			    DEPARTMENT OF COMMERCE
			  Patent and Trademark Office
				 37 CFR Part 1
			 [Docket No.: PTO-P-2006-0007]
				 RIN 0651-AC02

	  Clarification of Filing Date Requirements for Ex Parte and 
		    Inter Partes Reexamination Proceedings

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

SUMMARY: The United States Patent and Trademark Office (Office) is, in this 
final rule making, revising the rules of practice relating to the filing 
date requirements for ex parte and inter partes reexamination proceedings 
for consistency with the provisions of the patent statute governing ex 
parte and inter partes reexamination proceedings, and to permit the Office 
to have the full statutory three months to address a request for 
reexamination that is complete. The Office is specifically revising the 
rules to require that a request for ex parte reexamination or for inter 
partes reexamination must meet all the applicable statutory and regulatory 
requirements before a filing date is accorded to the request for ex parte 
reexamination or for inter partes reexamination.

DATES: Effective Date: August 4, 2006.
   
   Applicability Date: The changes in this final rule apply to any request 
for reexamination (ex parte or inter partes) filed on or after March 27, 
2006.

FOR FURTHER INFORMATION CONTACT: By telephone--Kenneth M. Schor, at 
(571) 272-7710; by mail addressed to U.S. Patent and Trademark Office, 
Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, 
Alexandria, VA 22313-1450, marked to the attention of Kenneth M. Schor; 
by facsimile transmission to (571) 273-7710 marked to the attention of 
Kenneth M. Schor; or by electronic mail message over the Internet 
addressed to kenneth.schor@uspto.gov.

SUPPLEMENTARY INFORMATION: The United States Patent and Trademark Office 
(Office) is revising the rules of practice in title 37 of the Code of 
Federal Regulations (CFR) to require that a request for ex parte 
reexamination or for inter partes reexamination must meet all the 
applicable statutory requirements in 35 U.S.C. 302 or 311 (respectively) 
and the regulatory requirements in Sec. 1.510 or Sec. 1.915 (respectively) 
before a filing date is accorded to the request for ex parte reexamination 
or for inter partes reexamination. Thus, the Office is amending the rules 
to clearly require compliance with all the requirements of filing an ex 
parte reexamination request set forth in Sec. 1.510 before a filing date 
will be assigned to an ex parte reexamination request, and to clearly 
require compliance with all the requirements of filing an inter partes 
reexamination request set forth in Sec. 1.915 before a filing date will be 
assigned to an inter partes reexamination request. The Office published an 
interim rule revising the rules of practice to implement this revision of 
the rules. See Clarification of Filing Date Requirements for Ex Parte and 
Inter Partes Reexamination Proceedings, 71 FR 9260 (February 23, 2006), 
1304 Off. Gaz. Pat. Office 95 (March 21, 2006) (interim rule). This notice 
adopts the interim revision as a final revision of the rules of practice, 
while making stylistic and non-substantive changes to the relevant rules, 
which changes are discussed below.

   Section 1.510 sets forth the requirements for the content of a request 
for ex parte reexamination. Section 1.915 sets forth the requirements for 
the content of a request for inter partes reexamination. Former Sec. 
1.510(d) stated that the filing date of a request for ex parte 
reexamination is "(1) The date on which the request including the entire 
fee for requesting reexamination is received in the Patent and Trademark 
Office; or (2) The date on which the last portion of the fee for requesting 
reexamination is received." In like manner, former Sec. 1.919(a) stated 
that "[t]he filing date of a request for inter partes reexamination is the 
date on	which the request satisfies the fee requirement of Sec. 1.915(a)." 
Given the former rule language, it may have appeared that compliance with 
the provisions of Sec. 1.510(b) or Sec. 1.915(b) was not required for 
obtaining a filing date in reexamination. However, 35 U.S.C. 302 (for ex 
parte reexamination) explicitly requires that "[t]he request must set forth 
the pertinency and manner of applying cited prior art to every claim for 
which reexamination is requested." Likewise, 35 U.S.C. 311(b) (for inter 
partes reexamination) explicitly requires that the request must "include 
the identity of the real party in interest" and "set forth the pertinency 
and manner of applying cited prior art to every claim for which 
reexamination is requested." Reexamination requesters did not always comply 
with these statutory requirements when submitting requests for 
reexamination. Furthermore, the information missing due to a lack of 
compliance with Sec. 1.510(b) or with Sec. 1.915(b) was often relevant to 
the decision on whether to grant the request for reexamination. This 
presented a difficulty for the Office in view of the statutory requirements 
of 35 U.S.C. 303 (for ex parte reexamination) and 35 U.S.C. 312 (for inter 
partes reexamination) that the decision on the request must be issued 
within three months of the filing date of the request for reexamination, 
because the process of notifying the requester of the non-compliance and 
obtaining the missing information may very well extend beyond the 
three-month statutory deadline, or the information may be provided so close 
to the deadline that there is not sufficient time to properly evaluate it.

