DEPARTMENT OF COMMERCE

                       U.S. Patent and Trademark Office

                                 37 CFR Part 1

                        [Docket No. 000308064-0064-01]

                                 RIN 0651-AB04

                          Rules To Implement Optional
                    Inter Partes Reexamination Proceedings

AGENCY: U.S. Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

SUMMARY: The U. S. Patent and Trademark Office (the Office) is proposing
to amend its rules of practice in patent cases to provide revised
procedures for the reexamination of patents and thereby implement
certain provisions of ``the American Inventors Protection Act of 1999.''
``The American Inventors Protection Act of 1999'' included an amendment
to the Patent Act to authorize the extension of reexamination
proceedings via an optional inter partes reexamination procedure in
addition to the present ex parte reexamination procedure as a means for
improving the quality of United States patents. The Office intends,
through this amendment of its rules, to provide patent owners and the
public with guidance on the procedures that the Office will follow in
conducting optional inter partes reexamination proceedings in addition
to the present ex parte reexamination proceedings.

   The American Inventors Protection Act of 1999'' also made other
miscellaneous changes to the Patent Act which relate to reexamination,
and it is intended that this amendment of the Office's rules will
implement those changes relating to reexamination.

DATES: Comment Deadline Date: To ensure consideration of written
comments, they must be received at the Office no later than June 12,
2000. While comments may be submitted after this date, the Office cannot
ensure that consideration will be given to such comments. No public
hearing will be held.

   Public Inspection of Comments: Written comments will be available for
public inspection on or about June 20, 2000.

ADDRESSES: Those interested in submitting written comments should send
their written comments to the attention of Kenneth M. Schor, Senior
Legal Advisor, by electronic mail message over the Internet addressed to
reexam.rules@uspto.gov and titled ``Inter Partes Reexamination.''
Written comments may also be submitted by mail addressed to U.S. Patent
and Trademark Office, Box Comments--Patents, Commissioner for Patents,
Washington, DC 20231, marked to the attention of Kenneth M. Schor; or by
facsimile transmission to (703) 872-9408, marked to the attention of
Kenneth M. Schor. Although comments may be submitted by e-mail, mail, or
facsimile, the Office prefers to receive comments via e-mail over the
Internet. Where comments are submitted by mail, the Office would prefer
that the comments be submitted on a DOS formatted 3 1/4 inch disk
accompanied by a paper copy.

   Written comments will be available for public inspection at the
Patent Examination Policy Law Office, Office of the Deputy Assistant
Commissioner for Patent Policy and Projects, located at Crystal Plaza
Four, Room 3C23 (receptionist), 2201 South Clark Place, Arlington,
Virginia. In addition, written comments in electronic form may be made
available via the Office's World Wide Web site at http://www.uspto.gov.

FOR FURTHER INFORMATION CONTACT: Kenneth M. Schor or Gerald A. Dost,
Senior Legal Advisors. Kenneth M. Schor may be contacted (a) by
telephone at (703) 305-1616; (b) by mail addressed to: U.S. Patent and
Trademark Office, Box Comments--Patents, Commissioner for Patents,
Washington, DC 20231, marked to the attention of Kenneth M. Schor; (c)
by facsimile transmission to (703) 872-9408, marked to the attention of
Kenneth M. Schor; or (d) by electronic mail message over the Internet
addressed to reexam.rules@uspto.gov and titled ``Inter Partes
Reexamination.''

   Gerald A. Dost may be contacted (a) by telephone at (703) 305-1616;
(b) by mail addressed to: U.S. Patent and Trademark Office, Box
Comments--Patents, Commissioner for Patents, Washington, DC 20231,
marked to the attention of Gerald A. Dost; (c) by facsimile transmission
to (703) 308-6916, marked to the attention of Gerald A. Dost; or (d) by
electronic mail message over the Internet addressed to
reexam.rules@uspto.gov and titled ``Inter Partes Reexamination.''

SUPPLEMENTARY INFORMATION:

Background

   This proposed rulemaking sets forth distinct procedures directed
toward determining and improving the quality and reliability of United
States patents. The procedures provide for the optional inter partes
reexamination procedures in addition to the present ex parte
reexamination procedures for the reexamination of patents as provided
for by the American Inventors Protection Act of 1999 as part of the
conference report (H. Rep. 106-479) on H.R. 3194, Consolidated
Appropriations Act, Fiscal Year 2000. The text of the American Inventors
Protection Act of 1999, is contained in Title IV of S. 1948, the
Intellectual Property and Communications Omnibus Reform Act of 1999
(Pub. L. 106-113), the Act which is incorporated by reference in
Division B of the conference report. The procedures also provide for
implementation of other miscellaneous changes to the reexamination of
patents also provided for in Public Law 106-113.

   In 1995, the Office published proposed rules in anticipation of H.R.
1732, 104th Cong., 1st Sess. (1995), a predecessor for the present inter
partes reexamination statute. H.R. 1732 did not, however, mature into a
statute. H.R. 1732 resulted from suggestions and comments to the
Administration by the public, bar groups, and the August 1992 Advisory
Commission on Patent Law Reform suggesting more participation in the
reexamination proceeding by third-party requesters. In response to H.R.
1732, the Office issued a Notice of Proposed Rulemaking entitled ``Rules
of Practice in Patent Cases; Reexamination Proceedings,'' which Notice
was published in the Federal Register at 60 FR 41035 (August 11, 1995)
and in the Official Gazette at 1177 Off. Gaz. Pat. Office 130 (August
22, 1995). Sixteen written comments were received in response to the
August 1995 Notice of Proposed Rulemaking. A public hearing was held at
9:30 a.m. on September 20, 1995. Eight individuals offered oral comments
at the hearing. The sixteen written comments and a transcript of the
hearing are available for public inspection in the Patent Examination
Policy Law Office, Office of the Deputy Commissioner for Patent
Examination Policy, located at Crystal Plaza Four, Room 3C23
(receptionist), 2201 South Clark Place, Arlington, Virginia. The present
proposed rulemaking addresses, and takes into consideration, the
comments received in response to the 1995 proposed rules.


Discussion of General Issues Involved

   This proposed rulemaking is in response to Public Law 106-113, the
Act which resulted from suggestions and comments to the Administration
by the public, bar groups, and the August 1992 Advisory Commission on
Patent Law Reform suggesting more participation in the reexamination
proceeding by third-party requesters. Under the inter partes
reexamination rules proposed herein, third-party requesters will have
greater opportunity to participate in reexamination proceedings in
keeping with the spirit and intent of the new law. At the same time,
participation will be limited to minimize the costs and other effects of
reexamination requests on patentees, especially individuals and small
businesses.

   Ex parte reexamination proceedings filed under Chapter 30 of 35 U.S.C.
(both before and after the effective date, November 29, 1999, of the new
law) will continue to be governed by 37 CFR 1.501-1.570. The proposed
rules for optional inter partes reexaminations under Chapter 31 of 35
U.S.C. have been numbered 37 CFR 1.902-1.997.

   The effective date of the statute with respect to the optional inter
partes reexamination proceedings as well as to the existing ex parte
reexamination proceedings is complex. With the exception of the
amendments to 35 U.S.C. 41(a)(7) directed to the revival of terminated
ex parte and inter partes reexamination proceedings, the new statute and
the conforming amendments to the present statute take effect on the date
of enactment, November 29, 1999. The changes, however, only apply to a
reexamination of a patent that issues from an original application which
was filed in the United States on or after November 29, 1999. Thus, for
inter partes reexaminations, the effective date language (in section
4608 of S. 1948) limits the applicability of the new inter partes
reexamination Chapter 31 of 35 U.S.C., and that of the conforming
amendments to 35 U.S.C. 134, 141, 143 and 145, to any patent that issues
from an original application filed in the United States on or after
November 29, 1999, the effective date of Public Law 106-113. For ex
parte reexaminations filed under Chapter 30 of 35 U.S.C., the conforming
amendments to 35 U.S.C. 134, 141, 143 and 145, only apply to those ex
parte reexamination proceedings filed under Sec. 1.510 for patents that
issue from an original application that is filed in the United States on
or after November 29, 1999. The conforming amendments to 35 U.S.C. 134,
141, 143 and 145, correspondingly, will not apply to ex parte
reexamination proceedings filed under    1.510 for patents that issue
from an original application filed in the United States prior to
November 29, 1999.

   The conforming amendments also amend 35 U.S.C. 41(a)(7) to include the
words ``any reexamination proceeding'' under the ``unintentional''
revival provisions of the statute for an unintentionally delayed
response by the patent owner in any reexamination proceeding. These
words ``any reexamination proceeding'' clearly make this section
applicable to both ex parte reexaminations and inter partes
reexaminations. The effective date of the amendment to 35 U.S.C.
41(a)(7), however, is one year after the date of enactment of the Act,
or November 29, 2000. See section 4608 of S. 1948. Thus, as of November
29, 2000, any ex parte or inter partes reexamination filed before, on,
or after November 29, 2000, is subject to the ``unintentional'' revival
provisions of the statute.

   Regarding the reexamination fee, 35 U.S.C. 41(d) requires the Director
of the United States Patent and Trademark Office (the Director) to set
the fee for the new optional inter partes reexamination at a level which
will recover the estimated average cost of the reexamination proceeding
to the Office. The estimated average cost is $8,800 for an inter partes
reexamination proceeding. The difference in price between an ex parte
reexamination ($2,520) and an inter partes reexamination ($8,800) takes
into account that the Office will expend substantially more resources
for examination, supervision, training, etc., where the third-party
requester participates in an inter partes reexamination proceeding, and
for the additional processing steps that are expected during an inter
partes reexamination proceeding.

Considerations of the Comments Responding to the August 1995 Notice of
Proposed Rulemaking

   In 1995 the Office published proposed rules in anticipation of a
predecessor bill to the present inter partes reexamination statute,
which bill did not mature into a statute. The Office issued a notice of
proposed rulemaking entitled ``Rules of Practice in Patent Cases;
Reexamination Proceedings,'' which was published in the Federal Register
at 60 FR 41035 (August 11, 1995) and in the Official Gazette at 1177
Off. Gaz. Pat. Office 121 (August 22, 1995). Sixteen written comments
were received in response to the August 1995 notice. Also, a public
hearing was held on September 20, 1995, during which eight individuals
offered oral comments. The following 28 issues summarize the comments,
and the Office response.

Issue 1

   Eleven comments addressed the issue of the reexamination filing fees
set in the August 11, 1995, Notice of Proposed Rulemaking. The fees set
in 1995 were $4,500 for a request by a patent owner and $11,000 for a
request by a third-party requester. The discussion below relates to the
1995 proposed fees. The current proposed $8,800 inter partes
reexamination fee is the result of a reevaluation of the inter partes
reexamination parameters, and how inter partes reexamination will be
conducted in view of the comments.

   A first comment questioned why the reexamination filing fees set
in the August 11, 1995, Notice of Proposed Rulemaking were many times
those for original and reissue applications. A second comment
questioned the disparity between fees for the patent owner and
the third-party requester, suggesting that more reasonable fees
be set initially until actual costs become known, since higher fees will
discourage reexaminations. Further, it was urged that the distinction in
the fees was inappropriately being based upon the legal positions of the
parties (upholding or striking down a patent). Even further, it was
pointed out that the fee structure provides a possibility of a windfall
of $15,500 should both a patent owner and a third-party requester file a
request for reexamination. A third comment asserted that the disparity
was greater than a factor of two, whereas the reason given was that it
would entail twice the effort. A fourth comment supported the fees,
suggesting that the fee of $11,000 will discourage inappropriate requests
and the harassing of individual inventors and small businesses. A fifth
comment suggested that the cost of the reexamination proceedings be
subsidized by fees collected from other services offered by the Office,
that the fees should be apportioned in stages and charged as the
reexamination progresses (e.g., higher fees for appeals), and that there
should be legislation to permit small entity discounts for reexamination
fees. A sixth comment also suggested that the fees should be apportioned
and charged as the reexamination progresses. The sixth comment
additionally suggested that if the higher fees are warranted, there should
be a more thorough examination of all cited and searched prior art by an
independent supervisory examiner or a board of three examiners. A seventh
comment asserted that since no new search is required of the examiner in
the reexamination proceeding, the time and effort expended in a
reexamination do not warrant a fee that is 14 times that of a regular
application, which is not consistent with Congressional intent to provide
a low cost alternative to litigation, and in view of the alternative to
prepare and file another patent application and where appropriate initiate
a more costly interference proceeding. An eighth comment suggested that
there should be a special reduced fee for reexamination requested within
a short period (e.g., six months) following the issuance of a patent,
since the reexamination could be assigned to an examiner already familiar
with the case, which fee should be the same as a continuing application
for patent owners and double for third-party requesters. The ninth and
tenth comments were directed to the impact of the $11,000 fee on
independent inventors and small companies. The ninth comment suggested
that the fees favored large businesses. The tenth comment suggested that
a fee waiver system similar to that for Freedom of Information Act (FOIA)
requests be adopted. In contrast, the eleventh comment stated that the fee
was not a pivotal issue with respect to third parties participating in
reexaminations, rather the pivotal issue is the perception today
(under current rules) that the reexamination proceeding is not a level
playing field. Accordingly, the fee should not be subsidized.

Response to Issue 1

   Initially, it is noted that the inter partes reexamination fee
structure has been reevaluated by the Office. The estimated average cost
is $8,800 for an inter partes reexamination. Accordingly,    1.20, as
proposed in the present rule making, will require a filing fee of $8,800
for an inter partes reexamination under    1.915(a).


   As to the first and seventh comments asserting the disparity between
costs for a regular patent application and an inter partes
reexamination, it is not appropriate to compare these figures. Fees for
filing an application are set by statute under 35 U.S.C. 41(a) and are
not set at a cost recovery level. In fact, the statutory filing fee for
an application is much lower than the average cost of the examination of
the application. In contrast, the statutory patent maintenance fees set
forth in 35 U.S.C. 41(b) are a significant source of income to the
Office for very little actual work, which are, in effect, an offset for
the application filing fee. On the other hand, the reexamination fees
under 35 U.S.C. 41(d) must fully recover the cost of the reexamination.
The submissions will be numerous in an inter partes reexamination
proceeding, e.g., multiple responses and comments by the patent owner
and third-party requester responsive to the Office and to each other.
Further, these responses and comments are expected to be thorough and
extensive which in turn must be analyzed by the examiner, requiring the
expenditure of substantial time and resources. The additional
examination hours, supervisory oversight, and other processing steps
unique to inter partes reexamination have to be factored into the fees.
The inter partes examination process is expected to require close policy
oversight by legal advisors in the Patent Examination Policy Law Office,
in addition to the extra resources needed to handle the anticipated
increased number of submissions by the parties. The reexamination filing
fee being set in the present rule package is $8,800 for filing a request
for an inter partes reexamination under proposed    1.913(a). This fee
is considered to be appropriate based on the Office projections of the
amount of work that will be required.

   As to the second and third comments, directed to the disparity between
fees for the patent owner and the third-party requester, it is noted
that the current statute retains the current ex parte reexamination
statute and provides an optional inter partes reexamination. It is
anticipated that the expense of an inter partes reexamination will be
substantially more than the expense of an ex parte reexamination and,
consequently, the fees reflect this. Generally speaking, during the
examination of an ex parte reexamination, the examiner applies the best
art and normally limits the number of rejections made for a given claim
to the best grounds. When responding to a third-party requester of an
inter partes reexamination, the Office's preparation of an Office action
will include responding to all of the multiple alleged grounds for
rejections put forward (proposed) by the third-party requester. All of
the grounds proposed by the third- party requester must be addressed by
the examiner, because any proposed ground of rejection not adopted is a
decision favorable to patentability which is subject to appeal by the
third-party requester to the Board of Patent Appeals and Interferences.
Thus, the extra effort needed for an inter partes reexamination entails
not merely responding to amendments and arguments of the patent owner,
but the substantially higher burden of responding to the arguments of
the third-party requester and the many multiple decisions as to why a
particular rejection is or is not an appropriate one to make. As to the
second comment in particular, the difference in the amount of the fees
is based on these projected costs and not on the legal position of the
parties. As to the fourth comment regarding the discouragement of
inappropriate requests, the setting of the filing fees is strictly based
on cost expectations and not for the purpose of discouraging
inappropriate reexamination requests.

   Subsidizing of the cost of the reexamination proceedings (as suggested
by the fifth comment and opposed by the eleventh comment) through
increased costs to users of other services offered by the Office (as an
alternative to pricing based on cost recovery) would naturally be viewed
with disfavor by the users of other services. Also, the Office is not
authorized to permit small entity reductions in reexamination filing
fees. As to the suggestion regarding the apportionment of costs in
stages as the proceeding evolves (e.g., higher fees at the appeal stage)
(mentioned in the fifth and sixth comments), this is not practical since
there would be no way to guarantee recovery of the total cost of
reexamination. A third-party requester may decide to drop out of the
reexamination and not pay the next required fee. The reexamination,
however, would have to continue to resolve issues that had been raised.
Moreover, appeal fees are set by statute under 35 U.S.C. 41(a)(6) and
are not part of the reexamination filing fee. As to the utilization of a
team of examiners to facilitate a review by a panel prior to forwarding
the reexamination to the Board of Patent Appeals and Interferences, it
is anticipated that appeal conferences will be made mandatory so that
all work of an examiner will be thoroughly reviewed prior to the filing
of an examiner's answer. Implementation of such review is better set by
Office policy rather than by rule making.

   As to the suggestion in the eighth comment that the fees be reduced for
filing a request for reexamination within a short period (e.g., six
months) following the issuance of a patent, reexaminations are generally
based upon new prior art raising new issues so that the benefits (if
any) of filing a reexamination within a short time after issuance of a
patent would not warrant a reduction in fees. The ninth and tenth
comments were directed to the impact the $11,000 fee required in the
August 11, 1995, Notice of Proposed Rulemaking (for all reexaminations)
will have on independent inventors and small companies. With respect to
this, it should be noted that, as the statute has now been drafted and
passed into law (Pub. L. 106-113), the filing of an ex parte
reexamination is still available to a third-party requester, and the
filing fee for such is $2,520. Thus, a less costly ex parte
reexamination will be available to members of the public who may not be
able to afford a full scale inter partes reexamination which has a
currently proposed filing fee of $8,800.

Issue 2

   Two comments in response to the August 11, 1995, Notice of Proposed
Rulemaking suggested that the Office reconsider the refund provisions.
One comment suggested that the 75% refund of the fee should be reduced,
since third parties who file unjustified requests should not be rewarded
by so great a refund. Another comment suggested that the difference
between the fees for a patent owner and a third-party requester varied
by more than a factor of two and that it was difficult to rationalize
why a refund of 75% would be provided for both instead of charging a
flat fee of $1500 if the Director decides not to institute a
reexamination proceeding (since the amount of work done in both cases
should not differ).

Response to Issue 2

   The comments have been adopted. Section 1.26(c), as currently
proposed, sets the amount of refund to provide for the retention of a
uniform fee of $830, with the remainder of the filing fee being
refunded, for all reexamination requests where the Director decides not
to institute a reexamination proceeding. For the ex parte reexamination
fee of $2,520, an amount of $1,690 will be returned, thus resulting in a
retention of $830. For the inter partes reexamination fee of $8,800, an
amount of $7,970 will be returned, again resulting in a retention of
$830. The amount of $830 being retained by the Office is based on
projected cost expectations and is not for the purposes of penalizing
unwarranted requests, since it is neither desirable nor appropriate to
penalize parties for whom requests for reexamination are denied.

Issue 3

   One comment in response to the August 11, 1995, Notice of Proposed
Rulemaking suggested that the third-party requester should be
required to certify that the request for reexamination contains all
information that the requester regards as materially adverse to the
patentability of the patent.

Response to Issue 3

   This suggestion has not been adopted since it is in the third-party
requester's best interests to submit all information that the requester
regards as materially adverse to patentability with the request for
reexamination in order to increase the possibility of the request for
reexamination being granted. Moreover, proposed    1.948 of the present
rule package now provides that prior art submissions by the third-party
requester filed after the inter partes reexamination order shall be
limited to: (1) Any prior art which is necessary to rebut a finding of
fact by the examiner or a response of the patent owner; or (2) any prior
art which became known or available to the third-party requester after
the filing of the inter partes reexamination proceeding. This is
additional incentive to submit all known (and available) material prior
art with the request.

Issue 4

   Four comments in response to the August 11, 1995, Notice of Proposed
Rulemaking were directed to the selection of the examiner and/or number
of examiners. A first comment opined that it was Office practice to
assign the reexamination to the examiner who originally examined and
issued the patent and not on the basis of the classification of the art.
The comment further noted the assignment to the same examiner defeats
the underlying purpose of reexamination and petitioning for a transfer
to a different art unit based on the classification of the art can also
be unsuccessful, despite the ``Transfer Procedure'' in MPEP Section 2237
for those times when a reexamination request should be assigned to a
different group art unit. The comment suggested that if a third-party
requester requests a reexamination, it should be conducted by a
different examiner, and further, if appropriate, assigned to a different
art unit. A second comment noted that    1.931(b) of the August 11, 1995,
Notice of Proposed Rulemaking provides the only limitation placed on the
selection of the examiner, namely that an examiner whose decision
refusing reexamination has been reversed will not ordinarily conduct the
reexamination. The comment suggested reevaluating the practice of
assigning the same examiner who prosecuted the application which issued
as a patent to conduct the reexamination, since many practitioners feel
that the original examiner may have a bias against fully considering prior
art during a reexamination proceeding. A third comment stated that since
an inter partes reexamination proceeding is more complicated to manage
than an ex parte reexamination proceeding, the inter partes reexamination
proceeding is likely to require a higher degree of technical and legal
competence in making a determination of patentability than is normally
required in an ex parte reexamination proceeding. An examiner in an inter
partes reexamination proceeding will be required to weigh and assess the
credibility of often conflicting arguments, theories of operation, and
evidence when making a determination of patentability. Although statistics
appear to indicate that there is no inherent bias in the conduct of a
reexamination proceeding when the proceeding is assigned to the same
examiner who issued the patent, many perceive a bias (in favor of the
patent owner) when the reexamination proceeding is assigned to the same
examiner. The comment advocated assigning the reexamination proceeding to
the best qualified examiner available, given the technical, legal, and
procedural complexities that are likely to arise in the reexamination
proceeding. The comment also suggested the formation of a separate unit
of examiners to handle the new reexamination proceedings, or at least
those which involve a third-party requester. The fourth comment suggested
that the number of examiners be increased from one to three, including a
supervisory primary examiner and a Group Director, in order to increase
the probability of a ``correct'' decision and develop a higher degree of
confidence in the reexamination process, and avoid situations where a
third-party requester feels the examiner did not understand the prior art,
the interview, or the declarations, etc. The comment suggested that the
small increase in Office costs, and fees to be charged to participants,
will probably be offset by having fewer appeals (and law suits) filed
(which is of benefit to the public), and will still be a cost-effective
means of resolving patent disputes, as compared to litigation. The fifth
comment suggested that more than one examiner be responsible for issuing
the Right of Appeal Notice, similar to the European Patent Office.
Modification of the proposed rules to allow a decision from a panel of
three capable examiners, would result in a higher degree of quality in
the reexamination process and less ancillary issues later being raised
(such as examiner bias or an examiner's lack of understanding of the
relevant art or law). The comment suggested that the panel could include,
for example, a legal specialist within the Examining Group, the original
examiner of the application, and a primary examiner having knowledge of
the relevant technical field and the record would reflect when a panel
member concurs or dissents.

