that fails to comply with the filing date requirements for filing a reexamination request, because there is no reexamination proceeding yet, and 37 CFR 1.955 proscribes interviews in “inter partes reexamination proceedings.”

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Last Modified: 03/27/2014 10:10:35