   To address this problem, Secs. 1.510(c) and (d) were revised via interim 
rule to clearly require compliance with all the requirements of Secs. 
1.510(a) and (b) in order to obtain an ex parte reexamination filing date 
(and a decision on the request for reexamination). Likewise, Sec. 1.919(a) 
was revised to clearly require compliance with all the requirements of Sec. 
1.915 in order to obtain an inter partes reexamination filing date. This 
notice adopts the substance of the interim rule as final. It is to be noted 
that these changes should not have a significant impact on reexamination 
requesters, because the filing date in a reexamination proceeding does not 
have the same legal significance as the filing date in other Office patent 
proceedings (cf. 35 U.S.C. 102(b)). The rules now simply clearly recite 
that the statutory and regulatory requirements for a request for 
reexamination must be fulfilled before a filing date will be assigned.

   Unless otherwise stated, the present final rule simply adopts, or 
essentially adopts, the regulatory language of the interim rule. 
Sections 1.510(c) and 1.915(d) have been revised for parallelism purposes 
from the text that appears in the interim rule. Anything that is more than 
sentence structure, grammar, or style is identified in the discussion 
below.

Section-by-Section Discussion

   Section 1.11: Section 1.11(c) is revised to provide that any request for 
reexamination "for which all the requirements of Sec. 1.510 or Sec. 1.915 
have been satisfied" will be announced in the Official Gazette. 
Previously, Sec. 1.11(c) provided that all requests for reexamination "for 
which the fee under Sec. 1.20(c) has been paid" would be announced in the 
Official Gazette. This change was inadvertently omitted in the interim 
rule, but is not one of substance. As per the interim rule and this final 
rule, where all the requirements of Sec. 1.510 or Sec. 1.915 have not been 
satisfied, a request filing date is not assigned. Obviously, the Office 
cannot announce the "date of the request * * * and the examining group to 
which the reexamination is assigned," since these do not exist until the 
requirements of Sec. 1.510 or Sec. 1.915 have been satisfied.
 
   Section 1.510: Section 1.510(c) is revised to provide that if a request 
for ex parte reexamination does not: (1) Include the fee for requesting ex 
parte reexamination, and (2) comply with all the requirements of Sec. 
1.510(b); then the person identified as requesting reexamination will be 
notified and will generally be given an opportunity to complete the request 
within a specified time. If the request is not completed within the time 
specified, the request will not be granted a filing date and no decision on 
the request will be made. The request may be placed in the patent file as a 
citation if it complies with the requirements of Sec. 1.501. Deleted from 
former Sec. 1.510(c) (as it existed prior to the interim rule) is the 
sentence: "If the fee for requesting reexamination has been paid but the 
defect in the request is not corrected within the specified time, the 
determination whether or not to institute reexamination will be made on the 
request as it then exists."

   Section 1.510(c) states that the requester will "generally" be given an 
opportunity to complete the request, because, in some instances, it may not 
be practical, or even possible, to provide an opportunity for completion of 
the request. For example, the request might be submitted anonymously 
(although such is not proper), or without an address, or with an 
inoperative address. In such instances, the requester would be notified of 
the incomplete request by publication in the Official Gazette, but an 
opportunity to complete the request would not be provided.