Response to Issue 4

   As to the selection of the examiner, studies conducted by the Office
have not discovered any bias irrespective of whether the same or a
different examiner handles the reexamination. The same examiner should
not be biased toward confirming patentability, because a reexamination
is not a rehash of old issues, but rather, a new question of
patentability. In spite of the above, the Office is, for the most part,
adopting the comment suggesting assignment of the reexamination to an
examiner other than the one who originally examined and issued the patent.
The comment is being adopted in order to eliminate public perception
of bias by the original examiner who handled the patent. The comment
will be implemented as a matter of policy, rather than by rule change.
The MPEP will be revised to set policy that unless a Group Director
needs to make an exception, a reexamination will not be assigned to a
Supervisory Patent Examiner, a primary examiner, or a junior examiner
who was actually involved (by preparing/signing an action on the merits)
in the examination and issuance of the patent undergoing reexamination.

   As to the Office personnel to be involved in the reexamination
proceedings, the Office is considering the creation of a special group/
unit having legal advisors trained in inter partes reexamination
procedures to oversee the examination of the inter partes reexamination
by the patent examiner in the examining group. For technical expertise,
an examiner selected from the groups will be assigned the reexamination.
The advantage of such a special group/unit is that it will include the
examiner most familiar with the technology to make the patentability
decisions and legal advisors to provide uniformity of the reexamination
practice and procedure.

   As to the comment suggesting that the number of examiners handling a
reexamination proceeding be increased from one to three, the following
is to be noted. In order to provide a thorough review by a team of
examiners, a practice is being considered to hold a panel review just
prior to the decision on the request for reexamination (order/denial) is
issued and at the close of prosecution (i.e., just prior to
``allowance'' of the reexamination or just prior to issuing a right of
appeal notice and final rejection). The panel review will be similar to
the appeal conference review done in an application on appeal. It should
further be noted that appeal conferences are already mandatory before a
reexamination leaves the examiner for a decision by the Board of Patent
Appeals and Interferences. If adopted, this will be implemented as a
matter of policy, rather than by rule change.

Issue 5

   One comment responding to the August 11, 1995, Notice of Proposed
Rulemaking suggested that the content of the ``prior art'' made
available for review by the Office should also include inter partes
sworn testimony of the inventor(s) and others associated with the
implementation of the invention and any patent work thereon covering
their knowledge of the known prior art, related industry practices, and
the like, which evidence may also impeach the inventor(s) and others in
the sense of withholding known prior art from the Office.

Response to Issue 5

   The Advisory Commission on Patent Law Reform: A Report to the
Secretary of Commerce, August 1992, at page 117, recommended limitations
on the scope of documentary prior art evidence and cautioned against
reliance on testimonial evidence in light of the abuses of the process
which occurred in the reissue protest proceedings under the Dann
Amendments. The Commission found the Office to be an inappropriate forum
for addressing all issues of validity. Affidavits or declarations which
merely explain the contents or pertinent dates of prior patents or
printed publications in more detail may be considered during
reexamination, but any rejection must be in accordance with proposed
1.906(a) (Scope of reexamination in reexamination proceeding). Proposed
  1.906(a) limits the scope of reexamination in that claims in an inter
partes reexamination proceeding will be examined on the basis of patents
or printed publications and, with respect to subject matter added or
deleted in the reexamination proceeding, on the basis of the
requirements of 35 U.S.C. 112.

Issue 6

   One comment in response to the August 11, 1995, Notice of Proposed
Rulemaking suggested that when an examiner allows a claim, the decision
of the examiner should be supported by a well-reasoned opinion
establishing the examiner's reasons for allowance. The comment stated
that although    1.109 provides that the examiner ``may set forth such
reasoning'' for the allowance, this is rarely done and often with only a
brief note. It was pointed out that well-reasoned opinions are
critically important in inter partes reexamination procedure to third-
party requesters (or patent owners) who are actively participating and
who need the reasons for allowance (or for final rejection) in deciding
whether to appeal.

Response to Issue 6

   Office policy will direct the examiner to make a complete record of
the reasons for allowing or rejecting a claim at various stages during
the proceeding. Note further that, according to currently proposed
1.953 (Examiner's Right of Appeal Notice), the Right of Appeal Notice is
required to include ``an identification of the status of each claim, and
the reasons for patentability and/or the grounds of rejection for each
claim.'' Thus, the examiner's reasons for patentability and/or the
grounds of rejection will be available in inter partes reexamination
procedure to the third-party requesters (and patent owners) who are
actively participating and who need the reasons for allowance (or the
grounds for final rejection) in deciding whether to appeal.

Issue 7

   One comment in responding to the August 11, 1995, Notice of Proposed
Rulemaking questioned whether in view of the new fee structure, the
examiner will be required to do a new search of the prior art.

Response to Issue 7

   The Office has chosen to rely upon the examiner's judgment and
expertise in determining how much searching should be done in the
reexamination proceeding. If the examiner believes that additional prior
art patents and publications can be readily obtained by searching to
supply any deficiencies in the prior art cited in a request, the
examiner has the option of performing an additional search. The examiner
is not required to, and will not routinely, make a full search.

Comments Directed to Specific Rules

Issue 8

   One comment stated the belief that    1.901 of the August 11, 1995,
Notice of Proposed Rulemaking (which relates to the submission of prior
art) places an unnecessary burden on a person to cite art to be placed
in the file of an issued patent. A patentee who obtains prior art as a
result of a foreign search report or by a competitor may believe it to
be irrelevant and should be encouraged to file it without any statement
that the art is pertinent, since it may turn out to be relevant when
combined with other unknown prior art.

Response to Issue 8

   Current    1.501 is being retained, and thus there is no need for
proposed    1.901 of the August 11, 1995, Notice of Proposed Rulemaking
which was to track and replace    1.501. Section 1.501 provides a system
for citation of patents and printed publications to the Office for
placement in the patent file by any person during the period of
enforceability of the patent in accordance with 35 U.S.C. 301. Section
1.501 requires the citation to state the pertinency and applicability of
the cited documents to the patent and the bearing the documents have on
the patentability of at least one claim of the patent pursuant to the
same statutory requirement set forth in 35 U.S.C. 301.

Issue 9

   Two comments suggested clarification of the language of the
third-party estoppel provisions proscribed by      1.907 and 1.909 of
the August 11, 1995, Notice of Proposed Rulemaking, specifically the
language ``could have raised'' used in both rules. One comment
recommended that the third-party requester have the same obligation to
raise issues known to him as the patent owner has. Another comment
opined that the phrase ``or could have raised during the prior
reexamination proceeding'' could be construed broadly, so as to stop a
third-party requester from challenging the invalidity of a claim based
on prior art which was in the possession of the third-party requester at
the time of a prior reexamination proceeding, but which was not
discovered at that time. Thus, depending on how the expression ``could
have'' is interpreted, this could place a substantial burden on a large
corporation. It was also suggested that the duty of individuals to
disclose information known to them to be material to patentability is
another difficult provision, particularly the phrase ``and every other
individual who is substantively involved on behalf of the patent owner
in a reexamination proceeding.''

Response to Issue 9

   35 U.S.C. 315(c) and 317(b) of the Act use the phraseology ``could
have raised'' with respect to issues of the third-party. The Office, as
the sole agency that administers the patent statute, properly interprets
statutory language in the first instance, subject to review by the
courts. The question of whether an issue could have been raised must be
decided on a case-by-case basis, evaluating all the facts and
circumstances of each individual situation. It would not be appropriate
at this time to provide an ``all encompassing'' definition, that might
not account for facts which could arise in the future which cannot be
anticipated. As to the duty of disclosure, proposed    1.933 is
substantially unchanged from existing    1.555, which was formulated to
balance the interests of the patent owner with the benefits to the
public interest of the disclosure of material prior art.

Issue 10

   One comment suggested that    1.915(b)(7) of the August 11, 1995,
Notice of Proposed Rulemaking be amended to specifically refer to
reexaminations under the newly proposed regulations. As    1.915(b)(7)
was drafted, the required certification that the person filing an
additional reexamination during the pendency of an ongoing reexamination
is not a privy of the patent owner or of the third-party requester of
the ongoing reexamination would include an ongoing reexamination
proceeding ordered under the old regulations. Since one of the purposes
of the new reexamination legislation is to permit participation by a
third-party requester, no useful or public purpose would be served by
precluding a third-party requester from filing a request for
reexamination under the new regulations where there was a pending
reexamination initiated under the old regulations.

Response to Issue 10

   The language of proposed    1.915(b)(7) has been drafted to
specifically refer to an inter partes reexamination; this should
accurately track the statutory prohibition of a third-party requester of
an ongoing (pending) inter partes reexamination from requesting another
inter partes reexamination. Note, however, that the current proposed
rules do not preclude an ex parte third-party requester from filing an
inter partes reexamination request.

Issue 11

   Two comments responding to the August 11, 1995, Notice of Proposed
Rulemaking were directed to the identification of the real party in
interest. One comment suggested that as to the identification of the
real party in interest,    1.915(b)(10) of the August 11, 1995, Notice
needs to be clarified on the question of whether a third-party requester
filing in the name of an attorney must be identified. A second comment
suggested that the real party in interest should be identified at least
by the time of filing of the notice of appeal to the Court of Appeals
for the Federal Circuit.

Response to Issue 11

   The real party in interest must be set out in the request. 35 U.S.C.
311(b)(1) requires that the request ``include the identity of the real
party in interest.'' Proposed    1.915(b)(8) (previously    1.915(b)(10)
in the 1995 rule package) tracks this provision of the statute and
requires the requester to identify the real party in interest at the
time of filing the request. If an attorney is filing a request for inter
partes reexamination on behalf of another party, that other party must
be identified. Thus, the third-party requester will be identified. As to
the patent owner, proposed    1.965(c)(1) requires the identification of
the real party in interest at the time of the filing of the appellant
brief, and proposed    1.967(b)(1) requires the identification of the
real party in interest at the filing of the respondent brief.
Accordingly, the real parties in interest, for both the third-party
requester and the patent owner, should be identified prior to an appeal
to the Court of Appeals for the Federal Circuit by the patent owner (the
current statute prohibits the third-party requester from appealing to
the courts).

Issue 12

   One comment responding to the August 11, 1995, Notice of Proposed
Rulemaking was concerned that active third-party requesters representing
large businesses could mount a series of attacks through ``fourth
parties'' and ``tie up'' the invention of a small inventor for years.

Response to Issue 12

   The statute is structured to balance the interests of the patent
owners (to reduce costs and prevent harassment) and the public interest
in promoting the validity of patents. Proposed    1.907 tracks 35 U.S.C.
317 and is intended to prevent repeated challenges to the patent by
third parties and their privies. In accordance with 35 U.S.C. 317(a),
proposed    1.907(a) prohibits the filing of a subsequent inter partes
request for reexamination of the patent by the third-party requester or
its privies until a reexamination certificate has been issued. In
accordance with 35 U.S.C. 317(b),    1.907(c) provides that if a final
decision in an inter partes reexamination proceeding instituted by a
third-party requester is favorable to patentability of a claim, the
third-party requester and its privies may not later request another
inter partes reexamination of any such patent claim on the basis of
issues which that party, or its privies, raised or could have raised in
such inter partes reexamination proceeding. Moreover, proposed
1.915(b)(8) (previously    1.915(b)(10) in the 1995 rule package) tracks
35 U.S.C. 311(b)(1) and requires the requester to identify the real
party in interest at the time of filing of the inter partes request.

Issue 13

   One comment suggested that in regard to      1.921 and 1.945 of the
August 11, 1995, Notice of Proposed Rulemaking, supplemental responses
and new prior art submissions should be permitted by the patent owner in
order to substantiate certain points at issue (e.g., secondary
considerations). It was further suggested that supplementation of
responses be permitted. It was also suggested that submission of new
publications by the third-party requester should be permitted in
response to any amendment made by the patent owner which reduces the
scope of the original claims.

Response to Issue 13

   Proposed    1.945 permits the patent owner to respond to any Office
action, which response may include arguments and proposed amendments.
There is no proscription regarding the submission of evidence relating
to secondary considerations. As to third-party requesters, proposed
1.948 provides that prior art submissions by the third-party requester
filed after the inter partes reexamination order shall be limited to:
(1) Any prior art which is necessary to rebut a finding of fact by the
examiner or a response of the patent owner; or (2) any prior art which
became known or available to the third-party requester after the filing
of the inter partes reexamination proceeding. Accordingly, submission of
new publications by the third-party requester in response to an
amendment made by the patent owner which reduces the scope of the
original claims would be permitted as a rebuttal of a ``response of the
patent owner.''

Issue 14

   One comment stated that as to    1.927 of the August 11, 1995, Notice
of Proposed Rulemaking, a determination by the Director refusing to
initiate reexamination is final and nonappealable by a third-party. The
rule should be amended to allow the third-party to appeal, since without
an opportunity to appeal, a third-party's interests would be seriously
jeopardized.

Response to Issue 14

   Proposed    1.927 of the present rule package (petition to review
denial of the request for reexamination) has been drafted to track 35
U.S.C. 312(c). Proposed    1.927 provides that ``[t]he third-party
requester may seek review by a petition to the Director under    1.181
within one month of the mailing date of the examiner's determination
refusing reexamination. Any such petition must comply with    1.181(b).
If no petition is timely filed or if the decision on petition affirms
that no substantial new question of patentability has been raised, the
determination shall be final and nonappealable.'' Thus, although the
third-party requester does not have an appeal right, it may obtain a
review of the decision of the examiner refusing reexamination by filing
a petition. If the decision on the petition, however, affirms that no
substantial new question of patentability has been raised, the
determination is final and nonappealable, as is statutorily required by
35 U.S.C. 312(c).

Issue 15

   Two comments were directed to the length of briefs specified in
1.943 of the August 11, 1995, Notice of Proposed Rulemaking. One comment
suggested that the length of briefs would be more meaningful if the size
of the paper and the type font were specified. A second comment stated
that the page limitation on briefs in    1.943 is too restrictive,
especially for patent owners, since there is no limitation on the number
of issues which a third-party can raise, which may require a longer
response from the patent owner. It was suggested that the rule should
permit longer briefs upon a showing of good cause.

Response to Issue 15

   As to the first comment, this comment is being adopted. Section
1.943, as proposed in the present rule package, has been drafted to set
forth (by reference to    1.530(d)(5)) the requirements for responses,
amendments, briefs, appendices and other documents including the size of
the paper, the minimum size of the type font (11-point), the line
spacing and the margin requirements.

   As to the second comment, the 50-page limit for amendments proposed to
be set in    1.943 is considered to be sufficient to deal with the
third-party requester's comments. Note that the 50-page limit excludes
reference materials such as prior art references. Where an extraordinary
situation arises where justice requires the 50-page limit to be
exceeded, the patent owner may petition under    1.183 to suspend the
page limit requirement of    1.943.

   The page limit set in proposed    1.943 of the present rule package for
briefs is such that appellant briefs shall not exceed 30 pages or 14,000
words in length (excluding appendices of claims and reference
materials), and all other briefs by any party shall not exceed 15 pages
or 7,000 words in length. These numbers of pages are in line with
procedural rules of the Federal Courts; see for example Rule 32(a)(7)(A)
of the Federal Rules of Appellate Procedure or Rule 33 of the Rules of
the Supreme Court of the United States (Practice & Procedure).

Issue 16

   Several comments were concerned with the time periods for response
and extensions of time. Two comments suggested that the time periods for
response for    1.945 (patent owner) and    1.947 (third-party
requester) of the August 11, 1995, Notice of Proposed Rulemaking should
be a minimum of two months for each party. A third comment suggested
only that the patent owner be given two months to respond. The first
comment suggested that the first month extension should be available
upon payment of a fee (as in regular patent applications), with further
requests requiring justification or cause. The second comment suggested
that      1.945 and 1.947 should be made consistent with each other (30
days versus one month) to alleviate any confusion by stating the number
in months. The second comment further suggested that the extension of
time procedure is unworkable since the Office could not act on the
request for an extension of time (if filed within the one-month period
of time) before the deadline for the response. Instead, the usual
extension of time procedure used for regular patent applications should
be available. The fourth comment stated that the time periods for
submitting a response, a written comment, an appeal brief, and a
respondent brief and for appealing or cross-appealing (     1.945,
1.947, 1.951, 1.953, 1.959, 1.963, 1.971, 1.973, 1.979, 1.983, and
1.993) are too short, especially for residents outside of the United
States (due to mailing delay).

Response to Issue 16

   Proposed    1.947 of the present rule package has been drafted to
provide for a 30-day response period (from service of the patent owner's
response on the third-party requester) for third-party requester
comments. This tracks the requirement of 35 U.S.C. 314 that third-party
requester comments be filed ``within 30 days after the date of service
of the patent owner's response.'' Proposed    1.945 has been drafted to
provide for an ``at least 30 days'' response period for the patent
owner. This tracks the requirement of 35 U.S.C. 133 that the time for
response to an Office action shall be ``not less than 30 days.'' A
shortened statutory period of two months will generally be set for
patent owner responses to Office actions on the merits; however, where
litigation has been suspended pending a determination in the
reexamination proceeding, or for a like reason, the period will be
shortened to one month or 30 days as is appropriate.

   The suggestion that      1.945 and 1.947 be made consistent with each
other has been adopted to the extent that the currently proposed rules
(    1.945 and 1.947) recite both time periods in terms of days rather
than months. The period for the patent owner response to an Office
action will not, however, be made 30 days to correspond to the
third-party comment period mandated by statute. While the statute limits
the third-party requester to 30 days to comment on patent owner
responses, a longer period for the patent owner to respond is
appropriate in view of the potential need for counsel to consult with
the patent owner, consider amendments, etc.

   As to extensions of time, 35 U.S.C. 305 provides that all reexamination
proceedings will be conducted with special dispatch within the Office.
Section 1.956 provides that extensions of time will be available to the
patent owner upon a showing of sufficient cause. Third-party requester's
30-day time period for comments is statutory; thus, it cannot be
extended. This is consistent with the recommendation (VII-B) of The
Advisory Commission on Patent Law Reform: A Report to the Secretary of
Commerce, August 1992 to provide for the opportunity for the third-party
requester to submit written comments ``within strict time deadlines.''

Issue 17

   One comment suggested that, as to    1.949 of the August 11, 1995,
Notice of Proposed Rulemaking, a more flexible policy on closing
prosecution be adopted in a reexamination proceeding than is currently
applied by the Office in its final action practice. Specifically, this
proposed section indicates that prosecution will not normally close if
there is a new ground of rejection (not previously addressed by the
patent owner) which was not necessitated by an amendment to the claims
by the patent owner. There was particular concern in the comments about
a situation where new prior art is relied on even if it was necessitated
by an amendment to the claims. It was noted that the proposed practice
may serve a useful purpose in the normal examination of patent
applications, where an applicant always has the opportunity to file a
continuing application to make any further amendments to the claims that
may be desirable to address the new ground of rejection; however, in a
reexamination proceeding, where the patent owner is precluded from
having any right to amend the claims to address the new ground of
rejection or to file another request for reexamination, the patent owner
may be trapped with no effective way to address new prior art that has
been introduced for the first time in the Office action that
simultaneously closes the prosecution. It was urged that this could be
fundamentally unfair to the patent owner. Where new prior art is
asserted by the examiner, the patent owner should have the opportunity
to amend the claims.

Response to Issue 17

   By weighing and balancing the interests of the parties, it is
believed the rule as proposed is fair and reasonable. A rule which would
prohibit an Office action from closing prosecution following a new art
rejection responsive to a patent owner amendment would conceivably be
subject to abuse, since patent owners could purposely add an amendment
in each response to thus necessitate a new art rejection and thereby
preclude the closing of prosecution for an unlimited number of cycles.

Issue 18

   Eight comments were directed to interviews (provided for in    1.955
of the August 11, 1995, Notice of Proposed Rulemaking). One comment
suggested the need for a more accurate statement of why claims were found
to be allowable as the result of an interview. A second comment suggested
that the Office rules be modified to specifically require a means for more
accurately recording what transpires at interviews, regardless of which
party requests the interviews or whether all parties are present.
The comment further stated that ``recording'' did not imply physical
recording by electronic means or by a court reporter, but by a more
thorough method of reporting by an examiner as to what transpired at the
interview (which would be particularly effective with a multi-examiner
review system). The comment indicated that the reporting of the
``minutes'' should be done to all parties, including a brief,
non-binding, and informal opinion by the examiner on the resolution of
the issues presented, so as to give all parties the opportunity to respond
to the issues raised at the interview. A third comment suggested that the
proposed rules should be modified to achieve two objectives. The first
objective would be to provide an opportunity to better communicate
issues to examiners (particularly those issues which are difficult to
express on paper and might be better demonstrated; e.g., by charts,
tables, or physical demonstration) of what is purported to be the main
technical aspect of an invention, and how that technical aspect is or is
not suggested by the prior art, either before or after the formal
submission, so that they will have a better understanding of what the
data represents. A second objective should be to provide a complete record
for later review for a judge or an attorney who reviews the file history
for a decision on patentability or infringement assessment. The proposed
    1.955 was stated to benefit the patent owner, who is the only party
allowed to request an interview, thereby providing a tremendous advantage
and, therefore, the rule should be modified to allow a third-party
requester the opportunity to initiate an interview. The comment further
criticized the lack of a specific requirement for recording what
transpires at interviews, on the basis that an Examiner Interview Summary
Record would be of little value in an inter partes reexamination
proceeding, since the record is too abbreviated to be of any real value
in subsequent proceedings and it is unlikely that much detail could be
put into any interview record if more than one party, as well as a senior
level official (whose presence would be required under the proposed rule)
are all present and are relying upon an examiner to hurriedly write a
summary of the interview. The comment suggested modification of    1.955
to include an effective procedure for recording the details of what
transpired at an interview. A fourth comment suggested that, in view of
the criticality of the content of interviews in subsequent litigation,
a mechanism  should be made available for recording statements made at
substantive interviews that occur during reexamination, whereby any party
to a reexamination should be permitted to have a transcript of the
substantive interviews made of record at their own expense. The comment
further suggested that requesting parties would both supply the means for
transcription and would bear the costs associated therewith. A fifth
comment suggested that the third-party requester be allowed not only to
participate but also initiate an interview, and that the third-party
requester be provided, at a sufficient time prior to the interview,
the particulars of the claim at issue at the interview, the objective
of the interview, and the specific data to be used at the interview, so
that the third-party requester would be able to take substantial part in
the discussion at the interview. A sixth comment was in favor of the
third-party requesters having the right to participate in interviews
but opposed giving third parties the right to initiate them. The reason
given was that the rules need to balance the right to encourage third
parties to participate with the need to keep reexamination quick and
inexpensive. The comment further stated that in view of the expense,
including the time required to review the transcript and the continuing
attempts to make corrections and clarifications, a rule change to permit
or require transcription of interviews is not recommended. Such a rule
would make reexaminations more like court proceedings. A seventh comment
suggested that    1.955 should be changed to permit the third-party
requester to request an interview because the third-party requester,
like the patent owner, may have experts and/or documentary evidence
that is not suitable for written declarations. An eighth comment
suggested that if interviews are to be recorded, consideration should be
given as to whether participants would be under oath.

Response to Issue 18

   The Office has reconsidered its initial position (taken in the August
11, 1995, Notice of Proposed Rulemaking) to permit owner-initiated
interviews in which the patent owner and the third-party requester
participate. The presence of a third-party requester will complicate the
reexamination proceeding and delay it. There is no reason to further
complicate and delay the proceeding with inter partes interviews, which
past history has shown to be not only resource intensive, but unwieldy.
Inter partes interviews are difficult to arrange, control, and conduct.
There would be interaction between the patent owner's representative and
its experts, the third-party's representative and its experts, the
examiner, and the ``senior level official'' which would be difficult to
regulate and control. It is difficult to record what happened, and
cross-transcripts would result in delay and complications. In addition,
the time to arrange and conduct the interview would greatly extend the
inter partes proceeding time line, and this is clearly contrary to the
``special dispatch'' required by 35 U.S.C. 314(c) for the inter partes
reexamination proceeding. As to the comments suggesting that the
third-party should be permitted to initiate interviews, this would even
further complicate the proceeding, adding undue cost to the parties and
the Office and further delay to the proceeding.

   Accordingly, the Office has decided that the third-party requester of
the inter partes reexamination should neither be permitted to initiate
nor be permitted to participate in an interview which addresses the
merits of the proceeding. If, however, the patent owner is permitted to
initiate and participate in an interview which addresses the merits of
the proceeding while the third-party requester is not, this will create
an advantage to the patent owner which is contrary to the intent and
purpose of the inter partes reexamination addition to the statute.
Thus, to ``level the playing field'' in the Office, in accordance
with the intent and purpose of the statute, the patent owner will
neither be permitted to initiate nor be permitted to participate in an
interview which addresses the merits of the proceeding. In other words,
no interviews which address the merits of the proceeding will be
permitted (or held) in an inter partes reexamination proceeding.
This offers the additional advantage of further shortening the
proceeding, pursuant to the dictates of ``special dispatch'' in 35
U.S.C. 314(c). Even further, this deals with the comments which argued
that the content of the inter partes interview cannot be adequately
captured without the use of expensive and complex transcripts.
Anything stated or decided in the proceeding will be on the record,
in writing.

   As to the comments regarding improving the record of what transpired at
interviews, clarity of the record is a concern to the Office.
Accordingly, in    1.560(b) (Interviews in ex parte reexamination
proceedings), it is required for interviews in ex parte reexamination
proceedings that ``[i]n every instance of an interview with an examiner,
a complete written statement of the reasons presented at the interview
as warranting favorable action must be filed by the patent owner.''
(Emphasis added). The written statement must be filed as a separate part
of a response to an Office action outstanding at the time of the ex parte
reexamination interview, or as a separate paper within one month from
the date of the ex parte reexamination interview, whichever is later.
Regarding inter partes reexamination proceedings, there will be no
interviews at all which address the merits of the inter partes
reexamination proceeding, as discussed in the previous paragraph, thus
the comments regarding improving the record of what transpired at
interviews are moot as to inter partes reexamination proceedings.

   With respect to the suggestion of prior notice of what issues will be
discussed (the specific objective of the interview and the materials to
be presented), patent owners requesting interviews in ex parte
reexamination proceedings are in fact expected to submit such materials
prior to the interview with ample time for review. As to whether
participants at recorded interviews (which are only permitted in special
circumstances in ex parte reexamination proceedings) should be under oath,
this is believed to be unnecessary in view of 18 U.S.C. 1001, which
provides ``[w]hoever, in any matter within the jurisdiction of any
department or agency of the United States knowingly and willfully
falsifies, conceals or covers up by any trick, scheme, or device a
material fact, or makes any false, fictitious or fraudulent statements or
representations, or makes or uses any false writing or document knowing
the same to contain any false, fictitious or fraudulent statement or
entry, shall be fined not more than $10,000 or imprisoned not more than
five years, or both.''

Issue 19

   One comment stated that, as to    1.959(a)(2) of the August 11, 1995,
Notice of Proposed Rulemaking, the introduction of a right to appeal by
a third-party requester who is dissatisfied with an examiner's favorable
consideration of a claim is an important and beneficial aspect of the
new reexamination proceedings. However, the apparent unqualified
opportunity to file an appeal at this advanced stage in the proceedings
raises a concern that the appeal procedure could be used to compromise
the patent owner's ability to address the reasons and the evidence that
the third-party requester might use in its appeal and to add
(perhaps intentionally) considerable length to a proceeding that is to
be conducted with special dispatch. The comment was concerned that the
likelihood exists that the first time the patent owner will be made
aware of the grounds of rejection to be relied upon by the third-party
requester will be upon receiving the third-party's appeal brief, adding
complexity and length to the proceeding. In spite of this, the provisions
in    1.967(b) relating to the respondent brief apparently do not
contemplate any opportunity for the patent owner to offer an amendment or
material appropriate to the new ground of rejection, as is permitted
when an examiner makes a new ground of rejection in the examiner's answer
(see proposed    1.971(b)). The comment suggested that consideration must
be given to setting appropriate limits on the grounds of rejection that
the third-party requester can rely upon in its appeal; including
consideration to requiring the third party requester who files a notice
of appeal under proposed    1.959(a)(2) to identify in this notice the
grounds of rejection that it will rely upon in its appeal.

Response to Issue 19

   Third-party requester's prior art submissions in an inter partes
reexamination (after reexamination is ordered) are limited by the
currently proposed    1.948 to prior art: (1) Which is necessary to
rebut a finding of fact by the examiner; (2) which is necessary to
rebut a response of the patent owner; or (3) which became known or
available to the third-party requester after the filing of the inter
partes reexamination proceeding. Under    1.947 (Response by
third-party requester to patent owner's response), the third-party
requester's comments shall be limited to issues raised by the action of
the Office or the patent owner's response. Accordingly, the third-party
requester could not advance a new ground of rejection based upon new
prior art at the appeal stage. Although the notice of appeal does not
require specific identification of the issues, the appellant's brief does.
See currently proposed      1.965(c)(6) (appellant brief), 1.967(b)(6)
(respondent brief) and 1.971 (rebuttal brief), all of which
specifically prohibit the third-party from introducing new grounds of
rejection at each respective stage of the appeal.

Issue 20

   One comment submitted in response to the August 11, 1995, Notice of
Proposed Rulemaking suggested that the enforcement role of the Office
should be such that the examiner is obligated to issue an examiner's
answer in every reexamination proceeding. The comment noted that present
(1995) rules provide that an examiner may issue an examiner's answer.
It was urged that when the Office decides that an invention is
unpatentable, it is incumbent that the Office not rely upon the
third-party requester exclusively, and therefore, examiner's answers
should be mandatory.

Response to Issue 20

   Although the currently proposed    1.969(a) (and    1.193(a)(1))
indicates that an examiner's answer may be furnished, common practice is
to furnish an examiner's answer. This practice is implemented through
procedures set forth in the MPEP. Moreover, the examiner cannot be
obligated to issue an examiner's answer in every instance, since, in
rare instances, it will become necessary to reopen prosecution for
consideration of a recently discovered new ground of rejection or reason
for patentability.

Issue 21

   One comment responding to the August 11, 1995, Notice of Proposed
Rulemaking suggested that appellant should be given the opportunity to
reply to both the opening brief of the respondent and the examiner's
answer, either by filing briefs in response to each, or by a single
reply brief after the examiner's answer.

Response to Issue 21

   The second option of the comment has been adopted. The currently
proposed    1.971 (Rebuttal Brief) provides that, following the
examiner's answer, any appellant may once submit a rebuttal brief.
The rebuttal brief of the patent owner may be directed to the examiner's
answer and/or any respondent brief. The rebuttal brief of any third-party
requester may be directed to the examiner's answer and/or the respondent
brief of the patent owner. The rebuttal brief of a third-party requester
may not be directed to the respondent brief of any other third-party
requester. No new ground of rejection can be proposed by a third-party
requester appellant.

Issue 22

   One comment responsive to the August 11, 1995, Notice of Proposed
Rulemaking suggested that because both the request for oral argument and
the briefs replying to the examiner's answer are due within one month,
the parties will likely not be able to consider each other's final
written submissions before requesting oral argument and, therefore, the
period for requesting an oral hearing be lengthened to 45 days, thus
giving the parties 15 days to consider each other's final written
submissions.

Response to Issue 22

   This comment has been adopted as follows. Section 1.973(b) (Oral
Hearing) as proposed provides that the parties have two months after the
date of the examiner's answer to file a written request for oral hearing.

Issue 23

   One comment suggested that proposed    1.979(b) of the August 11,
1995, Notice of Proposed Rulemaking provides an opportunity for each
party to file a single request for rehearing (referred to as ``request
for reconsideration'' in the comment) of the decision of the Board of
Patent Appeals and Interferences. However, there is no apparent
opportunity for the other party to provide comments on that request. The
lack of this opportunity is not consistent with the general approach in
the new reexamination process of providing an opportunity for both
parties to provide comments before any action is taken by the Office,
and it was suggested once a request for rehearing has been filed by
either or both parties, that the other party have a one-month period to
offer comments on the request for rehearing.

Response to Issue 23

   This comment has been adopted. The third-party requester, by virtue
of the statute, has no opportunity to appeal the decision of the Board
of Patent Appeals and Interferences to the U.S. Court of Appeals for the
Federal Circuit. In addition,    1.979(d), as presently proposed,
permits the party requesting rehearing (in addition to stating ``the
points believed to have been misapprehended or overlooked in rendering
the decision'') to also state ``all other grounds upon which rehearing
is sought.'' It is only fair to give the third-party requester an
opportunity to comment on newly provided ``other grounds upon which
rehearing is sought.'' The patent owner should likewise be given the
same opportunity to comment in order to create a level ``playing field''
in the Office. Accordingly, currently proposed    1.979(b) has been
drafted to give both the patent owner and the third-party requester a
right to comment on each other's request for rehearing of the decision
of the Board of Patent Appeals and Interferences.

Issue 24

   One comment suggested that    1.985 of the August 11, 1995, Notice of
Proposed Rulemaking, which permits any person to advise the Office about
a concurrent proceeding involving the patent being reexamined, should be
changed to require the patent owner to advise the Office (and therefore
any third-party requester) of any concurrent proceeding involving the
patent being reexamined. The comment also stated that similar mandatory
requirements are contained in    1.660 relating to the conduct of an
interference proceeding involving an application or a patent.

Response to Issue 24

   The suggestion has been adopted. Currently proposed    1.985(a)
(Notification of prior or concurrent proceedings) is drafted to direct
that in any inter partes reexamination proceeding, the patent owner
shall call the attention of the Office to any prior or concurrent
proceedings in which the patent is or was involved such as
interferences, reissue, reexaminations, or litigation and the results of
such proceeding.

Issue 25

   Regarding    1.989 of the August 11, 1995, Notice of Proposed
Rulemaking, one comment stated that the merger of multiple reexamination
proceedings on unrelated issues by unrelated parties will result in
undue complications of the proceedings, particularly during interviews
and hearings.

Response to Issue 25

   As pointed out above in the response to Comment 18, the Office has
reconsidered its initial position (taken in the August 11, 1995, Notice
of Proposed Rulemaking) and will not permit any interview which
addresses the merits in an inter partes reexamination proceeding. Thus,
the comment is moot as to complications caused by an inter partes
interview. Although multiple parties can, to some degree, increase the
complexity of the proceeding even in areas other than the interviews
focused upon by the commenter, the general policy of the Office is that
concurrent reexamination proceedings will not be conducted separately at
the same time on the same patent. The reasons for this policy is to
prevent inconsistent, and possibly conflicting, amendments from being
introduced into the two proceedings on behalf of the patent owner.
Normally the proceedings will be merged whenever it is desirable to do
so in the interest of expediting the prosecution of all proceedings.

Issue 26

   One comment responding to the August 11, 1995, Notice of Proposed
Rulemaking suggested that it would be beneficial for the rules to
provide specific procedures for consolidating multiple reexamination
requests of the same patent, since the procedure is too complicated for
the public to simply rely upon internal Office policy.

Response to Issue 26

   Section 1.989, as proposed in the present rule package, provides for
the merging of multiple reexaminations. As to the details of the merger
procedure, it is believed to be more appropriate to incorporate same in
the MPEP, because it is less cumbersome and easier to revise the details
via the MPEP as needed to react to input as the practice evolves, than
it would be to revise the rules. Further, where it becomes known that an
area of the merger procedure is not being understood by the public, it
will be easier to add more explanation to the MPEP, than to make the
rules more comprehensive. Accordingly, the MPEP will contain the
detailed discussion of the merger procedure.

Issue 27

   One comment stated that as to    1.991 of the August 11, 1995, Notice
of Proposed Rulemaking, a merged reissue/reexamination proceeding will
be conducted according to provisions applicable to the reissue
application except that the participation by a third-party requester
shall be limited to issues within the scope of reexamination. Since a
third-party requester has a right to inspect a reissue application and
file a protest involving any issue considered in a reissue application,
consideration should be given to permitting participation by a
third-party requester in the full scope of issues addressed under the
reissue statute. It was urged that the right of appeal and participation
in the appeal process by the third-party requester should be limited to
the scope permitted under the reexamination statute. The comment further
questioned how the third-party requester will be notified of its right
to appeal within the scope of the reexamination proceeding, since
typically there would be no separate action closing prosecution and
right to appeal in a reissue proceeding.

Response to Issue 27

   When an inter partes reexamination proceeding is merged with a
reissue application, the participation by the third-party requester
shall be limited to issues within the scope of the inter partes
reexamination. This is consistent with the recommendations of The
Advisory Commission on Patent Law Reform: A Report to the Secretary of
Commerce, August 1992 at page 117, ``that a full inter partes
proceeding, even with certain restrictions, would lead to abuses of the
process much as occurred in the reissue protests under the Dann
amendments * * * [and] the USPTO is not an appropriate forum for an
inter partes adversarial proceeding addressing all potential issues of
validity.'' [Emphasis added]

   As to how the third-party requester will be notified (in the merged
proceeding) of its right to appeal within the scope of the reexamination
proceeding, since there is no provision in the reissue rules for a
separate action closing prosecution and right to appeal, currently
proposed    1.995 provides that when a third-party requester is involved
in one or more proceedings including an inter partes reexamination
proceeding, the merger of such proceedings will be accomplished so as to
preserve a third-party requester's right to participate to the extent
specifically provided for in these regulations. Due to the complexity of
the merged reissue/reexamination proceedings and the varying issues
presented as a result of the merger, the decision merging the reissue
and reexamination proceedings will set forth the framework for various
courses of action by the parties, including appeal notification and
rights.

Issue 28

   One comment asked what relationship will there be between the
1.993 request to stay an interference (of the August 11, 1995, Notice of
Proposed Rulemaking) and the    1.644(a) petition in interference, since
the    1.993 ``request to stay an interference'' is really a form of a
petition and should be covered or cross-referenced in    1.644(a).

Response to Issue 28

   The request to stay an interference under    1.993 as currently
proposed, and under present    1.565(e) is not an exact fit under any of
subsections (1)-(3) of    1.644(a); thus, it provides an additional
aspect of relief to the public. While subsection (2) of    1.644(a)
might appear to overlap the    1.565(e) and    1.993 request to stay an
interference,    1.644(b) states that ``[a] petition under paragraph
(a)(2) of this section shall not be filed prior to the party's brief for
final hearing (see    1.656).'' Just as petitions under    1.644 are
decided by the Chief Administrative Patent Judge of the Board of Patent
Appeals and Interferences, a request to stay an interference under
1.565(e) and    1.993 will likewise be decided by the Chief
Administrative Patent Judge of the Board of Patent Appeals and
Interferences. The decision of Shaked v. Taniguchi, 21 USPQ2d 1289
(Comm'r Pat. 1991) should be noted, where it was pointed out that
neither the reexamination nor the interference will ordinarily be stayed
in this situation.

Discussion of the Major Specific Issues Involved (1999 Statute)

   The proposed rules relating to inter partes reexamination proceedings
are directed to the provisions set forth in Chapter 31 of Title 35 of
the United States Code (35 U.S.C. 311-318). This Chapter provides for
the filing of requests for inter partes reexamination, decisions on such
requests, inter partes reexamination, appeal from inter partes
reexamination decisions, and the issuance of a certificate at the
termination of the inter partes reexamination proceedings.

Discussion of Specific Rules

   Section 1.4 is proposed to be amended so that paragraph (a)(2)
includes the inter partes reexamination under      1.902-1.997.

   Section 1.6 is proposed to be amended so that paragraph (d)(5) includes
filing a request for inter partes reexamination under    1.913 as an
exception to the use of facsimile transmission.

   Section 1.17 is proposed to be amended so that the title includes a
reference to reexamination to clearly indicate that the enumerated fees
may apply to reexaminations as well as to patent applications. Section
1.17 is proposed to be amended so that paragraph (l) reflects the fact
that in the case of reexaminations, petitions for revival of a
reexamination proceeding terminated for an unavoidable failure of the
patent owner to respond will require the fees of $55 for a small entity
and $110 for a large entity. Also,    1.17 is proposed to be amended so
that paragraph (m) reflects the fact that in the case of reexaminations,
petitions for revival of a reexamination proceeding terminated for an
unintentional failure to respond will require the fees of $605 for a
small entity and $1,210 for a large entity. Note, however, that the
unintentional revival provisions of the statute are not effective in any
reexamination until November 29, 2000.

   Section 1.20 is proposed to be amended so that paragraph (c) reflects
the fact that a request for an ex parte reexamination under    1.510(a)
will require a filing fee of $2,520; and that a request for an inter
partes reexamination under    1.915(a) will require a filing fee of
$8,800.

   Section 1.25, which provides for charging fees to deposit accounts, is
proposed to be amended so that paragraph (b) includes a reference to
inter partes reexaminations under    1.913.

   Section 1.26 is proposed to be amended so as to reflect the refund to
the reexamination requester where the Director decides not to institute
a reexamination proceeding. For ex parte reexaminations filed under
1.510, a refund of $1,690 will be made to the reexamination requester.
For inter partes reexaminations filed under    1.913, a refund of $7,970
will be made to the reexamination requester. In both cases $830 of the
filing fee will be retained, which amount reflects the cost of the
reexamination proceeding through the denial of the reexamination request.

   Section 1.112 is proposed to be amended so that the last sentence
reflects the fact that in the case of inter partes reexaminations, the
right to reply may be limited by an action closing prosecution under
1.949 (prior to the final action) or by a right of appeal notice under
 1.953 (which is a final action).

   Section 1.113, which provides for a final rejection or action, is
proposed to be amended to limit its applicability to applications and ex
parte reexaminations filed under    1.510. For final rejections or
actions in an inter partes reexamination filed under    1.913, new
1.953 will control.

   Section 1.116 is proposed to be amended so that the title includes a
reference to an action closing prosecution and a right of appeal notice
in inter partes reexaminations. Paragraph (a), which provides for
amendments after final action, is proposed to be amended to apply to
amendments after an action closing prosecution by patent owners in inter
partes reexaminations filed under    1.913. Also    1.116(a) is proposed
to be amended to preclude amendments after the right of appeal notice
under    1.953 except as provided for in    1.116(c). Paragraph (c),
which provides for amendments after the decision on appeal, is proposed
to be amended to provide for amendments after the decision on appeal in
an inter partes reexamination.