   Section 1.510(d) is revised to provide that the filing date of the 
request for an ex parte reexamination request is the date on which the 
request satisfies all the requirements of Sec. 1.510. Until that point, 
the request for reexamination is not complete. In the interim rule, the 
language employed was "the date on which the request satisfies all the 
requirements of paragraphs (a) and (b) of this section." The language now 
provided is "the date on which the request satisfies all the requirements 
of this section." This language is used for consistency with Sec. 1.919 
which states, as a result of the  interim rule, "[t]he filing date of a 
request for inter partes reexamination is the date on which the request 
satisfies all the requirements for the request set forth in Sec. 1.915."

   Section 1.915: Section 1.915(d) is revised to provide that if a request 
for inter partes reexamination does not (1) include the fee for requesting 
inter partes reexamination, and (2) comply with all the requirements of 
Sec. 1.915(b), then the person identified as requesting reexamination will 
be notified and will generally be given an opportunity to complete the 
request within a specified time. The interim rule inadvertently did not 
include, in the text of Sec. 1.915(d), that the requester will be notified 
where the complete fee for requesting inter partes reexamination required 
by paragraph (a) was not provided, though it was included in the interim 
rule preamble. That omission has been rectified.

   If the request is not completed within the time specified, the request 
will not be granted a filing date and no decision on the request will be 
made. Section 1.915(d) stated, prior to the change made via the interim 
rule, that the reexamination proceeding may be vacated under this 
circumstance. Based on the revision to Sec. 1.919(a) set forth below, 
however, the inter partes request will not be granted a filing date under 
this circumstance in the first place; thus, there will be no reexamination 
proceeding to vacate.

   Section 1.915(d) is revised to provide that, where the request was not 
given a filing date, the request will be placed in the patent file as a 
citation, if it complies with the requirements of Sec. 1.501. This was not 
present in the interim rule, and conforms Sec. 1.915(d) with Sec. 1.510(c).

   Section 1.915(d) states that the requester will "generally" be given an 
opportunity to complete the request, because, in some instances, it may not 
be practical, or even possible, to provide an opportunity for completion of 
the request (see the discussion of Sec. 1.510(c)).

   Section 1.919: Section 1.919(a) is revised to require that the request 
for inter partes reexamination must satisfy all the requirements for the 
request set forth in Sec. 1.915, prior to assignment of a filing date. 
Until that point, the request for inter partes reexamination is not 
complete.

   Response to comments: The Office received one set of written comments 
from a patent practitioner in response to the interim rule. The comments, 
and the Office's response to the comments, now follow:

   The commenter stated, in support of the change made to the rules, that 
"[t]he Interim Rule is well-merited for the reasons stated in on pages 
9260-61 of the notice. The Office deserves a full three months in which to 
decide whether there is a substantial new question of patentability, and no 
examiner should be rushed into a decision because the requester failed to 
comply with the statute or rules."

   The commenter then pointed out one implementation concern, as follows:

   "The rule should be easy to apply, with one potential exception--the 
statement of the pertinency and manner of applied cited prior art for every 
claim that is requested. See 35 U.S.C. 302, 311(b)(2); 37 CFR 
1.510(b)(1)-(2), 1.915(b)(3). A request may initially appear (on intake) to 
contain this statement, but closer review (by the examiner) may reveal that 
the statement is not actually there. Under the Interim Rule, the filing 
date "is the date on which the request satisfies all the requirements for 
the request set forth in [the rule]". Thus, one might read the rule as 
saying that if a filing date is assigned, the Office has decided that the 
required statement is present, and an examiner may not revisit the issue. 
* * * In these situations, the examiner should be able to independently 
decide that the request fails to comply with the statute and rules. I 
therefore suggest that the rule be interpreted to allow the examiner to do 
this."

   This comment is adopted to the extent that the examiner is permitted, by 
Office procedure, to independently assert to a deciding official of the 
Office that the request fails to comply with the statute and/or rules, even 
after a reexamination filing date is assigned to a request. The deciding 
Official will then evaluate the examiner's assertion, and will decide 
whether the filing date that was assigned should be vacated. This point has 
been addressed in the internal procedure established by the Office to 
implement the revision of the rules made via this rule. Such procedure will 
be described below in this final rule, and will be incorporated into the 
Manual of Patent Examining Procedure in its next revision.