   Section 1.121(c), which provides for the manner of making amendments to
the description and claims in reexamination proceedings, is proposed to
be amended to specify that such amendments are made in accordance with
 1.530(d) in both ex parte reexaminations filed under    1.510 and inter
partes reexaminations filed under    1.913.

   Parts (a)(2) and (b) of    1.136, which provide for filing of timely
replies with petitions for extensions of time, are proposed to be
amended to make it clear that    1.956 is controlling for extensions of
time in inter partes reexaminations.

   Section 1.137, which provides for revival of abandoned applications or
lapsed patents, is proposed to be amended to provide for revival of ex
parte reexamination proceedings terminated under    1.550(d), for
revival of inter partes reexamination proceedings terminated under
1.957(b), or for revival of rejected claims terminated under    1.957(c)
in an inter partes reexamination proceeding where further prosecution
has been limited to claims found allowable at the time of the failure to
respond. The title is being amended to include a terminated
reexamination proceeding. Paragraph (a) is being amended to include
revival of unavoidably terminated reexamination proceedings. The
unavoidable delay provisions of 35 U.S.C. 133 are imported into and are
applicable to reexamination proceedings by 35 U.S.C. 305 and 314. See In
re Katrapat, 6 USPQ2d 1863 (Comm'r Pats. 1988). Paragraph (b) is being
amended to provide for revival of unintentionally terminated
reexamination proceedings. The unintentional delay fee provisions of 35
U.S.C. 41(a)(7) are imported into and are applicable to all
reexamination proceedings by section 4605 of S. 1948. Note that these
changes pertain to all reexaminations (i.e., both ex parte
reexaminations filed under    1.510 and inter partes reexaminations
filed under    1.913) and become effective on November 29, 2000 (one
year after enactment of statute). Paragraph (d) is being amended to
provide that extensions of time for requesting reconsideration of a
decision dismissing or denying a petition requesting revival of a
terminated reexamination proceeding under subsections (a) or (b) must be
filed under    1.550(c) for a terminated ex parte reexamination
proceeding, or under    1.956 for a terminated inter partes
reexamination proceeding.

   Section 1.181, is proposed to be amended so that paragraphs (a) and (c)
reflect the fact that such a petition may be filed in a reexamination
proceeding.

   Section 1.191, which provides for appeal to the Board of Patent Appeals
and Interferences by the patent owner from any decision adverse to
patentability, is proposed to be amended so as to be applicable to
applications and ex parte reexaminations filed under    1.510, but not
to inter partes reexamination proceedings filed under    1.913.
Specifically, proposed    1.191 would point out that appeals to the
Board of Patent Appeals and Interferences in inter partes reexamination
proceedings filed under    1.913 are controlled by      1.959 through
1.981, and that      1.191 through 1.198 are not applicable to appeals
in inter partes reexamination proceedings filed under    1.913.

   Section 1.191 is further proposed to be amended to distinguish between
ex parte reexamination proceedings filed under    1.510 for patents that
issued from an original application filed in the United States prior to
November 29, 1999 (where an appeal is permitted when claims have been
twice or finally rejected), and ex parte reexamination proceedings filed
for patents that issued from an original application filed in the United
States on or after November 29, 1999 (where an appeal is only possible
when claims have been finally rejected). This date distinction is
necessitated by the conforming amendments to 35 U.S.C. 134 in S. 1948
and the effective date of the changes to the statute which are keyed to
the original filing date of the application which issued as the patent
under reexamination. The effective date language in section 4608 of S.
1948 limits the applicability of the new inter partes reexamination
Chapter 31, and the conforming amendments to 35 U.S.C. 134, 141, 143 and
145, to a reexamination of any patent that issues from an original
application which is filed in the United States on or after November 29,
1999. Thus, for ex parte reexaminations filed under Chapter 30, the
conforming amendments to 35 U.S.C. 134, 141, 143 and 145 only apply to
those ex parte reexamination proceedings filed under    1.510 for
patents that issue from an original application which is filed in the
United States on or after November 29, 1999. The conforming amendments
will not apply to ex parte reexamination proceedings filed under
1.510 for patents that have issued or will issue from an original
application which was filed in the United States prior to November 29,
1999.

   Section 1.301, which provides for appeal by the patent owner in a
reexamination proceeding to the U.S. Court of Appeals for the Federal
Circuit, is proposed to be amended so as to be applicable to ex parte
reexamination proceedings filed under    1.510 and to indicate, for
inter partes reexamination proceedings filed under    1.913, that
1.983 is controlling.

   Parts (a) and (b) of section 1.303, which provide for remedy by civil
action under 35 U.S.C. 145 for the patent owner in a reexamination
proceeding, are proposed to be amended so as to be applicable in
reexamination only to ex parte reexaminations filed under    1.510 for
patents that issue from an original application which is filed in the
United States prior to November 29, 1999. This date distinction is
necessitated by the conforming amendments to 35 U.S.C. 141 and the
effective date of the statute which is keyed to the original filing date
of the application which issues as the patent under reexamination. See
sections 4605 and 4608 of S. 1948. The effective date language limits
the applicability of the new inter partes reexamination Chapter 31, and
the conforming amendments to 35 U.S.C. 141, to any patent that issues
from an original application which is filed in the United States on or
after November 29, 1999. Thus, for ex parte reexaminations filed under
Chapter 30, the conforming amendments to 35 U.S.C. 141, which limit the
patent owner to an appeal only to the U.S. Court of Appeals for the
Federal Circuit, only apply to those ex parte reexamination proceedings
filed under    1.510 for patents that issue from an original application
which is filed in the United States on or after November 29, 1999. The
conforming amendments in section 4605 of S. 1948 will not apply to ex
parte reexamination proceedings filed under    1.510 for patents that
issue from an original application which is filed in the United States
prior to November 29, 1999. It is further proposed to amend    1.303 by
adding a new subsection (d) to clearly note that no remedy by civil
action under 35 U.S.C. 145 is available to the patent owner for ex parte
reexamination proceedings filed under    1.510 for patents that issue
from an original application which is filed in the United States on or
after November 29, 1999, and for any inter partes reexamination
proceedings filed under    1.913.

   Section 1.304, which provides for the time for appeal by the patent
owner in a reexamination proceeding to the U.S. Court of Appeals for the
Federal Circuit, is proposed to be amended so as to be applicable to
inter partes reexamination proceedings filed under    1.913.

   The section heading (title) to Subpart D is proposed to be amended by
inserting ``Ex Parte'' before Reexamination to provide that the
reexamination rules in this part generally apply to ex parte
reexamination proceedings. Since some of the rules also apply to inter
partes reexamination, they are specifically incorporated into the inter
partes reexamination rules, e.g.,    1.933 (patent owner duty of
disclosure) incorporates    1.555; and    1.943 (manner of making
amendments) incorporates    1.530(d)(5). Unless specifically stated
otherwise, in this subpart the term ``reply'' shall also mean
``response.''

   The titles of      1.501-1.570 and the undesignated center headings for
Subpart D are proposed to be amended by revising them to be limited to
ex parte reexamination except as specifically stated otherwise (e.g.,
  1.530, 1.555 and 1.565).

   Proposed section 1.501, which provides for citations of prior art in
patent files, sets forth the procedure that citations shall be entered
in the patent file unless a reexamination proceeding is pending and
reexamination has been ordered. In this situation, only citations by the
patent owner under    1.555 and by a third-party requester under either
  1.510 or    1.535 will be entered during the pendency of the
reexamination proceeding. Citations by other parties filed during the
pendency of the reexamination proceeding will not be entered into the
patent file or the reexamination file until the reexamination proceeding
is concluded. The section is further amended to indicate that processing
of prior art citations in patent files during an inter partes
reexamination proceeding filed under    1.913 is controlled by    1.902.

   Section 1.510, which relates to the contents of the reexamination
request, is proposed to be amended to limit the section to ex parte
reexamination proceedings. In addition,    1.510(b)(4) is proposed to be
amended to delete the requirement of mounting the copy of the patent to
be reexamined in single column format. Instead, a copy of the entire
patent including the front face, drawings, and specification/claims (in
double column format) for which reexamination is requested, and a copy
of any disclaimer, certificate of correction, or reexamination
certificate issued in the patent will be required. All copies must have
each page plainly written on only one side of a sheet of paper.

   It is proposed to amend      1.515, 1.520, 1.525, 1.530, 1.535, and
1.540 to recite the reexamination as ``ex parte'' reexamination where
appropriate, to eliminate any potential for confusion. Further,
1.530(d) is proposed to be revised so that it applies to both ex parte
reexamination and inter partes reexamination proceedings.

   Section 1.550, which provides for the conduct of the reexamination
proceeding, is proposed to be amended to limit the section to ex parte
reexamination proceedings filed under    1.510. In addition,    1.550(d)
is proposed to be amended to clarify that the failure to file a written
statement of an interview required under    1.560(b) shall be the basis
for terminating a reexamination proceeding. Proposed    1.550(e)(1)
specifically provides for the revival of terminated ex parte
reexamination proceedings under the unavoidable delay provisions of
1.137(a). The unavoidable delay provisions of 35 U.S.C. 133 are imported
into and are applicable to ex parte reexamination proceedings by 35
U.S.C. 305. Proposed    1.550(e)(2) provides for the revival of
terminated ex parte reexamination proceedings under the unintentional
provisions of    1.137(b). The unintentional delay fee provisions of 35
U.S.C. 41(a)(7) are imported into and are applicable to ex parte and
inter partes reexamination proceedings by section 4605 of S. 1948. Note,
however, the unintentional delay fee provisions of 35 U.S.C. 41(a)(7)
only become effective in reexamination proceedings on November 29, 2000
(one year after enactment of statute).

   Section 1.560, which provides for interviews in reexamination
proceedings, is proposed to be amended to limit the section to ex parte
reexamination proceedings filed under    1.510. Note, however, that
there will be no interviews which address the issues of the proceeding
permitted in inter partes reexamination proceedings under    1.913. See
  1.955.

   In addition,    1.560(b) is proposed to be amended to clarify that the
patent owner must file a written statement of an interview after an
interview is held. The written statement may be filed either as a
separate paper or as a separate part of a response to an outstanding
Office action, whichever is later.

   Section 1.565, which provides for concurrent Office proceedings, is
proposed to be amended to limit the section to ex parte reexamination
proceedings filed under    1.510. In addition,    1.565(e) is proposed
to be amended to change ``examiner-in-chief'' to ``administrative patent
judge'' to reflect their current title. Also, the appropriate references
for concurrent ex parte and inter partes reexamination situations have
been added. Section 1.565(c) is proposed to be amended to make it clear
that after prosecution has been terminated in a pending reexamination
proceeding (e.g., by the issuance of a Notice of Intent to Issue a
Reexamination Certificate) there is no right of merger of any
subsequently filed reexamination request.

   It is proposed to amend    1.570 to recite the reexamination as ``ex
parte'' reexamination where appropriate, to eliminate any potential for
confusion.

   In the current rules, or portions of the rules, that are amended in this
package, ``Commissioner,'' has been revised to read ``Director'' in
accordance with section 4732 of S. 1948. As to the rules, or portion of
the rules, not being revised in this package, it is anticipated that the
technical correction of ``Commissioner'' to ``Director'' will be
effected in a future rule package directed to technical corrections that
will be issued in due course.

   The proposed title to Subpart H provides that the reexamination rules in
this part generally apply to inter partes reexamination proceedings.
Some of the inter partes reexamination rules specifically incorporate ex
parte reexamination rules, e.g.,    1.943 (manner of making amendments)
incorporates    1.530(d)(5), and    1.933 (patent owner duty of
disclosure) incorporates    1.555. Unless specifically stated otherwise,
in this subpart the term ``reply'' shall also mean ``response.''

   Proposed    1.902 provides for the processing of prior art citations
during an inter partes reexamination proceeding and is consistent with
the provisions of    1.501 which deals with prior art citations in
patent files and in ex parte reexamination proceedings.

   Proposed    1.903 provides that the patent owner and the third-party
requester shall be sent copies of all Office actions, and that the
patent owner and the third-party requester must serve copies of all
papers on all other parties in the inter partes reexamination proceeding
or they may be refused consideration by the Office. This is analogous to
the provisions of    1.550(e).

   Proposed    1.904 provides that the notices of filing of inter partes
reexamination requests will be published in the Official Gazette under
 1.11(c) and that such a notice will be considered to be constructive
notice to the patent owner.

   Proposed    1.905 provides that, unless otherwise provided for,
submission of papers by the public other than third-party requesters in
an inter partes reexamination proceeding will not be considered in the
proceeding and will be treated in accordance with the requirements of a
prior art submission under    1.902. Submissions not in accordance with
  1.902 will be returned to the sender.

   Proposed    1.906 covers the scope of reexamination in an inter partes
reexamination proceeding. While it is not intended that the examiners
will routinely complete a new search when conducting an inter partes
reexamination, the examiners may conduct additional searches and cite
and apply additional prior patents and printed publications when they
consider it appropriate and beneficial to do so. Paragraph (a) provides
that the examination is only on the basis of patents or printed
publications and on the basis of the requirements of 35 U.S.C. 112 with
respect to subject matter added or deleted during the inter partes
reexamination. Paragraph (b) provides that claims in a reexamination
proceeding must not enlarge the scope of the claims of the patent and
must not introduce new matter. Paragraph (c) provides that issues
relating to matters other than those indicated in paragraphs (a) and (b)
of this section (e.g., on sale, public use, duty of disclosure, etc.)
will not be resolved in a reexamination proceeding, but will be noted by
the examiner as being an open issue in the record. The examiner should
only raise an issue under    1.906(c) with caution after careful
consideration, and should only raise the issue once. Patent owners could
then file a reissue application if they wish such issues to be resolved.

   Proposed    1.907 sets forth prohibitions on the filing of an inter
partes reexamination request. The basis for this section is 35 U.S.C.
317. Under    1.907(a), once an order for inter partes reexamination has
been issued, neither the third-party requester, nor any of its privies,
may file a subsequent request for an inter partes reexamination of the
patent until an inter partes reexamination certificate is issued, unless
authorized by the Director. Under subsection (b) once a final decision
has been entered against a party in a civil action that the party has
not sustained its burden of proving invalidity of any patent claim in
suit, then that party, and its privies, are thereafter precluded from
requesting an inter partes reexamination of any such patent claim on the
basis of issues which that party, or its privies, raised or could have
raised in such civil action, and an inter partes reexamination requested
by that party, or its privies, on the basis of such issues may not
thereafter be maintained by the Office. Under subsection (c) if a final
decision in an inter partes reexamination proceeding instituted by a
third-party requester is favorable to patentability of any patent claim,
then that party, or its privies, may not thereafter request inter partes
reexamination of any such patent claim on the basis of issues which that
party, or its privies, raised or could have raised in such inter partes
reexamination proceeding.

   Proposed    1.913 provides for any third-party requester (except if the
estoppel provisions of    1.907 apply) to file a request under 35 U.S.C.
311 for an inter partes reexamination of a patent which issued from an
original application filed in the United States on or after November 29,
1999. The time period for filing such a request is limited to the period
of enforceability of the patent for which the request is filed.

   Proposed    1.915(a) requires payment of the fee for requesting an inter
partes reexamination which is set forth in    1.20(c)(2). Paragraph (b)
of    1.915 indicates what each request for inter partes reexamination
must include. The requirements are analogous to the requirements of
1.510(b) for filing an ex parte reexamination request with the most
notable difference being that the third-party requester must be
identified in an inter partes reexamination request. Paragraph (c)
indicates that requests for an inter partes reexamination may be filed
by attorneys or agents on behalf of a third-party requester, but it is
noted that the real party in interest must be identified. Paragraph (d)
provides that if the request for inter partes reexamination does not
meet all the requirements of paragraph (b), the third-party requester
may be given an opportunity to complete the inter partes reexamination
request to avoid having the proceeding vacated.

   Proposed    1.919 indicates that the date on which the entire fee for a
request for inter partes reexamination is received will be considered to
be the filing date of the request for inter partes reexamination.

   Proposed    1.923 provides for a determination by the examiner as to
whether the request has presented a substantial new question of
patentability under 35 U.S.C. 312 and requires that the determination be
made within 3 months of the filing date of the request.

   Proposed    1.925 provides for a refund under    1.26(c) of a portion of
the filing fee if inter partes reexamination is not ordered. See the
discussion of    1.26(c) above as to the amount of the refund.

   Proposed    1.927 provides for review by petition to the Director of a
decision refusing inter partes reexamination.

   Proposed    1.931 provides for ordering inter partes reexamination where
a substantial new question of patentability has been found pursuant to
 1.923. Under paragraph (b), the only limitation placed on the selection
of the examiner by the Office is that the same examiner whose decision
refusing inter partes reexamination was reversed on petition filed under
   1.927 ordinarily will not conduct the inter partes reexamination
ordered in the decision granting the petition.

   Proposed    1.933 covers the duty of disclosure by a patent owner in an
inter partes reexamination proceeding. The rule provides that the duty
in an inter partes reexamination proceeding is the same as the patent
owner's duty in an ex parte reexamination proceeding as set forth in
1.555 (a) and (b), and is satisfied by filing a paper in compliance with
   1.555 (a) and (b).

   Proposed    1.935 indicates that the initial Office action on the merits
usually accompanies the inter partes reexamination order as expressly
provided for as an option in 35 U.S.C. 313. It is contemplated that the
initial paper from the examiner will comprise two parts. The first part
will address the issue as to whether the prior art raises a substantial
new question of patentability (SNQ). If the examiner determines that the
prior art does not raise an SNQ, reexamination is denied. No
patentability question would be addressed by the examiner. If the
examiner determines that the prior art does raise an SNQ, reexamination
will be ordered. In this situation, a second part of the initial Office
action will usually be issued which would address the patentability
issues and will constitute the first Office action on the merits.

   Proposed    1.937 would cover the basic items relating to the conduct of
inter partes reexamination proceedings. Paragraph (a) provides that, in
accordance with 35 U.S.C. 314(c), unless otherwise provided by the
Director for good cause, all inter partes reexamination proceedings will
be conducted with special dispatch. Paragraph (b) provides that all
inter partes reexamination proceedings will be conducted according to
the procedures established for initial examination under
1.104-1.116. These proceedings will basically follow the procedures for
examining patent applications. Paragraph (c) provides that all
communications between the Office and the parties to the inter partes
reexamination 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.

   Proposed    1.939 provides for the return of unauthorized papers filed
by any party in an inter partes reexamination, and that unless otherwise
authorized, no paper shall be filed in an inter partes reexamination
before the initial Office action on the merits.

   Proposed    1.941 provides that amendments made by the patent owner in
an inter partes reexamination must be made in accordance with the
requirements of      1.530(d) and 1.943.

   Proposed    1.943, paragraph (a) provides that the form of responses,
briefs, appendices, and other papers must be in accordance with
1.530(d)(5). Paragraph (b) provides for page limits for responses by the
patent owner and written comments by the third-party requester (other
than briefs). Amendments, appendices of claims, and reference materials
such as prior art references would not be included in this total.
Paragraph (c) provides for page limits or total word limits for briefs.

   Proposed    1.945 provides that a patent owner will be given at least
thirty days to respond to any Office action on the merits. Although
problems may arise in certain cases and extensions of time may be
granted under    1.956, it is felt that relatively short response times
are necessary in order to process reexaminations with ``special
dispatch.'' While the Office intends to set a two-month period for
patent owner to respond to an Office action on the merits in usual
situations, the minimum period will always be at least 30 days.

  Proposed    1.947 provides that each time a patent owner files a
response to any Office action on the merits, the third-party requester
may once file written comments within a period of 30 days from the date
of service of the patent owner's response. Since 35 U.S.C. 314(b)(3)
statutorily imposes this period for third-party requester comments, this
time may not be extended. Thus, any third-party comments, including any
supplemental comments, filed after expiration of 30 days from the date
of service of the patent owner's response shall be considered to be
untimely filed and unauthorized, and shall be returned to the
third-party in accordance with    1.939.

   Proposed    1.948 provides that additional third-party requester prior
art submissions as defined under    1.501 may be filed after the inter
partes reexamination order only if they are submitted as part of a
comments submission under    1.947 (written comments to a patent owner
response to an Office action on the merits) and limited to: (1) Any
prior art which is necessary to rebut a finding of fact by the examiner;
(2) any prior art which is necessary to rebut a response of the patent
owner; or (3) any prior art which became known or available to the
third-party requester after the filing of the inter partes request for
reexamination where a discussion of the pertinency of each reference to
the patentability of at least one claim is included. The purpose of this
rule is twofold. First, the third-party requester may cite any prior art
needed to rebut a position taken by the examiner or the patent owner.
Second, the third-party requester may submit prior art newly discovered
or newly available since the filing of the inter partes reexamination
request provided a discussion of the pertinency of each reference to the
patentability of at least one claim is included. The only limitation is
that the prior art may only be submitted along with written comments
filed by the third-party requester under    1.947 in response to a
patent owner response to an Office action on the merits. Limiting prior
art submissions to newly discovered or newly available prior art (except
when used for rebuttal purposes) will encourage the third-party
requester to submit all known pertinent prior art along with the initial
request for inter partes reexamination. Later submission of previously
known or available prior art would only be permissible to rebut a
position taken by the examiner or the patent owner, or through the
filing of an ex parte reexamination request (which, if ordered, would be
merged with the inter partes reexamination proceeding). Permitting the
third-party requester to timely submit newly discovered or previously
unavailable prior art, however, will obviate the need for the
third-party requester to have to file an ex parte request for
reexamination. To prevent harassment of the patent owner due to frequent
submissions of prior art citations during a reexamination proceeding,
such submissions may only be filed along with written comments filed by
the third-party requester in response to a patent owner response to an
Office action on the merits or after an action closing prosecution.