   The commenter further pointed out that the interim rule "describes the 
Interim Rule as mandating compliance with `the statutory requirements' 
before the Office will assign a filing date. But the specific language of 
the interim rule [preamble] mandates compliance with rules--37 CFR 1.510(b) 
and 1.915(b)--and does not mention the statute. Those rules include 
non-statutory requirements, e.g., an inter partes requester's certificate 
of service on the patent owner, and an inter partes requester's certificate 
of non-estoppel. See 37 CFR 1.915(b)(6)-(7). While these rules are sensible 
and easy to meet, it would be more accurate to describe the Interim Rule as 
mandating compliance with `statutory and regulatory requirements' before 
the Office will assign a filing date."

   This comment is adopted, and the language is revised as set out in the 
preamble of this final rule.

   Office Procedure to Implement the Revision of the Rules Made via this 
Final Rule: A request for reexamination is no longer assigned a filing 
date, upon receipt of the request in the Central Reexamination Unit (CRU). 
Rather, the CRU Legal Instrument Examiners (LIE) and Paralegals will check 
each request for compliance with the reexamination filing date 
requirements, prior to the assigning of a filing date. In order to obtain a 
reexamination filing date, the request papers must include all of the 
following:

   (1) The complete reexamination fee. For ex parte reexamination, this is 
currently set at $2,520.00 in Sec. 1.20(c)(1). For inter partes 
reexamination, this is currently set at $8,800.00 in Sec. 1.20(c)(2).

   (2) A statement pointing out each substantial new question of 
patentability based on the cited patents and publications (i.e., the cited 
prior art or double patenting art).

   (3) An identification of every claim for which reexamination is 
requested.

   (4) A detailed explanation of how all of the cited documents are applied 
to the claims for which reexamination is requested. For each identified 
substantial new question of patentability (SNQ), the request must explain 
how all of the cited documents identified for that SNQ are applied to 
meet/teach the claim limitations to thus establish the identified SNQ.

   (5) A legible copy of every patent or printed publication relied upon or 
referred to in the request. (To conform to current practice, this provision 
is not being enforced to require copies of U.S. patents and U.S. patent 
publications; the provision is deemed waived to that extent.) It is to be 
noted that the required "copy of every patent or printed publication" is 
construed by the Office to be a legible copy, since a non-legible copy 
cannot be used. Any copy of a patent or printed publication received by the 
Office that is illegible will not be accepted, and will be deemed to have 
not been received by the Office.

   (6) Some translation (at least of the relevant portion(s)) of any 
non-English language patent or printed publication.
 
   (7) A legible copy of the entire patent to be reexamined. The copy must 
include the front face, drawings, and specification/claims (in double 
column format) of the printed patent, and each page must be plainly written 
on only one side of a sheet of paper.

   (8) A legible copy of any disclaimer, certificate of correction, or 
reexamination certificate issued for the patent, each page plainly written 
on only one side of a sheet of paper.

   (9) If the request is not filed by the patent owner--A certificate of 
service on the patent owner at the address as provided for in Sec. 1.33(c). 
The name and address of the party served must be given in the certificate 
of service. If service was not possible, a duplicate copy of the request 
papers must be supplied to the Office together with a factual explanation 
of what efforts were made to effect service, and why they were not 
successful.

   (10) If the request is filed by an attorney/agent and identifies 
another party on whose behalf the request is being filed, then a power of 
attorney must be attached, or the attorney/agent must be acting in a 
representative capacity pursuant to Sec. 1.34.

   For inter partes reexamination, the request papers must also 
include--

   (11) A certification by the requester that the estoppel provisions of 
Sec. 1.907 do not prohibit the inter partes reexamination being requested.

   (12) A statement identifying the real party in interest for whom (on 
whose behalf) the request is being filed.

   If it is determined that the request fails to meet one or more of the 
filing date requirements, 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 thirty 
days). The new Office form used to provide the notification is a "Notice of 
Failure to Comply with * * * Reexamination Request Filing Requirements."

   If after receiving a "Notice of Failure to Comply with * * * 
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, and a control number will not be 
assigned. The simplest case of a failure to remedy the defect(s) in the 
Notice is where the requester does not timely respond to the Notice. The 
other case is where requester does timely respond, but the response does 
not cure the defect(s) identified to requester and/or the response 
introduces a new filing date defect or deficiency. If the requester timely 
responds to the Notice, then the CRU LIE and Paralegal will check the 
request, as supplemented by the response, for correction of all 
non-compliant items identified in the Notice. If any identified 
non-compliant item has not been corrected, then a filing date (and a 
control number) 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 * * * Reexamination Request Filing Requirements" will ordinarily 
result in the reexamination request not being granted a filing date. Absent 
extraordinary circumstances (or some minor non-compliant item that can be 
rectified by a phone call which can be made at the Office's sole 
discretion), requester will be given only one opportunity to correct the 
non-compliance, i.e., only one opportunity for compliance with the Notice. 
Similarly, if the response introduces a new filing date defect or 
deficiency into the request papers, then the reexamination request will not 
be granted a filing date absent extraordinary circumstances. If the request 
papers are not timely made filing-date-compliant in response to the 
Office's Notice of Failure to Comply with * * * Reexamination Request 
Filing Requirements, then the LIE will prepare a "Notice of Disposition of 
* * * Reexamination Request." This notice will point out the disposition of 
the request papers (whether they are treated as a Sec. 1.501 submission or 
discarded) and why.

   After a filing date is assigned to the reexamination control number, the 
patent examiner reviews the request to decide whether to order the granting 
or denial of reexamination. If, in the process of reviewing the request, 
the examiner notes a non-compliant item not earlier recognized, then the 
examiner will then inform an appropriate deciding official of the Office. 
Upon confirmation of the existence of any such non-compliant item(s), a 
decision vacating the assigned reexamination filing date will be issued. In 
the decision, the requester will be notified of the non-compliant item(s) 
and given time to correct the non-compliance. Only one opportunity will be 
given to comply with the notice to the requester included in the decision 
vacating the filing date, unless: (1) Extraordinary circumstances exist, or 
(2) there are only a few minor non-compliant items that can be rectified by 
a phone call, in which case such a phone call may be made; however, that is 
at the Office's sole discretion.

   The requester must completely respond to the notice provided in the 
Office's decision vacating the filing date by rectifying all identified 
defects in the request papers without adding any new defect. If the third 
party requester does not timely and completely respond to the Office's 
decision vacating the filing date, the Office will issue a decision 
pointing out the disposition of the request papers (whether treated as a 
Sec. 1.501 submission or discarded) and why. If the third party requester 
does timely and completely respond to the Office's decision vacating the 
filing date, a new filing date will be assigned to the proceeding, as of 
the date the requester's response was received.

Rule Making Considerations

Administrative Procedure Act

   The changes in this final rule merely revise the rules of practice 
(Secs. 1.510 and 1.915) to require that a request for ex parte 
reexamination or for inter partes reexamination meets the requirements in 
35 U.S.C. 302 and 311 and regulations for a request for ex parte 
reexamination or for inter partes reexamination, before a filing date is 
accorded to the request for ex parte reexamination or for inter partes 
reexamination. Therefore, these rule changes involve interpretive rules, or 
rules of agency practice and procedure under 5 U.S.C. 553(b)(A), and prior 
notice and an opportunity for public comment were not required pursuant to 
5 U.S.C. 553(b)(A) (or any other law). See Bachow Communications Inc. v. 
FCC, 237 F.3d 683, 690 (DC Cir. 2001) (rules governing an application 
process are "rules of agency organization, procedure, or practice" and are 
exempt from the Administrative Procedure Act's notice and comment 
requirement); see also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 
38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice promulgated 
under the authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are 
not substantive rules (to which the notice and comment requirements of the 
Administrative Procedure Act apply), and Fressola v. Manbeck, 36 USPQ2d 
1211, 1215 (D.D.C. 1995) ("it is extremely doubtful whether any of the 
rules formulated to govern patent and trade-mark practice are other than 
`interpretive rules, general statements of policy, * * * procedure, or 
practice."') (quoting Casper W. Ooms, The United States Patent Office and 
the Administrative Procedure Act, 38 Trademark Rep. 149, 153 (1948)). 
Accordingly, prior notice and an opportunity for public comment were not 
required pursuant to 5 U.S.C. 553(b)(A) (or any other law).