   Proposed    1.949 provides for the close of prosecution on the second
or subsequent Office action, as opposed to a final rejection or a final
action which would be issued in an ex parte reexamination proceeding.
The distinction between a final action (including a final rejection) and
an action closing prosecution is important as appeal rights to the Board
of Patent Appeals and Interferences under 35 U.S.C. 134 (b) and (c)
mature only with a final action (as opposed to ``twice rejected'' in an
application under 35 U.S.C. 134(a)). The statute permits the patent
owner to appeal finally rejected claims, and the third-party requester
to appeal final decisions favorable to patentability to the Board of
Patent Appeals and Interferences. The rules were drafted to provide for
both the patent owner and the third-party requester to submit comments
on the examiner's patentability findings prior to making such findings
final. The action closing prosecution (in lieu of a final action) is
needed to preclude one party from filing a notice of appeal while
another party is filing comments seeking reconsideration of an
examiner's decision. It is only after the examiner has considered all
the comments submitted by all the parties that a final rejection and
final decision favorable to patentability will be issued by way of the
Right of Appeal Notice under    1.953. At that time, both the patent
owner and the third-party requester may appeal to the Board of Patent
Appeals and Interferences.

   Proposed    1.951 provides the options available to the parties after
an Office action closing prosecution. Both the patent owner and the
third-party requester may once file a response limited to issues raised
in the action closing prosecution. The patent owner may also submit
proposed amendments (subject to the criteria of    1.116 as to whether
or not the amendments shall be admitted). If one party files a response,
the other party may once file written comments on the other's response.
The time periods within which the patent owner and the third-party
requester may act (as provided for by this section) may run
concurrently. In this manner all parties are provided an equal
opportunity to contest the examiner's patentability findings before the
findings are made final and ripe for appeal.

   Proposed    1.953(a) provides that, following the responses or
expiration of the time for response in    1.951, the examiner may issue
a right of appeal notice which shall include a final rejection and/or
final decision favorable to patentability in accordance with 35 U.S.C.
134. The intent of limiting the appeal rights until after the examiner
issues a ``Right of Appeal Notice'' is to specifically preclude the
possibility of one party attempting to appeal prematurely while
prosecution before the examiner is being continued by the other party.

   Proposed    1.953(b) provides that any time after the initial Office
action on the merits in an inter partes reexamination, the patent owner
and all third-party requesters may stipulate that the issues are
appropriate for a final action, which would include a final rejection
and/or a final determination favorable to patentability, and may request
the issuance of a Right of Appeal Notice. If the examiner determines
that no other issues are present or should be raised, a Right of Appeal
Notice limited to the identified issues shall be issued. The request for
an expedited notice will enable the parties to accelerate the inter
partes reexamination proceeding. Proposed    1.953(c) provides that the
Right of Appeal Notice shall be a final action, which would include a
final rejection and/or final decision favorable to patentability, and
that no amendment under    1.116 can be made in response to the Right of
Appeal Notice. The Right of Appeal Notice shall set a one-month time
period for either party to appeal. If no appeal is filed, the
reexamination proceeding will be terminated, and the Director will
proceed to issue a certificate under    1.997 in accordance with the
Right of Appeal Notice.

   Proposed    1.955 provides that interviews between the examiner and the
patent owner and/or the third-party requester which discuss the merits
of the proceeding will not be permitted in inter partes reexamination
proceedings. Thus, no separate ex parte interviews will be permitted,
and no inter partes interviews will be permitted. All communications
between the Office and the patent owner 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. An informal amendment will not be
accepted, as that would amount to an informal ex parte interview. The
Office has reconsidered its initial position taken in the August 11,
1995, Notice of Proposed Rule-making which proposed to permit
owner-initiated interviews in which the patent owner and the third-party
requester participate. Thus, in the present rule package, no interviews
will be held, nor be permitted, in inter partes reexamination cases
which discuss the merits of the proceeding. In other words, neither the
patent owner nor the third-party requester will be able to initiate, nor
participate in, an ex parte nor an inter partes interview which
discusses the merits of the proceeding in an inter partes reexamination
proceeding. The rationale for this is discussed above in Issue 18 of the
consideration of the comments responsive to the August 11, 1995, Notice
of Proposed Rulemaking.

   Proposed    1.956 relates to patent owner extensions of time for
responding to a requirement of the Office in inter partes reexamination
proceedings. As in ex parte reexamination practice, a patent owner may
only obtain an extension of time for sufficient cause, and the request
for such extension must be filed on or before the end of the period for
response. Note that the time for the third-party requester to file
comments to patent owner responses may not be extended, as set forth in
  1.947.

   Proposed    1.957(a) provides that a third-party requester's submission
in inter partes reexamination may be refused consideration if it is
untimely or is inappropriate. Proposed    1.957(b) and (c) relate to the
patent owner's failure to timely or appropriately respond in inter
partes reexamination proceedings. In this event, if no claims are found
patentable, the proceeding shall be terminated and a reexamination
certificate shall be issued. If claims are found patentable, further
prosecution shall be limited to the patentable claims, and any
additional claims that do not expand the scope of the patentable claims.

   Proposed    1.957(d) provides that when the action by the patent owner
is a bona fide attempt to respond and to advance the case, and is
substantially a complete response to the Office action, but
consideration of some matter or compliance with some requirement has
been inadvertently omitted, an opportunity to explain and supply the
omission may be given.

   Proposed    1.958(a) provides for the revival of terminated inter partes
reexamination proceedings under the unavoidable delay provisions of
1.137(a). The unavoidable delay provisions of 35 U.S.C. 133 are imported
into and are applicable to inter partes reexamination proceedings under
35 U.S.C. 314. Proposed    1.958(b) provides for the revival of
terminated inter partes reexamination proceedings under the
unintentional provisions of    1.137(b). The unintentional delay fee
provisions of 35 U.S.C. 41(a)(7) are imported into and are applicable to
inter partes reexamination proceedings under section 4605 of S. 1948.
Note, however, the unintentional delay fee provisions of 35 U.S.C.
41(a)(7) only become effective in reexamination proceedings on November
29, 2000 (one year after enactment of statute).

   Proposed    1.959 relates to appeals and cross appeals to the Board of
Patent Appeals and Interferences in inter partes reexamination
proceedings. Both patent owners and third-party requesters are given
appeal rights in accordance with 35 U.S.C. 315.

   Proposed    1.961 relates to time of transfer of the jurisdiction of the
appeal over to the Board of Patent Appeals and Interferences in inter
partes reexamination proceedings.

   Proposed    1.962 relates to the definition of appellant and respondent
in inter partes reexamination proceedings.

   Proposed    1.963 relates to the time periods for filing briefs in inter
partes reexamination proceedings.

   Proposed    1.965 relates to the requirements of the appellant brief in
inter partes reexamination proceedings.

   Proposed    1.967 relates to the requirements of the respondent brief in
inter partes reexamination proceedings.

   Proposed    1.969 relates to the examiner's answer. An examiner's answer
may not include a new ground of rejection nor a new decision favorable
to patentability. In either case (if there is to be a new ground of
rejection or a new decision favorable to patentability), prosecution
should be reopened.

   Proposed    1.971 gives any appellant one opportunity to file a rebuttal
brief following the examiner's answer. The rebuttal brief filed by an
appellant who is the patent owner is limited to the issues raised in the
examiner's answer and/or in any respondent brief. The rebuttal brief
filed by an appellant who is a third-party requester is limited to the
issues raised in the examiner's answer and/or in the patent owner's
respondent brief. The rebuttal brief of a third-party requester may not
be directed to the respondent brief of any other third-party requester.
No new ground of rejection can be proposed by a third-party requester
appellant.

   Proposed    1.973 relates to the oral hearing in inter partes
reexamination proceedings.

   Proposed    1.975 relates to affidavits or declarations after appeal in
inter partes reexamination proceedings.

   Proposed    1.977 relates to the decision by the Board of Patent Appeals
and Interferences in inter partes reexamination proceedings. A reversal
of an examiner's decision favorable to patentability (i.e., a decision
not to make a rejection proposed by the third-party requester)
constitutes a decision adverse to patentability which will be set forth
as a new ground of rejection under    1.977(b).

   Proposed    1.979 relates to the procedure following the decision or
dismissal by the Board of Patent Appeals and Interferences in inter
partes reexamination proceedings.

   Proposed    1.981 relates to the procedure for the reopening of
prosecution following the decision by the Board of Patent Appeals and
Interferences in inter partes reexamination proceedings.

   Proposed    1.983 relates to the patent owner's right to appeal to the
United States Court of Appeals for the Federal Circuit in inter partes
reexamination proceedings. Under section 141, the patent owner in inter
partes reexamination proceedings may appeal the decision of the Board of
Patent Appeals and Interferences only to the United States Court of
Appeals for the Federal Circuit. Under section 134(c), the third-party
requester in inter partes reexamination proceedings may not appeal the
decision of the Board of Patent Appeals and Interferences.

   Proposed    1.985 relates to notification of prior or concurrent
proceedings in inter partes reexamination proceedings. Paragraph (a)
requires the patent owner to notify the Office of any prior or
concurrent proceeding involving the patent under inter partes
reexamination. Paragraph (b) permits any member of the public to notify
the Office of any prior or concurrent proceeding involving the patent
under inter partes reexamination. Such notice, however, must be limited
to merely providing notice without discussion of the issues in the inter
partes reexamination. Any notice that includes a discussion of the
issues will be returned to the sender.

   Proposed    1.987 provides that when a patent involved in an inter
partes reexamination is concurrently involved in litigation, the
Director shall determine whether or not to suspend the inter partes
reexamination proceeding.

   Proposed    1.989 relates to the merger of concurrent reexamination
proceedings.

   Proposed    1.991 relates to the merger of a concurrent reissue
application and an inter partes reexamination proceeding.

   Proposed    1.993 relates to the suspension of a concurrent interference
or an inter partes reexamination proceeding.

   Proposed    1.995 relates to the third-party requester's participation
rights being preserved in a merged proceeding.

   Proposed    1.997 provides for the issuance of the reexamination
certificate under 35 U.S.C. 316 after conclusion of an inter partes
reexamination proceeding. The certificate will cancel any patent claims
determined to be unpatentable, confirm any patent claims determined to
be patentable, and incorporate into the patent any amended or new claims
determined to be patentable. Once all of the claims have been canceled
from the patent, the patent ceases to be enforceable for any purpose.
Accordingly, any pending reissue proceeding or other Office proceeding
relating to a patent for which a certificate that cancelled all of the
patent claims has been issued will be terminated. This provides a degree
of assurance to the public that patents with all the claims canceled via
inter partes reexamination proceedings will not again be asserted.

Classification

Regulatory Flexibility Act

   The Chief Counsel for Regulation of the Department of Commerce
certified to the Chief Counsel for Advocacy, Small Business
Administration, that the changes proposed in this notice, if adopted,
would not have a significant impact on a substantial number of small
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). This rulemaking
implements the provisions of Title IV, subtitle F (sections 4601 through
4608) of the ``American Inventors Protection Act of 1999,'' which
permits a third-party requester to participate more extensively during
the reexamination proceeding as well as giving them appeal rights. The
changes proposed in this notice (if adopted) would provide procedures
for a third-party to request optional inter partes reexamination of a
patent. The new inter partes proceedings are similar to the ex parte
proceedings, although they are more complicated procedurally to
accommodate the presence of the third-party.

   Taking into account the overall similarities and additional complexity,
it is reasonable to assume that a similar proportion of small entities
will request inter partes reexamination as have requested ex parte
reexamination. Furthermore, it is anticipated that inter partes
reexamination requests will be filed by third-party requesters, while
patent owners will continue to file ex parte reexamination requests.
Approximately 400 ex parte reexamination filings have been received each
year since 1992, of which 55% or 220 have been filed by third-party
requesters. Since the beginning of the reexamination procedure, about
22.5% of the ex parte reexamination requesters have been small entities.
If all 220 of the third-party filed reexamination requests were filed as
requests for inter partes reexaminations, approximately 50 requests
(22.5%) would come from small entities. The higher cost of the inter
partes reexamination fee ($8,800) compared to the ex parte reexamination
fee ($2,520) reflects the greatly expanded participation available to
the third-party requester. In the inter partes proceeding, the third
party requester has the right to comment on every response by the patent
owner to the PTO, to be a party to any appeal by the patent owner to the
Board of Patent Appeals and Interferences, and to appeal any
determination of patentability to the Board. In the ex parte proceeding,
the third-party requester's role is limited to the request for
reexamination and a single reply to the patent owner's response. The
third party requester also has no appeal rights in an ex parte
reexamination. Therefore, the number of small businesses affected by
these proposed optional inter parte reexamination rules is not
significant, and the impact on each business, considering the benefits
of greater participation throughout the inter partes proceeding, is not
significant.

Executive Order 13132

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

Paperwork Reduction Act

   This notice of proposed rulemaking 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 notice of
proposed rulemaking has been reviewed and previously approved by OMB
under OMB control number 0651-0033.

   As required by the Paperwork Reduction Act of 1995 (44 U.S.C. 3507(d)),
the Patent and Trademark Office has submitted an information collection
package to OMB for its review and approval of the proposed information
collections under OMB control number 0651-0033. The Patent and Trademark
Office is submitting this information collection to OMB for its review
and approval because this notice of proposed rulemaking will add the
request for optional inter partes reexamination of a patent to that
collection.

   The title, description and respondent description of the information
collection is shown below with an estimate of the annual reporting
burdens. Included in this estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information. The principal impact of the
changes in this notice of proposed rulemaking is to implement the
changes to Office practice necessitated by Title IV, subtitle F
(sections 4601 through 4608) of the ``American Inventors Protection Act
of 1999'' (enacted into law by    1000(a)(9), Division B, of Pub. L.
106-113).

   OMB Number: 0651-0033.
   Title: Post Allowance and Refiling.
   Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
   Type of Review: Approved through September of 2000.
   Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-for-Profit Institutions and Federal
Government.
   Estimated Number of Respondents: 172,475.
   Estimated Time Per Response: 0.3 hour.
   Estimated Total Annual Burden Hours: 51,593.5 hours.
   Needs and Uses: This collection of information is required to
administer the patent laws pursuant to title 35, U.S.C., concerning the
issuance of patents and related actions including correcting errors in
printed patents, refiling of patent applications, requesting
reexamination of a patent, and requesting a reissue patent to correct an
error in a patent. The affected public includes any individual or
institution whose application for a patent has been allowed or who takes
action as covered by the applicable rules.

   Comments are invited on: (1) Whether the collection of information is
necessary for proper performance of the functions of the agency; (2) the
accuracy of the agency's estimate of the burden; (3) ways to enhance the
quality, utility, and clarity of the information to be collected; and
(4) ways to minimize the burden of the collection of information to
respondents.

   Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this burden,
to Robert J. Spar, Director, Patent Examination Policy Law Office,
Patent and Trademark Office, Washington, D.C. 20231, or to the Office of
Information and Regulatory Affairs of OMB, New Executive Office
Building, 725 17th St. NW, Room 10235, Washington, DC 20503, Attention:
Desk Officer for the Patent and Trademark Office.

   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 record keeping
requirements, Small Businesses.

   For the reasons set out in the preamble and under the authority given to
the Director of Patents and Trademarks by 35 U.S.C. 6, Part 1 of Title
37 CFR is amended as set forth below.

PART 1--RULES OF PRACTICE IN PATENT CASES

   1. The authority citation for 37 CFR Part 1 would continue to read as
follows:

   Authority: 35 U.S.C. 6, unless otherwise noted.

   2. Section 1.4(a)(2) is proposed to be revised to read as follows:

   1.4 Nature of correspondence and signature requirements.

   (a) * * *

   (2) Correspondence in and relating to a particular application or other
proceeding in the Office. See particularly the rules relating to the
filing, processing, or other proceedings of national applications in
Subpart B,      1.31 to 1.378; of international applications in Subpart
C,      1.401 to 1.499; of ex parte reexaminations of patents in Subpart
D,      1.501 to 1.570; of interferences in Subpart E,      1.601 to
1.690; of extension of patent term in Subpart F,      1.710 to 1.785; of
inter partes reexaminations of patents in Subpart H,      1.902 to
1.997; and of trademark applications      2.11 to 2.189.

* * * * *

   3. Section 1.6(d)(5) is proposed to be revised to read as follows:

   1.6 Receipt of Correspondence.

* * * * *

   (d) * * *

   (5) A request for reexamination under    1.510 or    1.913.

   4. Sections 1.17(l) and (m) are proposed to be revised to read as
follows:

   1.17 Patent application and reexamination processing fees.

* * * * *

   (l) For filing a petition for the revival of an unavoidably abandoned
application under 35 U.S.C. 111, 133, 364, or 371, for the delayed
payment of the issue fee under 35 U.S.C. 151, or for the revival of an
unavoidably terminated reexamination proceeding under 35 U.S.C. 133 (
1.137(a)):

By a small entity (   1.9(f))                                     $55.00
By other than a small entity                                      110.00

   (m) For filing a petition for revival of an unintentionally abandoned
application, for the unintentionally delayed payment of the fee for
issuing a patent, or for the revival of an unintentionally terminated
reexamination proceeding under 35 U.S.C. 41(a)(7) (   1.137(b)):

By a small entity (   1.9(f))                                    $605.00
By other than a small entity                                    1,210.00

* * * * *

   5. Section 1.20(c) is proposed to be revised to read as follows:

   1.20 Post-issuance and reexamination fees.

* * * * *

   (c) In reexamination proceedings

(1) For filing a request for ex parte reexamination (   1.510(a))
                                                               $2,520.00
(2) For filing a request for inter partes reexamination (   1.915(a))
                                                                8,800.00

* * * * *

   6. Section 1.25(b) is proposed to be revised to read as follows:

   1.25 Deposit accounts.

* * * * *

   (b) Filing, issue, appeal, international-type search report,
international application processing, petition, and post-issuance fees
may be charged against these accounts if sufficient funds are on deposit
to cover such fees. A general authorization to charge all fees, or only
certain fees, set forth in      1.16 to 1.18 to a deposit account
containing sufficient funds may be filed in an individual application,
either for the entire pendency of the application or with respect to a
particular paper filed. An authorization to charge to a deposit account
the fee for a request for reexamination pursuant to    1.510 or    1.913
and any other fees required in a reexamination proceeding of a patent
may also be filed. An authorization to charge a fee to a deposit account
will not be considered payment of the fee on the date the authorization
to charge the fee is effective as to the particular fee to be charged
unless sufficient funds are present in the account to cover the fee.

   7. Section 1.26(c) is proposed to be revised to read as follows:

   1.26 Refunds.

* * * * *

   (c) If the Director decides not to institute a reexamination proceeding,
for ex parte reexaminations filed under    1.510 a refund of $1,690.00
will be made to the reexamination requester. For inter partes
reexaminations filed under    1.913, a refund of $7,970 will be made to
the reexamination requester. Reexamination requester should indicate the
form in which any refund should be made (e.g., by check, electronic
funds transfer, credit to a deposit account, etc.). Generally,
reexamination refunds will be issued in the form that the original
payment was provided.

   8. Section 1.112 is proposed to be revised to read as follows:

   1.112 Reconsideration before final action.

   After reply by applicant or patent owner (   1.111) to a non-final
action, the application or the patent under reexamination will be
reconsidered and again examined. The applicant, or in the case of a
reexamination proceeding the patent owner and any third-party requester,
will be notified if claims are rejected, objections or requirements
made, or decisions favorable to patentability are made, in the same
manner as after the first examination. Applicant or patent owner may
reply to such Office action in the same manner provided in    1.111,
with or without amendment, unless such Office action indicates that it
is made final (     1.113), or in an inter partes reexamination, that it
is an action closing prosecution (   1.949) or a right of appeal notice
(   1.953).

   9. Section 1.113(a) is proposed to be revised to read as follows:

   1.113 Final rejection or action.

   (a) On the second or any subsequent examination or consideration by
the examiner the rejection or other action may be made final, whereupon
applicant's, or for ex parte reexaminations filed under    1.510 patent
owner's, reply is limited to appeal in the case of rejection of any
claim (   1.191), or to amendment as specified in    1.116. Petition may
be taken to the Director in the case of objections or requirements not
involved in the rejection of any claim (   1.181). Reply to a final
rejection or action must include cancellation of, or appeal from the
rejection of, each rejected claim. If any claim stands allowed, the
reply to a final rejection or action must comply with any requirements
or objections as to form. For final actions in an inter partes
reexamination filed under    1.913, see    1.953.

* * * * *

   10. Sections 1.116(a) and (c) are proposed to be revised to read as
follows:

   1.116 Amendments after final action, action closing prosecution,
right of appeal notice, or appeal.

   (a) After a final rejection or other final action (   1.113) in an
application or in an ex parte reexamination filed under    1.510, or an
action closing prosecution (   1.949) in an inter partes reexamination
filed under    1.913, amendments may be made canceling claims or
complying with any requirement of form expressly set forth in a previous
Office action. Amendments presenting rejected claims in better form for
consideration on appeal may be admitted. The admission of, or refusal to
admit, any amendment after a final rejection, a final action, an action
closing prosecution or any related proceedings, will not operate to
relieve the application or patent under reexamination from its condition
as subject to appeal or to save the application from abandonment under
 1.135, or the reexamination from termination. No amendment can be made
in an inter partes reexamination proceeding after the right of appeal
notice under    1.953 except as provided for in paragraph (c) of this
section.

* * * * *

   (c) No amendment can be made as a matter of right in appealed cases.
After decision on appeal, amendments can only be made as provided in
 1.198 and 1.981, or to carry into effect a recommendation under
1.196 or 1.977.

   11. Section 1.121(c) is proposed to be revised to read as follows:

   1.121 Manner of making amendments.

* * * * *

   (c) Amendments in reexamination proceedings. Any proposed amendment
to the description and claims in patents involved in reexamination
proceedings in both ex parte reexaminations filed under    1.510 and
inter partes reexaminations filed under    1.913 must be made in
accordance with    1.530(d).

   12. Section 1.136(a) (2) and (b) are proposed to be revised to read as
follows:

   1.136 Extensions of time.

   (a) * * *

   (2) The date on which the petition and the fee have been filed is the
date for purposes of determining the period of extension and the
corresponding amount of the fee. The expiration of the time period is
determined by the amount of the fee paid. A reply must be filed prior to
the expiration of the period of extension to avoid abandonment of the
application (   1.135), but in no situation may an applicant reply later
than the maximum time period set by statute, or be granted an extension
of time under paragraph (b) of this section when the provisions of this
paragraph are available. See    1.136(b) for extensions of time relating
to proceedings pursuant to      1.193(b), 1.194, 1.196 or 1.197;
1.304 for extensions of time to appeal to the U.S. Court of Appeals for
the Federal Circuit or to commence a civil action;    1.550(c) for
extensions of time in ex parte reexamination proceedings,    1.956 for
extensions of time in inter partes reexamination proceedings; and
1.645 for extensions of time in interference proceedings.

* * * * *

   (b) When a reply cannot be filed within the time period set for such
reply and the provisions of paragraph (a) of this section are not
available, the period for reply will be extended only for sufficient
cause and for a reasonable time specified. Any request for an extension
of time under this paragraph must be filed on or before the day on which
such reply is due, but the mere filing of such a request will not effect
any extension under this paragraph. In no situation can any extension
carry the date on which reply is due beyond the maximum time period set
by statute. See    1.304 for extensions of time to appeal to the U.S.
Court of Appeals for the Federal Circuit or to commence a civil action;
  1.645 for extensions of time in interference proceedings;    1.550(c)
for extensions of time in ex parte reexamination proceedings; and
1.956 for extensions of time in inter partes reexamination proceedings.

   13. Section 1.137 is proposed to be amended by revising its heading, the
introductory text of paragraph (a), the introductory text of paragraph
(b), and paragraph (d) to read as follows:

   1.137 Revival of abandoned application, lapsed patent, or terminated
reexamination proceeding.

   (a) Unavoidable. Where the delay in reply was unavoidable, a petition
may be filed to revive an abandoned application, a reexamination
proceeding terminated under      1.550(d) and 1.957(b) and (c), or a
lapsed patent pursuant to this paragraph. A grantable petition pursuant
to this paragraph must be accompanied by:

* * * * *

   (b) Unintentional. Where the delay in reply was unintentional, a
petition may be filed to revive an abandoned application, a
reexamination proceeding terminated under      1.550(d) and 1.957(b) and
(c), or a lapsed patent pursuant to this paragraph. A grantable petition
pursuant to this paragraph must be accompanied by:

* * * * *

   (d) Any request for reconsideration or review of a decision refusing
to revive an abandoned application, a terminated reexamination
proceeding, or lapsed patent upon petition filed pursuant to this
section, to be considered timely, must be filed within two months of the
decision refusing to revive or within such time as set in the decision.
Unless a decision indicates otherwise, this time period may be extended
under the provisions of    1.136 for an abandoned application or lapsed
patent; under the provisions of    1.550(c) for a terminated ex parte
reexamination proceeding filed under    1.510; and under the provisions
of    1.956 for a terminated inter partes reexamination proceeding filed
under    1.913.

* * * * *

   14. Sections 1.181(a) and (c) are proposed to be revised to read as
follows:

   1.181 Petition to the Director.

   (a) Petition may be taken to the Director:

   (1) From any action or requirement of any examiner in the ex parte
prosecution of an application, or in the ex parte or inter partes
prosecution of a reexamination proceeding which is not subject to appeal
to the Board of Patent Appeals and Interferences or to the court;

   (2) In cases in which a statute or the rules specify that the matter is
to be determined directly by or reviewed by the Director; and

   (3) To invoke the supervisory authority of the Director in appropriate
circumstances.

   (4) For petitions in interferences, see    1.644.

* * * * *

   (c) When a petition is taken from an action or requirement of an
examiner in the ex parte prosecution of an application, or in the ex
parte or inter partes prosecution of a reexamination proceeding, it may
be required that there have been a proper request for reconsideration (
 1.111) and a repeated action by the examiner. The examiner may be
directed by the Director to furnish a written statement, within a
specified time, setting forth the reasons for his or her decision upon
the matters averred in the petition, supplying a copy thereof to the
petitioner.

* * * * *

   15. Section 1.191(a) is proposed to be revised to read as follows:

   1.191 Appeal to Board of Patent Appeals and Interferences.

   (a) Every applicant for a patent or for reissue of a patent, and
every owner of a patent under ex parte reexamination filed under
1.510 for a patent that issued from an original application filed in the
United States before November 29, 1999, any of whose claims has been
twice or finally (   1.113) rejected, may appeal from the decision of
the examiner to the Board of Patent Appeals and Interferences by filing
a notice of appeal and the fee set forth in    1.17(b) within the time
period provided under      1.134 and 1.136 for reply. Notwithstanding
the above, for an ex parte reexamination proceeding filed under    1.510
for a patent that issued from an original application filed in the
United States on or after November 29, 1999, no appeal may be filed
until the claims have been finally rejected (   1.113). Appeals to the
Board of Patent Appeals and Interferences in inter partes reexamination
proceedings filed under    1.913 are controlled by      1.959 through
1.981. Sections 1.191 through 1.198 are not applicable to appeals in
inter partes reexamination proceedings filed under    1.913.

   16. Section 1.301 is proposed to be revised to read as follows:

   1.301 Appeal to U.S. Court of Appeals for the Federal Circuit.

   Any applicant or any owner of a patent involved in any ex parte
reexamination proceeding filed under    1.510, dissatisfied with the
decision of the Board of Patent Appeals and Interferences, and any party
to an interference dissatisfied with the decision of the Board of Patent
Appeals and Interferences, may appeal to the U.S. Court of Appeals for
the Federal Circuit. The appellant must take the following steps in such
an appeal: In the U.S. Patent and Trademark Office, file a written
notice of appeal directed to the Director (see      1.302 and 1.304);
and in the Court, file a copy of the notice of appeal and pay the fee
for appeal as provided by the rules of the Court. For inter partes
reexamination proceedings filed under    1.913,    1.983 is controlling.

   17. Section 1.303 is proposed to be amended by revising paragraphs (a)
and (b) and by adding a new paragraph (d) to read as follows:

   1.303 Civil action under 35 U.S.C. 145, 146, 306.

   (a) Any applicant or any owner of a patent involved in an ex parte
reexamination proceeding filed under    1.510 for a patent that issues
from an original application filed in the United States before November
29, 1999, dissatisfied with the decision of the Board of Patent Appeals
and Interferences, and any party to an interference dissatisfied with
the decision of the Board of Patent Appeals and Interferences may,
instead of appealing to the U.S. Court of Appeals for the Federal
Circuit (   1.301), have remedy by civil action under 35 U.S.C. 145 or
146, as appropriate. Such civil action must be commenced within the time
specified in    1.304.

   (b) If an applicant in an ex parte case or an owner of a patent involved
in an ex parte reexamination proceeding filed under    1.510 for a
patent that issues from an original application filed in the United
States before November 29, 1999, has taken an appeal to the U.S. Court
of Appeals for the Federal Circuit, he or she thereby waives his or her
right to proceed under 35 U.S.C. 145.

* * * * *

   (d) For an ex parte reexamination proceeding filed under    1.510 for
a patent that issues from an original application filed in the United
States on or after November 29, 1999, and for an inter partes
reexamination proceeding filed under    1.913, no remedy by civil action
under 35 U.S.C. 145 is available.

   18. Sections 1.304(a)(1) and (a)(2) are proposed to be revised to read
as follows:

   1.304 Time for appeal or civil action.

   (a)(1) The time for filing the notice of appeal to the U.S. Court of
Appeals for the Federal Circuit (   1.302) or for commencing a civil
action (   1.303) is two months from the date of the decision of the
Board of Patent Appeals and Interferences. If a request for rehearing or
reconsideration of the decision is filed within the time period provided
under    1.197(b),    1.658(b), or    1.979(a), the time for filing an
appeal or commencing a civil action shall expire two months after action
on the request. In interferences the time for filing a cross-appeal or
cross-action expires:

   (i) 14 days after service of the notice of appeal or the summons and
complaint; or

   (ii) Two months after the date of decision of the Board of Patent
Appeals and Interferences, whichever is later.

   (2) The time periods set forth in this section are not subject to the
provisions of      1.136, 1.550(c), 1.956, or    1.645 (a) or (b).

* * * * *

   19. The heading for Subpart D is proposed to be revised to read as
follows:

Subpart D--Ex Parte Reexamination of Patents

* * * * *

   20. Section 1.501 is proposed to be amended by revising its heading
and paragraph (a) to read as follows:

   1.501 Citation of prior art in patent and ex parte reexamination
files.

   (a) At any time during the period of enforceability of a patent, any
person may cite to the Office in writing prior art consisting of patents
or printed publications which that person states to be pertinent and
applicable to the patent and believes to have a bearing on the
patentability of any claim of the patent. If the citation is made by the
patent owner, the explanation of pertinency and applicability may
include an explanation of how the claims differ from the prior art. Such
citations shall be entered in the patent file except as set forth in
this section. Citations by the patent owner under    1.555 and by an ex
parte reexamination requester under either    1.510 or    1.535 will be
entered in the reexamination file during a reexamination proceeding. The
entry in the patent file of citations submitted after the date of an
order to reexamine pursuant to    1.525 by persons other than the patent
owner, or an ex parte reexamination requester under either    1.510 or
 1.535, will be delayed until the reexamination proceeding has been
terminated. See    1.902 for processing of prior art citations in patent
files and the reexamination file during an inter partes reexamination
proceeding filed under    1.913.

* * * * *

   21. The undesignated center heading following    1.501 is proposed to
be revised to read as follows:

Request for Ex Parte Reexamination

   22. Section 1.510 is proposed to be amended by revising its heading
and the text of paragraphs (a) and (b)(4) to read as follows:

   1.510 Request for ex parte reexamination.

   (a) Any person may, at any time during the period of enforceability
of a patent, file a request for an ex parte reexamination by the Office
of any claim of the patent on the basis of prior art patents or printed
publications cited under    1.501. The request must be accompanied by
the fee for requesting reexamination set in    1.20(c)(1).

   (b) Any request for ex parte reexamination must include the following
parts:

* * * * *

   (4) A copy of the entire patent including the front face, drawings,
and specification/claims (in double column format) for which
reexamination is requested, and a copy of any disclaimer, certificate of
correction, or reexamination certificate issued in the patent. All
copies must have each page plainly written on only one side of a sheet
of paper.

* * * * *

   23. Section 1.515 is proposed to be revised to read as follows:

   1.515 Determination of the request for ex parte reexamination.

   (a) Within three months following the filing date of a request for an
ex parte reexamination, an examiner will consider the request and
determine whether or not a substantial new question of patentability
affecting any claim of the patent is raised by the request and the prior
art cited therein, with or without consideration of other patents or
printed publications. The examiner's determination will be based on the
claims in effect at the time of the determination and will become a part
of the official file of the patent and will be mailed to the patent
owner at the address as provided for in    1.33(c) and to the person
requesting reexamination.

   (b) Where no substantial new question of patentability has been found, a
refund of a portion of the fee for requesting ex parte reexamination
will be made to the requester in accordance with    1.26(c).

   (c) The requester may seek review by a petition to the Director under
1.181 within one month of the mailing date of the examiner's
determination refusing ex parte reexamination. Any such petition must
comply with    1.181(b). If no petition is timely filed or if the
decision on petition affirms that no substantial new question of
patentability has been raised, the determination shall be final and
nonappealable.

   24. Section 1.520 is proposed to be revised to read as follows:

   1.520 Ex parte reexamination at the initiative of the Director.

   The Director, at any time during the period of enforceability of a
patent, may determine whether or not a substantial new question of
patentability is raised by patents or printed publications which have
been discovered by the Director or which have been brought to the
Director's attention even though no request for reexamination has been
filed in accordance with    1.510 or    1.913. The Director may initiate
ex parte reexamination without a request for reexamination pursuant to
 1.510 or    1.913. Normally requests from outside the Office that the
Director undertake reexamination on his own initiative will not be
considered. Any determination to initiate ex parte reexamination under
this section will become a part of the official file of the patent and
will be mailed to the patent owner at the address as provided for in
1.33(c).

   25. The undesignated center heading following    1.520 is proposed to be
revised to read as follows:

Ex Parte Reexamination

   26. Section 1.525 is proposed to be revised to read as follows:

   1.525 Order for ex parte reexamination.

   (a) If a substantial new question of patentability is found pursuant
to    1.515 or    1.520, the determination will include an order for ex
parte reexamination of the patent for resolution of the question. If the
order for ex parte reexamination resulted from a petition pursuant to
1.515(c), the ex parte reexamination will ordinarily be conducted by an
examiner other than the examiner responsible for the initial
determination under    1.515(a).

   (b) The notice published in the Official Gazette under    1.11(c) will
be considered to be constructive notice and ex parte reexamination will
proceed.

   27. Section 1.530 is proposed to be amended by revising its heading and
paragraphs (a), (b), (c) and (d), introductory text, to read as follows:

   1.530 Statement by patent owner in ex parte reexamination; amendment
by patent owner in ex parte reexamination or inter partes reexamination.

   (a) Except as provided in    1.510(e), no statement or other response
by the patent owner in an ex parte reexamination proceeding shall be
filed prior to the determinations made in accordance with    1.515 or
1.520. If a premature statement or other response is filed by the patent
owner it will not be acknowledged or considered in making the
determination.

   (b) The order for ex parte reexamination will set a period of not less
than two months from the date of the order within which the patent owner
may file a statement on the new question of patentability including any
proposed amendments the patent owner wishes to make.

   (c) Any statement filed by the patent owner shall clearly point out why
the subject matter as claimed is not anticipated or rendered obvious by
the prior art patents or printed publications, either alone or in any
reasonable combinations. Where the reexamination request was filed by a
third-party requester, any statement filed by the patent owner must be
served upon the ex parte reexamination requester in accordance with
1.248.

   (d) Amendments in reexamination proceedings. Amendments in both ex parte
and inter partes reexamination proceedings are made by filing a paper,
in compliance with paragraph (d)(5) of this section, directing that
specified amendments be made.

* * * * *

   28. Section 1.535 is proposed to be revised to read as follows:

   1.535 Reply by third-party requester in ex parte reexamination.

   A reply to the patent owner's statement under    1.530 may be filed
by the ex parte reexamination requester within two months from the date
of service of the patent owner's statement. Any reply by the ex parte
requester must be served upon the patent owner in accordance with
1.248. If the patent owner does not file a statement under    1.530, no
reply or other submission from the ex parte reexamination requester will
be considered.

   29. Section 1.540 is proposed to be revised to read as follows:

   1.540 Consideration of responses in ex parte reexamination.

   The failure to timely file or serve the documents set forth in
1.530 or in    1.535 may result in their being refused consideration. No
submissions other than the statement pursuant to    1.530 and the reply
by the ex parte reexamination requester pursuant to    1.535 will be
considered prior to examination.

   30. Section 1.550 is proposed to be revised to read as follows:

   1.550 Conduct of ex parte reexamination proceedings.

   (a) All ex parte reexamination proceedings, including any appeals to
the Board of Patent Appeals and Interferences, will be conducted with
special dispatch within the Office. After issuance of the ex parte
reexamination order and expiration of the time for submitting any
responses thereto, the examination will be conducted in accordance with
    1.104 through 1.116, and will result in the issuance of an ex parte
reexamination certificate under    1.570.

   (b) The patent owner in an ex parte reexamination proceeding will be
given at least thirty days to respond to any Office action. Such
response may include further statements in response to any rejections or
proposed amendments or new claims to place the patent in a condition
where all claims, if amended as proposed, would be patentable.

   (c) The time for taking any action by a patent owner in an ex parte
reexamination proceeding will be extended only for sufficient cause and
for a reasonable time specified. Any request for such extension must be
filed on or before the day on which action by the patent owner is due,
but in no case will the mere filing of a request affect any extension.
See    1.304(a) for extensions of time for filing a notice of appeal to
the U.S. Court of Appeals for the Federal Circuit or for commencing a
civil action.

   (d) If the patent owner fails to file a timely and appropriate response
to any Office action or any written statement of an interview required
under    1.560(b), the ex parte reexamination proceeding will be
terminated and the Director will proceed to issue a certificate under
1.570 in accordance with the last action of the Office.

   (e) If a response by the patent owner is not timely filed in the Office,

   (1) The delay in filing such response may be excused if it is shown to
the satisfaction of the Director that the delay was unavoidable; a
petition to accept an unavoidably delayed response must be filed in
compliance with    1.137(a); or

   (2) The response may nevertheless be accepted if the delay was
unintentional; a petition to accept an unintentionally delayed response
must be filed in compliance with    1.137(b).

   (f) The reexamination requester will be sent copies of Office actions
issued during the ex parte reexamination proceeding. After filing of a
request for ex parte reexamination by a third-party requester, any
document filed by either the patent owner or the third-party requester
must be served on the other party in the reexamination proceeding in the
manner provided by    1.248. The document must reflect service or the
document may be refused consideration by the Office.

   (g) The active participation of the ex parte reexamination requester
ends with the reply pursuant to    1.535, and no further submissions on
behalf of the reexamination requester will be acknowledged or
considered. Further, no submissions on behalf of any third parties will
be acknowledged or considered unless such submissions are:

   (1) In accordance with      1.510 or 1.535; or

   (2) Entered in the patent file prior to the date of the order for ex
parte reexamination pursuant to    1.525.

   (h) Submissions by third parties, filed after the date of the order for
ex parte reexamination pursuant to    1.525, must meet the requirements
of and will be treated in accordance with    1.501(a).

   31. Section 1.552 is proposed to be revised to read as follows:

   1.552 Scope of reexamination in ex parte reexamination proceedings.

   (a) Claims in an ex parte reexamination proceeding will be examined
on the basis of patents or printed publications and, with respect to
subject matter added or deleted in the reexamination proceeding, on the
basis of the requirements of 35 U.S.C. 112.

   (b) Claims in an ex parte reexamination proceeding will not be permitted
to enlarge the scope of the claims of the patent.

   (c) Issues other than those indicated in paragraphs (a) and (b) of this
section will not be resolved in a reexamination proceeding. If such
issues are raised by the patent owner or third-party requester during a
reexamination proceeding, the existence of such issues will be noted by
the examiner in the next Office action, in which case the patent owner
may desire to consider the advisability of filing a reissue application
to have such issues considered and resolved.

   32. Section 1.555 is proposed to be amended by revising its heading to
read as follows:

   1.555 Information material to patentability in ex parte reexamination
and inter partes reexamination proceedings.

* * * * *

   33. Section 1.560 is proposed to be revised to read as follows:

   1.560 Interviews in ex parte reexamination proceedings.

   (a) Interviews in ex parte reexamination proceedings pending before
the Office between examiners and the owners of such patents or their
attorneys or agents of record must be conducted in the Office at such
times, within Office hours, as the respective examiners may designate.
Interviews will not be permitted at any other time or place without the
authority of the Director. Interviews for the discussion of the
patentability of claims in patents involved in ex parte reexamination
proceedings will not be conducted prior to the first official action
thereon. Interviews should be arranged for in advance. Requests that
reexamination requesters participate in interviews with examiners will
not be granted.

   (b) In every instance of an interview with an examiner in an ex parte
reexamination proceeding, a complete written statement of the reasons
presented at the interview as warranting favorable action must be filed
by the patent owner. An interview does not remove the necessity for
response to Office actions as specified in    1.111. Patent owner's
response to an outstanding Office action after the interview does not
remove the necessity for filing the written statement. The written
statement must be filed as a separate part of a response to an Office
action outstanding at the time of the interview, or as a separate paper
within one month from the date of the interview, whichever is later.

   34. Section 1.565 is proposed to be revised to read as follows:

   1.565 Concurrent office proceedings which include an ex parte
reexamination proceeding.

   (a) In an ex parte reexamination proceeding before the Office, the
patent owner shall call the attention of the Office to any prior or
concurrent proceedings in which the patent is or was involved such as an
interference, reissue, ex parte reexamination, inter partes
reexamination, or litigation and the results of such proceedings. See
1.985 for notification of prior or concurrent proceedings in an inter
partes reexamination proceeding.

   (b) If a patent in the process of ex parte reexamination is or becomes
involved in litigation, the Director shall determine whether or not to
suspend the reexamination. See    1.987 for inter partes reexamination
proceedings.

   (c) If ex parte reexamination is ordered while a prior ex parte
reexamination proceeding is pending and prosecution has not been
terminated, the ex parte reexamination proceedings will be consolidated
and result in the issuance of a single certificate under    1.570. For
merger of inter partes reexamination proceedings, see    1.989(a). For
merger of ex parte reexamination and inter partes reexamination
proceedings, see    1.989(b).

   (d) If a reissue application and an ex parte reexamination proceeding on
which an order pursuant to    1.525 has been mailed are pending
concurrently on a patent, a decision will normally be made to merge the
two proceedings or to suspend one of the two proceedings. Where merger
of a reissue application and an ex parte reexamination proceeding is
ordered, the merged examination will be conducted in accordance with
 1.171 through 1.179 and the patent owner will be required to place and
maintain the same claims in the reissue application and the ex parte
reexamination proceeding during the pendency of the merged proceeding.
The examiner's actions and responses by the patent owner in a merged
proceeding will apply to both the reissue application and the ex parte
reexamination proceeding and be physically entered into both files. Any
ex parte reexamination proceeding merged with a reissue application
shall be terminated by the grant of the reissued patent. For merger of a
reissue application and an inter partes reexamination, see    1.991.

   (e) If a patent in the process of ex parte reexamination is or becomes
involved in an interference, the Director may suspend the reexamination
or the interference. The Director will not consider a request to suspend
an interference unless a motion (   1.635) to suspend the interference
has been presented to, and denied by, an administrative patent judge and
the request is filed within ten (10) days of a decision by an
administrative patent judge denying the motion for suspension or such
other time as the administrative patent judge may set. For concurrent
inter partes reexamination and interference of a patent, see    1.993.