Regulatory Flexibility Act

   As discussed previously, the changes in this final rule involve rules of 
agency practice and procedure under 5 U.S.C. 553(b)(A), and prior notice 
and an opportunity for public comment were not required pursuant to 5 
U.S.C. 553(b)(A) (or any other law). As prior notice and an opportunity for 
public comment were not required pursuant to 5 U.S.C. 553 (or any other 
law) for the changes in this final rule, a regulatory flexibility analysis 
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is not required 
for the changes in this final rule. See 5 U.S.C. 603.

Executive Order 13132

   This rule making 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 rule making has been determined to be not significant for purposes 
of Executive Order 12866 (September 30, 1993).

Paperwork Reduction Act

   This final rule 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 final rule has been reviewed and previously 
approved by OMB under OMB control number 0651-0033. The United States 
Patent and Trademark Office is not resubmitting any information collection 
to OMB for its review and approval because the changes in this final rule 
do not affect the information collection requirements associated with the 
information collection under OMB control number 0651-0033. The principal 
impacts of the changes in this final rule are to clarify the requirement 
for compliance with all the requirements of filing a reexamination before a 
filing date will be assigned to a reexamination. Interested persons are 
requested to send comments regarding these information collections, 
including suggestions for reducing this burden to: (1) The Office of 
Information and Regulatory Affairs, Office of Management and Budget, New 
Executive Office Building, Room 10202, 725 17th Street, NW., Washington, DC 
20503, Attention: Desk Officer for the Patent and Trademark Office; and 
(2) Robert J. Spar, Director, Office of Patent Legal Administration, 
Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

   Notwithstanding any other provision of law, no person is required to 
respond to, nor shall a person be subject to a penalty for failure to 
comply with, a collection of information subject to the requirements of the 
Paperwork Reduction Act unless that collection of information displays a 
currently valid OMB control number.

List of Subjects in 37 CFR Part 1

   Administrative practice and procedure, Courts, Freedom of information, 
Inventions and patents, Reporting and recordkeeping requirements, Small 
businesses, and Biologics.

For the reasons set forth in the preamble, the interim rule amending 37 CFR 
part 1 which was published at 71 FR 9260-62 on February 23, 2006, is 
adopted as final with the following changes:

PART 1--RULES OF PRACTICE IN PATENT CASES

1. The authority citation for 37 CFR part 1 continues to read as follows:

   Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

2. Section 1.11 is amended by revising paragraph (c) to read as follows:

Sec. 1.11  Files open to the public.

* * * * *

   (c) All requests for reexamination for which all the requirements of 
Sec. 1.510 or Sec. 1.915 have been satisfied will be announced in the 
Official Gazette. Any reexaminations at the initiative of the Director 
pursuant to Sec. 1.520 will also be announced in the Official Gazette. The 
announcement shall include at least the date of the request, if any, the 
reexamination request control number or the Director initiated order 
control number, patent number, title, class and subclass, name of the 
inventor, name of the patent owner of record, and the examining group to 
which the reexamination is assigned.

* * * * *

3. Section 1.510 is amended by revising paragraphs (c) and (d) to read as 
follows:

Sec. 1.510  Request for ex parte reexamination.

* * * * *

   (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 Sec. 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.

* * * * *

4. Section 1.915 is amended by revising paragraph (d) to read as follows:

Sec. 1.915  Content of request for inter partes reexamination.

* * * * *

   (d) If the inter partes request does not include the fee for requesting 
inter partes reexamination required by paragraph (a) of this section and 
meet all the requirements of paragraph (b) of this section, then the person 
identified as requesting inter partes 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 inter 
partes 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 Sec. 1.501.

July 31, 2006				                       JON W. DUDAS
				            Under Secretary of Commerce for 
			          Intellectual Property and Director of the
 			          United States Patent and Trademark Office