   35. The undesignated center heading following    1.565 is proposed to be
revised to read as follows:

Ex Parte Reexamination Certificate

   36. Section 1.570 is proposed to be revised to read as follows:

   1.570 Issuance of ex parte reexamination certificate after ex parte
reexamination proceedings.

   (a) Upon the conclusion of ex parte reexamination proceedings, the
Director will issue an ex parte reexamination certificate in accordance
with 35 U.S.C. 307 setting forth the results of the ex parte
reexamination proceeding and the content of the patent following the ex
parte reexamination proceeding.

   (b) An ex parte reexamination certificate will be issued in each patent
in which an ex parte reexamination proceeding has been ordered under
1.525 and has not been merged with any inter partes reexamination
proceeding pursuant to    1.989(a). Any statutory disclaimer filed by
the patent owner will be made part of the ex parte reexamination
certificate.

   (c) The ex parte reexamination certificate will be mailed on the day of
its date to the patent owner at the address as provided for in
1.33(c). A copy of the ex parte reexamination certificate will also be
mailed to the requester of the ex parte reexamination proceeding.

   (d) If an ex parte reexamination certificate has been issued which
cancels all of the claims of the patent, no further Office proceedings
will be conducted with regard to that patent or any reissue applications
or any reexamination requests relating thereto.

   (e) If the ex parte reexamination proceeding is terminated by the grant
of a reissued patent as provided in    1.565(d), the reissued patent
will constitute the ex parte reexamination certificate required by this
section and 35 U.S.C. 307.

   (f) A notice of the issuance of each ex parte reexamination certificate
under this section will be published in the Official Gazette on its date
of issuance.

   37. Subpart H is proposed to be added to read as follows:

Subpart H-Inter Partes Reexamination of Patents
Prior Art Citations

Sec.
1.902 Processing of prior art citations during an inter partes
reexamination proceeding.

Requirements for Inter partes Reexamination Proceedings

1.903 Service of papers on parties in inter partes reexamination.

1.904 Notice of inter partes reexamination in Official Gazette.

1.905 Submission of papers by public in inter partes reexamination.

1.906 Scope of reexamination in inter partes reexamination proceeding.

1.907 Inter partes reexamination prohibited.

1.913 Persons eligible to file request for inter partes reexamination.

1.915 Content of request for inter partes reexamination.

1.919 Filing date of request for inter partes reexamination.

1.923 Examiner's determination on the request for inter partes
reexamination.

1.925 Partial refund if request for inter partes reexamination is not
ordered.

1.927 Petition to review refusal to order inter partes reexamination.

Inter Partes Reexamination of Patents

1.931 Order for inter partes reexamination.

Information Disclosure in Inter Partes Reexamination

1.933 Patent owner duty of disclosure in inter partes reexamination
proceedings.

Office Actions and Responses (Before the Examiner) in Inter partes
Reexamination

1.935 Initial Office action usually accompanies order for inter partes
reexamination.

1.937 Conduct of inter partes reexamination.

1.939 Unauthorized papers in inter partes reexamination.

1.941 Amendments by patent owner in inter partes reexamination.

1.943 Requirements of responses, written comments, and briefs in inter
partes reexamination.

1.945 Response to Office action by patent owner in inter partes
reexamination.

1.947 Comments by third-party requester to patent owner's response in
inter partes reexamination.

1.948 Limitations on submission of prior art by third-party requester
following the order for inter partes reexamination.

1.949 Examiner's Office action closing prosecution in inter partes
reexamination.

1.951 Options after Office action closing prosecution in inter partes
reexamination.

1.953 Examiner's Right of Appeal Notice in inter partes reexamination.

Interviews Prohibited in Inter Partes Reexamination

1.955 Interviews prohibited in inter partes reexamination proceedings.

Extensions of Time, Termination of Proceedings, and Petitions to Revive
in Inter Partes Reexamination

1.956 Patent owner extensions of time in inter partes reexamination.

1.957 Failure to file a timely, appropriate or complete response or
comment in inter partes reexamination.

1.958 Petition to revive terminated inter partes reexamination or claims
terminated for lack of patent owner response.

Appeal to the Board of Patent Appeals and Interferences in Inter Partes
Reexamination

1.959 Notice of appeal and cross appeal to Board of Patent Appeals and
Interferences in inter partes reexamination.

1.961 Jurisdiction over appeal in inter partes reexamination.

1.962 Appellant and respondent in inter partes reexamination defined.

1.963 Time for filing briefs in inter partes reexamination.

1.965 Appellant brief in inter partes reexamination.

1.967 Respondent brief in inter partes reexamination.

1.969 Examiner's answer in inter partes reexamination.

1.971 Rebuttal brief in inter partes reexamination.

1.973 Oral hearing in inter partes reexamination.

1.975 Affidavits or declarations after appeal in inter partes
reexamination.

1.977 Decision by the Board of Patent Appeals and Interferences; remand
to examiner in inter partes reexamination.

1.979 Action following decision by the Board of Patent Appeals and
Interferences or dismissal of appeal in inter partes reexamination.

1.981 Reopening after decision by the Board of Patent Appeals and
Interferences in inter partes reexamination.

Patent Owner Appeal to the United States Court of Appeals for the
Federal Circuit in Inter Partes Reexamination

1.983 Patent owner appeal to the United States Court of Appeals for the
Federal Circuit in inter partes reexamination.

Concurrent Proceedings Involving Same Patent in Inter Partes
Reexamination

1.985 Notification of prior or concurrent proceedings in inter partes
reexamination.

1.987 Suspension of inter partes reexamination proceeding due to
litigation.

1.989 Merger of concurrent reexamination proceedings.

1.991 Merger of concurrent reissue application and inter partes
reexamination proceeding.

1.993 Suspension of concurrent interference and inter partes
reexamination proceeding.

1.995 Third-party requester's participation rights preserved in merged
proceeding.

Reexamination Certificate in Inter Partes Reexamination

1.997 Issuance of inter partes reexamination certificate.

Prior Art Citations

   1.902 Processing of prior art citations during an inter partes
reexamination proceeding.

   Citations by the patent owner in accordance with    1.933 and by an
inter partes reexamination third-party requester under      1.915 or
1.948 will be entered in the inter partes reexamination file. The entry
in the patent file of other citations submitted after the date of an
order for reexamination pursuant to    1.931 by persons other than the
patent owner, or the third-party requester under either    1.915 or
1.948, will be delayed until the inter partes reexamination proceeding
has been terminated.

Requirements for Inter Partes Reexamination Proceedings

   1.903 Service of papers on parties in inter partes reexamination.

   The patent owner and the third-party requester will be sent copies of
Office actions issued during the inter partes reexamination proceeding.
After filing of a request for inter partes reexamination by a
third-party requester, any document filed by either the patent owner or
the third-party requester must be served on every other party in the
reexamination proceeding in the manner provided in    1.248. Any
document must reflect service or the document may be refused
consideration by the Office. The failure of the patent owner or the
third-party requester to serve documents may result in their being
refused consideration.

   1.904 Notice of inter partes reexamination in Official Gazette.

   A notice of the filing of an inter partes reexamination request will
be published in the Official Gazette. The notice published in the
Official Gazette under    1.11(c) will be considered to be constructive
notice of the inter partes reexamination proceeding and inter partes
reexamination will proceed.

   1.905 Submission of papers by public in inter partes reexamination.

   Unless specifically provided for, no submissions on behalf of any
third parties other than third-party requesters as defined in 35 U.S.C.
100(e) will be considered unless such submissions are in accordance with
   1.915 or entered in the patent file prior to the date of the order
for reexamination pursuant to    1.931. Submissions by third parties,
other than third-party requesters, filed after the date of the order for
reexamination pursuant to    1.931, must meet the requirements of
1.501 and will be treated in accordance with    1.902. Submissions which
do not meet the requirements of    1.501 will be returned.

   1.906 Scope of reexamination in inter partes reexamination proceeding.

   (a) Claims in an inter partes reexamination proceeding will be
examined on the basis of patents or printed publications and, with
respect to subject matter added or deleted in the reexamination
proceeding, on the basis of the requirements of 35 U.S.C. 112.

   (b) Claims in an inter partes reexamination proceeding will not be
permitted to enlarge the scope of the claims of the patent.

   (c) Issues other than those indicated in paragraphs (a) and (b) of this
section will not be resolved in an inter partes reexamination
proceeding. If such issues are raised by the patent owner or the
third-party requester during a reexamination proceeding, the existence
of such issues will be noted by the examiner in the next Office action,
in which case the patent owner may desire to consider the advisability
of filing a reissue application to have such issues considered and
resolved.

   1.907 Inter partes reexamination prohibited.

   (a) Once an order to reexamine has been issued under    1.931,
neither the third-party requester, nor its privies, may file a
subsequent request for inter partes reexamination of the patent until an
inter partes reexamination certificate is issued under    1.997, unless
authorized by the Director.

   (b) Once a final decision has been entered against a party in a civil
action arising in whole or in part under 28 U.S.C. 1338 that the party
has not sustained its burden of proving invalidity of any patent claim
in suit, then neither that party nor its privies may thereafter request
inter partes reexamination of any such patent claim on the basis of
issues which that party, or its privies, raised or could have raised in
such civil action, and an inter partes reexamination requested by that
party, or its privies, on the basis of such issues may not thereafter be
maintained by the Office.

   (c) If a final decision in an inter partes reexamination proceeding
instituted by a third-party requester is favorable to patentability of
any original, proposed amended, or new claims of the patent, then
neither that party nor its privies may thereafter request inter partes
reexamination of any such patent claims on the basis of issues which
that party, or its privies, raised or could have raised in such inter
partes reexamination proceeding.

   1.913 Persons eligible to file request for inter partes reexamination.

   Except as provided for in    1.907, any person other than the patent
owner or its privies may, at any time during the period of
enforceability of a patent which issued from an original application
filed in the United States on or after November 29, 1999, file a request
for inter partes reexamination by the Office of any claim of the patent
on the basis of prior art patents or printed publications cited under
1.501.

   1.915 Content of request for inter partes reexamination.

   (a) The request must be accompanied by the fee for requesting inter
partes reexamination set in    1.20(c)(2).

   (b) A request for inter partes reexamination must include the following
parts:

   (1) An identification of the patent by patent number and every claim for
which reexamination is requested.

   (2) A citation of the patents and printed publications which are
presented to provide a substantial new question of patentability.

   (3) A statement pointing out each substantial new question of
patentability based on the cited patents and printed publications, and a
detailed explanation of the pertinency and manner of applying the
patents and printed publications to every claim for which reexamination
is requested.

   (4) A copy of every patent or printed publication relied upon or
referred to in paragraphs (b)(1)-(3) of this section, accompanied by an
English language translation of all the necessary and pertinent parts of
any non-English language document.

   (5) A copy of the entire patent including the front face, drawings, and
specification/claims (in double column format) for which reexamination
is requested, and a copy of any disclaimer, certificate of correction,
or reexamination certificate issued in the patent. All copies must have
each page plainly written on only one side of a sheet of paper.

   (6) A certification by the third-party requester that a copy of the
request has been served in its entirety on the patent owner at the
address as provided for in    1.33(c). The name and address of the party
served must be indicated. If service was not possible, a duplicate copy
of the request must be supplied to the Office.

   (7) A certification by the third-party requester that the estoppel
provisions of    1.907 do not prohibit the inter partes reexamination.

   (8) A statement identifying the real party in interest to the extent
necessary for a subsequent person filing an inter partes reexamination
request to determine whether that person is a privy.

   (c) If an inter partes request is filed by an attorney or agent
identifying another party on whose behalf the request is being filed,
the attorney or agent must have a power of attorney from that party or
be acting in a representative capacity pursuant to    1.34(a).

   (d) If the inter partes request does not meet all the requirements of
1.915(b), the person identified as requesting inter partes reexamination
may be so notified and given an opportunity to complete the formal
requirements of the request within a specified time. Failure to comply
with the notice may result in the inter partes reexamination proceeding
being vacated.

   1.919 Filing date of request for inter partes reexamination.

   (a) The filing date of a request for inter partes reexamination is
the date on which the request satisfies the fee requirement of
1.915(a).

   (b) If the request is not granted a filing date, the request will be
placed in the patent file as a citation of prior art if it complies with
the requirements of    1.501.

   1.923 Examiner's determination on the request for inter partes
reexamination.

   Within three months following the filing date of a request for inter
partes reexamination under    1.919, the examiner will consider the
request and determine whether or not a substantial new question of
patentability affecting any claim of the patent is raised by the request
and the prior art citation. The examiner's determination will be based
on the claims in effect at the time of the determination and will become
a part of the official file of the patent and will be mailed to the
patent owner at the address as provided for in    1.33(c) and to the
third-party requester. If the examiner determines that no substantial
new question of patentability is present, the examiner shall refuse the
request and shall not order inter partes reexamination.

   1.925 Partial refund if request for inter partes reexamination is not
ordered.

   Where inter partes reexamination is not ordered, a refund of a
portion of the fee for requesting inter partes reexamination will be
made to the requester in accordance with    1.26(c).

   1.927 Petition to review refusal to order inter partes reexamination.

   The third-party requester may seek review by a petition to the
Director under    1.181 within one month of the mailing date of the
examiner's determination refusing to order inter partes reexamination.
Any such petition must comply with    1.181(b). If no petition is timely
filed, or if the decision on petition affirms that no substantial new
question of patentability has been raised, the determination shall be
final and nonappealable.

Inter Partes Reexamination of Patents

   1.931 Order for inter partes reexamination.

   (a) If a substantial new question of patentability is found, the
determination will include an order for inter partes reexamination of
the patent for resolution of the question.

   (b) If the order for inter partes reexamination resulted from a petition
pursuant to    1.927, the inter partes reexamination will ordinarily be
conducted by an examiner other than the examiner responsible for the
initial determination under    1.923.

Information Disclosure in inter partes Reexamination

   1.933 Patent owner duty of disclosure in inter partes reexamination
proceedings.

   (a) Each individual associated with the patent owner in an inter
partes reexamination proceeding has a duty of candor and good faith in
dealing with the Office, which includes a duty to disclose to the Office
all information known to that individual to be material to patentability
in a reexamination proceeding as set forth in    1.555(a) and (b). The
duty to disclose all information known to be material to patentability
in an inter partes reexamination proceeding is deemed to be satisfied by
filing a paper in compliance with the requirements set forth in
1.555(a) and (b).

   (b) The responsibility for compliance with this section rests upon the
individuals designated in paragraph (a) of this section, and no
evaluation will be made by the Office in the reexamination proceeding as
to compliance with this section. If questions of compliance with this
section are discovered during a reexamination proceeding, they will be
noted as unresolved questions in accordance with    1.906(c).

Office Actions and Responses (Before the Examiner) in inter partes
Reexamination

   1.935 Initial Office action usually accompanies order for inter
partes reexamination.

   The order for inter partes reexamination will usually be accompanied
by the initial Office action on the merits of the reexamination.

   1.937 Conduct of inter partes reexamination.

   (a) All inter partes reexamination proceedings, including any appeals
to the Board of Patent Appeals and Interferences, will be conducted with
special dispatch within the Office, unless the Director makes a
determination that there is good cause for suspending the reexamination
proceeding.

   (b) The inter partes reexamination proceeding will be conducted in
accordance with      1.104 through 1.116, the sections governing the
application examination process, and will result in the issuance of an
inter partes reexamination certificate under    1.997, except as
otherwise provided.

   (c) All communications between the Office and the parties to the inter
partes reexamination 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.

   1.939 Unauthorized papers in inter partes reexamination.

   (a) If an unauthorized paper is filed by any party at any time during
the inter partes reexamination proceeding it will not be considered and
may be returned.

   (b) Unless otherwise authorized, no paper shall be filed prior to the
initial Office action on the merits of the inter partes reexamination.

   1.941 Amendments by patent owner in inter partes reexamination.

   Amendments by patent owner in inter partes reexamination proceedings
are made by filing a paper in compliance with      1.530(d) and 1.943.

   1.943 Requirements of responses, written comments, and briefs in
inter partes reexamination.

   (a) The form of responses, written comments, briefs, appendices, and
other papers must be in accordance with the requirements of
1.530(d)(5).

   (b) Responses by the patent owner and written comments by the
third-party requester shall not exceed 50 pages in length, excluding
amendments, appendices of claims, and reference materials such as prior
art references.

   (c) Appellant briefs by the patent owner and the third-party requester
shall not exceed 30 pages or 14,000 words in length, excluding
appendices of claims and reference materials such as prior art
references. All other briefs by any party shall not exceed 15 pages in
length or 7,000 words. If the page limit for any brief is exceeded, a
certificate is required stating the number of words contained in the
brief.

   1.945 Response to Office action by patent owner in inter partes
reexamination.

   The patent owner will be given at least 30 days to file a response to
any Office action on the merits of the inter partes reexamination.
1.947 Comments by third-party requester to patent owner's response in
inter partes reexamination.

   Each time the patent owner files a response to an Office action on the
merits, a third-party requester may once file written comments within a
period of 30 days from the date of service of the patent owner's
response. These comments shall be limited to issues raised by the Office
action or the patent owner's response. The time for submitting comments
by the third-party requester may not be extended.

   1.948 Limitations on submission of prior art by third-party requester
following the order for inter partes reexamination.

   After the inter partes reexamination order, the third-party requester
may only cite additional prior art as defined under    1.501 if it is
filed as part of a comments submission under      1.947, 1.951(a) and
1.951(d), and is limited to prior art:

   (a) Which is necessary to rebut a finding of fact by the examiner;

   (b) Which is necessary to rebut a response of the patent owner; or,

   (c) Which became known or available to the third-party requester after
the filing of the request for inter partes reexamination proceeding
where a discussion of the pertinency of each reference to the
patentability of at least one claim is included. Prior art submitted
under this paragraph (c) must be accompanied by a statement as to when
the prior art first became known or available to the third-party
requester.

   1.949 Examiner's Office action closing prosecution in inter partes
reexamination.

   Upon consideration of the issues a second or subsequent time, or upon
allowance of all claims, the examiner shall issue an Office action
treating all claims present in the inter partes reexamination, which may
be an action closing prosecution. The Office action shall set forth all
rejections and determinations not to make a proposed rejection, and the
grounds therefor. An Office action will not usually close prosecution if
it includes a new ground of rejection which was not previously addressed
by the patent owner, unless the new ground was necessitated by an
amendment.

   1.951 Options after Office action closing prosecution in inter partes
reexamination.

   (a) After an action closing prosecution in an inter partes
reexamination, a third-party requester may once file comments limited to
the issues raised in the Office action closing prosecution. Such
comments must be filed within the time set for response in the Office
action closing prosecution.

   (b) When a third-party requester does file comments, the patent owner
may once file comments responsive to the third-party requester's
comments within 30 days from the date of service of the third-party
requester's comments on the patent owner.

   (c) After an Office action closing prosecution in an inter partes
reexamination, the patent owner may once file comments limited to the
issues raised in the Office action closing prosecution. The comments can
include a proposed amendment to the claims, which amendment will be
subject to the criteria of    1.116 as to whether or not it shall be
admitted. The comments must be filed within the time set for response in
the Office action closing prosecution.

   (d) When the patent owner does file comments, a third-party requester
may once file comments responsive to the patent owner's comments within
30 days from the date of service of patent owner's comments on the
third-party requester.

   1.953 Examiner's Right of Appeal Notice in inter partes reexamination.

   (a) Upon considering the comments of the patent owner and the
third-party requester subsequent to the Office action closing
prosecution in an inter partes reexamination, or upon expiration of the
time for submitting such comments, the examiner shall issue a Right of
Appeal Notice, unless the examiner reopens prosecution and issues
another Office action on the merits.

   (b) Expedited Right of Appeal Notice: At any time after the patent
owner's response to the initial Office action on the merits in an inter
partes reexamination, the patent owner and all third-party requesters
may stipulate that the issues are appropriate for a final action, which
would include a final rejection and/or a final determination favorable
to patentability, and may request the issuance of a Right of Appeal
Notice. The request must have the concurrence of the patent owner and
all third-party requesters present in the proceeding and must identify
all the appealable issues, and the positions of the patent owner and all
third-party requesters on those issues. If the examiner determines that
no other issues are present or should be raised, a Right of Appeal
Notice limited to the identified issues shall be issued. Any appeal by
the parties shall be conducted in accordance with      1.959-1.983.

   (c) The Right of Appeal Notice shall be a final action, which includes a
final rejection setting forth each ground of rejection and/or final
decision favorable to patentability including each determination not to
make a proposed rejection, an identification of the status of each
claim, and the reasons for decisions favorable to patentability and/or
the grounds of rejection for each claim. No amendment can be made in
response to the Right of Appeal Notice. The Right of Appeal Notice shall
set a one-month time period for either party to appeal. If no notice of
appeal is filed, the inter partes reexamination proceeding will be
terminated, and the Director will proceed to issue a certificate under
 1.997 in accordance with the Right of Appeal Notice.

Interviews Prohibited in Inter Partes Reexamination

   1.955 Interviews prohibited in inter partes reexamination proceedings.

   There will not be any interviews in an inter partes reexamination
proceeding which discuss the merits of the proceeding.

EXTENSIONS OF TIME, TERMINATION OF PROCEEDINGS, AND PETITIONS TO REVIVE
IN inter partes REEXAMINATION

   1.956 Patent owner extensions of time in inter partes reexamination.

   The time for taking any action by a patent owner in an inter partes
reexamination proceeding will be extended only for sufficient cause and
for a reasonable time specified. Any request for such extension must be
filed on or before the day on which action by the patent owner is due,
but in no case will the mere filing of a request effect any extension.
See    1.304(a) for extensions of time for filing a notice of appeal to
the U.S. Court of Appeals for the Federal Circuit.

   1.957 Failure to file a timely, appropriate or complete response or
comment in inter partes reexamination.

   (a) If the third-party requester files an untimely or inappropriate
comment, notice of appeal or brief in an inter partes reexamination, the
paper will be refused consideration.

   (b) If no claims are found patentable, and the patent owner fails to
file a timely and appropriate response in an inter partes reexamination
proceeding, the reexamination proceeding will be terminated and the
Director will proceed to issue a certificate under    1.997 in
accordance with the last action of the Office.

   (c) If claims are found patentable, and the patent owner fails to file a
timely and appropriate response to any Office action in an inter partes
reexamination proceeding, further prosecution will be limited to the
claims found patentable at the time of the failure to respond, and to
any claims added thereafter which do not expand the scope of the claims
which were found patentable at that time.

   (d) When action by the patent owner is a bona fide attempt to respond
and to advance the prosecution, and is substantially a complete response
to the Office action, but consideration of some matter or compliance
with some requirement has been inadvertently omitted, an opportunity to
explain and supply the omission may be given.

   1.958 Petition to revive terminated inter partes reexamination or
claims terminated for lack of patent owner response.

   (a) If a response by the patent owner is not timely filed in the
Office, the delay in filing such response may be excused if it is shown
to the satisfaction of the Director that the delay was unavoidable. A
petition to accept an unavoidably delayed response must be filed in
compliance with    1.137(a).

   (b) Any response by the patent owner not timely filed in the Office may
nevertheless be accepted if the delay was unintentional. A petition to
accept an unintentionally delayed response must be filed in compliance
with    1.137(b).

Appeal to the Board of Patent Appeals and Interferences in Inter Partes
Reexamination

   1.959 Notice of appeal and cross appeal to Board of Patent Appeals
and Interferences in inter partes reexamination.

   (a)(1) Upon the issuance of a Right of Appeal Notice under    1.953,
the patent owner involved in an inter partes reexamination proceeding
may appeal to the Board of Patent Appeals and Interferences with respect
to the final rejection of any claim of the patent by filing a notice of
appeal within the time provided in the Right of Appeal Notice and paying
the fee set forth in    1.17(b).

   (2) Upon the issuance of a Right of Appeal Notice under    1.953, a
third-party requester involved in an inter partes reexamination
proceeding may appeal to the Board of Patent Appeals and Interferences
with respect to any final decision favorable to the patentability,
including any final determination not to make a proposed rejection, of
any original or proposed amended or new claim of the patent by filing a
notice of appeal within the time provided in the Right of Appeal Notice
and paying the fee set forth in    1.17(b).

   (b)(1) Within fourteen days of service of a third-party requester's
notice of appeal under paragraph (a)(2) of this section, and upon
payment of the fee set forth in    1.17(b), a patent owner who has not
filed a notice of appeal may file a notice of cross appeal with respect
to the final rejection of any claim of the patent.

   (2) Within fourteen days of service of a patent owner's notice of appeal
under paragraph (a)(1) of this section, and upon payment of the fee set
forth in    1.17(b), a third-party requester who has not filed a notice
of appeal may file a notice of cross appeal with respect to any final
decision favorable to the patentability, including any final
determination not to make a proposed rejection, of any original or
proposed amended or new claim of the patent.

   (c) The notice of appeal or cross appeal in an inter partes
reexamination proceeding must identify the claim(s) with respect to
which an appeal is being taken, and must be signed by the patent owner
or third-party requester, or their duly authorized attorney or agent.

   (d) An appeal or cross appeal when taken must be taken from all the
rejections of the claims under rejection in a Right of Appeal Notice
which the patent owner proposes to contest, or from all the
determinations favorable to patentability, including any final
determination not to make a proposed rejection, in a Right of Appeal
Notice which a third-party requester proposes to contest. Questions
relating to matters not affecting the merits of the invention may be
required to be settled before an appeal is decided.

   (e) The times for filing a notice of appeal or cross-appeal may not be
extended.

   1.961 Jurisdiction over appeal in inter partes reexamination.

   Jurisdiction over the inter partes reexamination proceeding passes to
the Board of Patent Appeals and Interferences upon transmittal of the
file, including all briefs and examiner's answers, to the Board of
Patent Appeals and Interferences. Prior to the entry of a decision on
the appeal, the Director may sua sponte order the inter partes
reexamination proceeding remanded to the examiner, for action consistent
with the Director's order.

   1.962 Appellant and respondent in inter partes reexamination defined.

   For the purposes of inter partes reexamination, appellant is any
party, whether the patent owner or a third-party requester, filing a
notice of appeal or cross appeal. If more than one party appeals or
cross appeals, each appealing or cross appealing party is an appellant
with respect to the claims to which his or her appeal or cross appeal is
directed. A respondent is any third-party requester responding under
1.967 to the appellant brief of the patent owner, or the patent owner
responding under    1.967 to the appellant brief of any third-party
requester. No third-party requester may be a respondent to the appellant
brief of any other third-party requester.

   1.963 Time for filing briefs in inter partes reexamination.

   (a) An appellant brief in an inter partes reexamination must be filed
no later than two months from the latest of the filing date of the
last-filed notice of appeal or cross appeal or if any party to the inter
partes reexamination is entitled to file an appeal or cross appeal but
fails to timely do so, the expiration of time for filing (by the last
party entitled to do so) such notice of appeal or cross appeal. The time
for filing an appellant brief may not be extended.

   (b) Once an appellant brief has been properly filed, any respondent
brief must be filed within one month from the date of service of the
appellant brief. The time for filing a respondent brief may not be
extended.

   (c) The examiner will consider both the appellant and respondent briefs
and may prepare an examiner's answer under    1.969.

   (d) Any appellant may file a rebuttal brief under    1.971 within one
month of the date of the examiner's answer. The time for filing a
rebuttal brief may not be extended.

   (e) No further submission will be considered and any such submission
will be treated in accordance with    1.939.

   1.965 Appellant brief in inter partes reexamination.

   (a) Appellant(s) may once, within time limits for filing set forth in
   1.963, file a brief in triplicate and serve the brief on all other
parties to the inter partes reexamination proceeding in accordance with
  1.903. The brief must be signed by the appellant, or the appellant's
duly authorized attorney or agent, and must be accompanied by the
requisite fee set forth in    1.17(c). The brief must set forth the
authorities and arguments on which appellant will rely to maintain the
appeal. Any arguments or authorities not included in the brief will be
refused consideration by the Board of Patent Appeals and Interferences,
unless good cause is shown.

   (b) On failure of a party to file an appellant brief, accompanied by the
requisite fee, within the time allowed, that party's appeal shall stand
dismissed.

   (c) The appellant brief shall contain the following items under
appropriate headings and in the order indicated below, unless the brief
is filed by a party who is not represented by a registered practitioner.
The brief may include an appendix containing only those portions of the
record on which reliance has been made.

   (1) Real Party in Interest. A statement identifying the real party in
interest.

   (2) Related Appeals and Interferences. A statement identifying by number
and filing date all other appeals or interferences known to the
appellant, the appellant's legal representative, or assignee which will
directly affect or be directly affected by or have a bearing on the
decision of the Board of Patent Appeals and Interferences in the pending
appeal.

   (3) Status of Claims. A statement of the status of all the claims,
pending or canceled. If the appellant is the patent owner, the appellant
must also identify the rejected claims whose rejection is being
appealed. If the appellant is a third-party requester, the appellant
must identify the claims that the examiner has made a determination
favorable to patentability, which determination is being appealed.

   (4) Status of Amendments. A statement of the status of any amendment
filed subsequent to the close of prosecution.

   (5) Summary of Invention. A concise explanation of the invention or
subject matter defined in the claims involved in the appeal, which shall
refer to the specification by column and line number, and to the
drawing(s), if any, by reference characters.

   (6) Issues. A concise statement of the issues presented for review. No
new ground of rejection can be proposed by a third-party requester
appellant.

   (7) Grouping of Claims. If the appellant is the patent owner, for each
ground of rejection in the right of appeal notice which appellant
contests and which applies to a group of two or more claims, the Board
of Patent Appeals and Interferences shall select a single claim from the
group and shall decide the appeal as to the ground of rejection on the
basis of that claim alone unless a statement is included that the claims
of the group do not stand or fall together and, in the argument under
paragraph (c)(8) of this section, appellant explains why the claims of
this group are believed to be separately patentable. Merely pointing out
differences in what the claims cover is not an argument as to why the
claims are separately patentable.

   (8) Argument. The contentions of appellant with respect to each of the
issues presented for review in paragraph (c)(6) of this section, and the
bases therefor, with citations of the authorities, statutes, and parts
of the record relied on. Each issue should be treated under a separate,
numbered heading.

   (i) For each rejection under 35 U.S.C. 112, first paragraph, or for each
determination favorable to patentability including a determination not
to make a proposed rejection under 35 U.S.C. 112, first paragraph, which
appellant contests, the argument shall specify the errors in the
rejection or the determination and how the first paragraph of 35 U.S.C.
112 is complied with, if the appellant is the patent owner, or is not
complied with, if the appellant is a third-party requester, including,
as appropriate, how the specification and drawing(s), if any,

   (A) Describe, if the appellant is the patent owner, or fail to describe,
if the appellant is a third-party requester, the subject matter defined
by each of the appealed claims, and

   (B) Enable, if the appellant is the patent owner, or fail to enable, if
the appellant is a third-party requester, any person skilled in the art
to make and use the subject matter defined by each of the appealed
claims, and (ii) For each rejection under 35 U.S.C. 112, second
paragraph, or for each determination favorable to patentability
including a determination not to make a proposed rejection under 35
U.S.C. 112, second paragraph, which appellant contests, the argument
shall specify the errors in the rejection, if the appellant is the
patent owner, or the determination, if the appellant is a third-party
requester, and how the claims do, if the appellant is the patent owner,
or do not, if the appellant is a third-party requester, particularly
point out and distinctly claim the subject matter which the inventors
regard as the invention.

   (iii) For each rejection under 35 U.S.C. 102 or for each determination
favorable to patentability including a determination not to make a
proposed rejection under 35 U.S.C. 102 which appellant contests, the
argument shall specify the errors in the rejection, if the appellant is
the patent owner, or determination, if the appellant is a third-party
requester, and why the appealed claims are, if the appellant is the
patent owner, or are not, if the appellant is a third-party requester,
patentable under 35 U.S.C. 102, including any specific limitations in
the appealed claims which are or are not described in the prior art.

   (iv) For each rejection under 35 U.S.C. 103 or for each determination
favorable to patentability including a determination not to make a
proposed rejection under 35 U.S.C. 103 which appellant contests, the
argument shall specify the errors in the rejection, if the appellant is
the patent owner, or determination, if the appellant is a third-party
requester, and, if appropriate, the specific limitations in the appealed
claims which are or are not described in the prior art, and shall
explain how such limitations render the claimed subject matter obvious,
if the appellant is a third-party requester, or unobvious, if the
appellant is the patent owner, over the prior art. If the rejection or
determination is based upon a combination of references, the argument
shall explain why the references, taken as a whole, do or do not suggest
the claimed subject matter, and shall include, as may be appropriate, an
explanation of why features disclosed in one reference may or may not
properly be combined with features disclosed in another reference. A
general argument that all the limitations are or are not described in a
single reference does not satisfy the requirements of this paragraph.

   (v) For any rejection other than those referred to in paragraphs
(c)(8)(i) to (iv) of this section or for each determination favorable to
patentability including any determination not to make a proposed
rejection other than those referred to in paragraphs (c)(8)(i) to (iv)
of this section which appellant contests, the argument shall specify the
errors in the rejection, if the appellant is the patent owner, or
determination, if the appellant is a third-party requester, and the
specific limitations in the appealed claims, if appropriate, or other
reasons, which cause the rejection or determination to be in error.

   (9) Appendix. An appendix containing a copy of the claims appealed by
the appellant.

   (10) Certificate of Service. A certification that a copy of the brief
has been served in its entirety on all other parties to the
reexamination proceeding. The names and addresses of the parties served
must be indicated.

   (d) If a brief is filed which does not comply with all the requirements
of paragraph (c) of this section, appellant will be notified of the
reasons for non-compliance and provided with a non- extendable period of
one month within which to file an amended brief. If the appellant does
not file an amended brief during the one-month period, or files an
amended brief which does not overcome all the reasons for non-compliance
stated in the notification, that appellant's appeal will stand dismissed.

   1.967 Respondent brief in inter partes reexamination.

   (a) Respondent(s) in an inter partes reexamination appeal may once,
within time limit for filing set forth in    1.963, file a respondent
brief in triplicate and serve the brief on all parties in accordance
with    1.903. The brief must be signed by the party, or the party's
duly authorized attorney or agent, and must be accompanied by the
requisite fee set forth in    1.17(c). The brief must set forth the
authorities and arguments on which respondent will rely. Any arguments
or authorities not included in the brief will be refused consideration
by the Board of Patent Appeals and Interferences, unless good cause is
shown. The respondent brief shall be limited to issues raised in the
appellant brief to which the respondent brief is directed. A third-party
respondent brief may not address any brief of any other third-party.

   (b) The respondent brief shall contain the following items under
appropriate headings and in the order here indicated, and may include an
appendix containing only those portions of the record on which reliance
has been made.

   (1) Real Party in Interest. A statement identifying the real party in
interest.

   (2) Related Appeals and Interferences. A statement identifying by number
and filing date all other appeals or interferences known to the
respondent, the respondent's legal representative, or assignee (if any)
which will directly affect or be directly affected by or have a bearing
on the decision of the Board of Patent Appeals and Interferences in the
pending appeal.

   (3) Status of claims. A statement accepting or disputing appellant's
statement of the status of claims. If appellant's statement of the
status of claims is disputed, the errors in appellant's statement must
be specified with particularity.

   (4) Status of amendments. A statement accepting or disputing appellant's
statement of the status of amendments. If appellant's statement of the
status of amendments is disputed, the errors in appellant's statement
must be specified with particularity.

   (5) Summary of invention. A statement accepting or disputing appellant's
summary of the invention or subject matter defined in the claims
involved in the appeal. If appellant's summary of the invention or
subject matter defined in the claims involved in the appeal is disputed,
the errors in appellant's summary must be specified with particularity.

   (6) Issues. A statement accepting or disputing appellant's statement of
the issues presented for review. If appellant's statement of the issues
presented for review is disputed, the errors in appellant's statement
must be specified with particularity. A counter statement of the issues
for review may be made. No new ground of rejection can be proposed by a
third-party requester respondent.

   (7) Argument. A statement accepting or disputing the contentions of the
appellant with each of the issues. If a contention of the appellant is
disputed, the errors in appellant's argument must be specified with
particularity, stating the basis therefor, with citations of the
authorities, statutes and parts of the record relied on. Each issue
should be treated under a separate heading. An argument may be made with
each of the issues stated in the counter statement of the issues, with
each counter-stated issue being treated under a separate heading. The
provisions of      1.965(c)(8)(iii) and (iv) shall apply to any argument
raised under 35 U.S.C. 102 or 103.

   (8) Certificate of Service. A certification that a copy of the
respondent brief has been served in its entirety on all other parties to
the reexamination proceeding. The names and addresses of the parties
served must be indicated.

   (c) If a respondent brief is filed which does not comply with all the
requirements of paragraph (b) of this section, respondent will be
notified of the reasons for non-compliance and provided with a
non-extendable period of one month within which to file an amended
brief. If the respondent does not file an amended brief during the
one-month period, or files an amended brief which does not overcome all
the reasons for non-compliance stated in the notification, the
respondent brief will not be considered.

   1.969 Examiner's answer in inter partes reexamination.

   (a) The primary examiner in an inter partes reexamination appeal may,
within such time as directed by the Director, furnish a written
statement in answer to the patent owner's and/or third-party requester's
appellant brief or respondent brief including, as may be necessary, such
explanation of the invention claimed and of the references, the grounds
of rejection, and the reasons for patentability including grounds for
not adopting a proposed rejection. A copy of the answer shall be
supplied to all parties to the reexamination proceeding. If the primary
examiner finds that the appeal is not regular in form or does not relate
to an appealable action, he or she shall so state.

   (b) An examiner's answer may not include a new ground of rejection.

   (c) Where a third-party requester is a party to the appeal, an
examiner's answer may not include a new determination not to make a
proposed rejection of a claim.

   1.971 Rebuttal brief in inter partes reexamination.

   Within one month of the examiner's answer in an inter partes
reexamination appeal, any appellant may once file a rebuttal brief in
triplicate. The rebuttal brief of the patent owner may be directed to
the examiner's answer and/or any respondent brief. The rebuttal brief of
any third-party requester may be directed to the examiner's answer
and/or the respondent brief of the patent owner. The rebuttal brief of a
third-party requester may not be directed to the respondent brief of any
other third-party requester. No new ground of rejection can be proposed
by a third-party requester appellant. The time for filing a rebuttal
brief may not be extended. The rebuttal brief must include a
certification that a copy of the rebuttal brief has been served in its
entirety on all other parties to the reexamination proceeding. The names
and addresses of the parties served must be indicated.

   1.973 Oral hearing in inter partes reexamination.

   (a) An oral hearing in an inter partes reexamination appeal should be
requested only in those circumstances in which an appellant or a
respondent considers such a hearing necessary or desirable for a proper
presentation of the appeal. An appeal decided without an oral hearing
will receive the same consideration by the Board of Patent Appeals and
Interferences as an appeal decided after oral hearing.

   (b) If an appellant or a respondent desires an oral hearing, he or she
must file a written request for such hearing accompanied by the fee set
forth in    1.17(d) within two months after the date of the examiner's
answer. The time for requesting an oral hearing may not be extended.

   (c) An oral argument may be presented at oral hearing by, or on behalf
of, the primary examiner if considered desirable by either the primary
examiner or the Board of Patent Appeals and Interferences.

   (d) If an appellant or a respondent has requested an oral hearing and
has submitted the fee set forth in    1.17(d), a hearing date will be
set, and notice given to all parties to the reexamination proceeding,
and to the primary examiner. The notice shall set a period within which
all requests for oral hearing shall be submitted by any other party to
the appeal desiring to participate in the oral hearing, which period
will not be extended. A hearing will be held as stated in the notice,
and oral argument will be limited to thirty minutes for each appellant
and respondent who has requested an oral hearing, and twenty minutes for
the primary examiner unless otherwise ordered before the hearing begins.
No appellant or respondent will be permitted to participate in an oral
hearing unless he or she has requested an oral hearing and submitted the
fee set forth in    1.17(d).

   (e) If no request and fee for oral hearing have been timely filed by an
appellant or a respondent, the appeal will be assigned for consideration
and decision on the written record.

   1.975 Affidavits or declarations after appeal in inter partes
reexamination.

   Affidavits, declarations, or exhibits submitted after the inter
partes reexamination has been appealed will not be admitted without a
showing of good and sufficient reasons why they were not earlier
presented.

   1.977 Decision by the Board of Patent Appeals and Interferences;
remand to examiner in inter partes reexamination.

   (a) The Board of Patent Appeals and Interferences, in its decision,
may affirm or reverse each decision of the examiner on all issues raised
on each appealed claim, or remand the reexamination proceeding to the
examiner for further consideration. The reversal of the examiner's
determination not to make a rejection proposed by the third-party
requester constitutes a decision adverse to the patentability of the
claims which are subject to that proposed rejection which will be set
forth in the decision of the Board of Patent Appeals and Interferences
as a new ground of rejection under paragraph (b) of this section. The
affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed.

   (b) Should the Board of Patent Appeals and Interferences have knowledge
of any grounds not raised in the appeal for rejecting any pending claim,
it may include in the decision a statement to that effect with its
reasons for so holding, which statement shall constitute a new ground of
rejection of the claim. A decision which includes a new ground of
rejection shall not be considered final for purposes of judicial review.
When the Board of Patent Appeals and Interferences makes a new ground of
rejection, the patent owner, within one month from the date of the
decision, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
proceeding as to the rejected claim:

   (1) The patent owner may submit an appropriate amendment of the claim so
rejected or a showing of facts relating to the claim, or both. The
reexamination proceeding will be remanded to the examiner for
consideration. The statement of the Board of Patent Appeals and
Interferences shall be binding upon the examiner unless an amendment or
showing of facts not previously of record be made which, in the opinion
of the examiner, overcomes the new ground of rejection.

   (2) The patent owner may file a request for rehearing of the decision of
the Board of Patent Appeals and Interferences under    1.979(a).

   (c) The Board of Patent Appeals and Interferences, in its decision, may
include an explicit statement that a claim may be allowed in amended
form. The decision shall not be considered a final decision for purposes
of judicial review if the patent owner, within one month of the date of
the decision, submits an appropriate amendment of the claim in
conformity with such statement, in which event the reexamination
proceeding will be remanded to the examiner. The statement shall be
binding on the examiner in the absence of new references or new grounds
of rejection.

   (d) Where the patent owner has responded under paragraph (b)(1) or (c)
of this section, any third-party requester, within one month of the date
of service of the patent owner response, may once file comments on the
response. Such written comments must be limited to the issues raised by
the decision of the Board of Patent Appeals and Interferences and the
patent owner's response. Any third-party requester that had not
previously filed an appeal or cross appeal and is seeking under this
subsection to file comments or a reply to the comments is subject to the
appeal and brief fees under      1.17(b) and (c), respectively, which
must accompany the comments or reply.

   (e) Following any response by the patent owner under paragraph (b)(1) or
(c) of this section and any written comments from a third-party
requester under paragraph (d) of this section, the reexamination
proceeding will be remanded to the examiner. The examiner will consider
any response under paragraph (b)(1) or (c) of this section and any
written comments by a third-party requester under paragraph (d) of this
section and issue a determination that the rejection should be
maintained or has been overcome.

   (f) Within one month of the examiner's determination pursuant to
paragraph (e) of this section, the patent owner or any third-party
requester may once submit comments in response to the examiner's
determination. Within one month of the date of service of comments in
response to the examiner's determination, any party may file a reply to
the comments. Any third-party requester that had not previously filed an
appeal or cross appeal and is seeking under this subsection to file
comments or a reply to the comments is subject to the appeal and brief
fees under      1.17(b) and (c), respectively, which must accompany the
comments or reply.

   (g) After submission of any comments and any reply pursuant to paragraph
(f) of this section, or after time has expired therefor, the
reexamination proceeding will be returned to the Board of Patent Appeals
and Interferences which shall reconsider the matter and issue a new
decision. The new decision is deemed to incorporate the earlier
decision, except for those portions specifically withdrawn.

   (h) The time periods set forth in paragraphs (b) and (c) of this section
are subject to the extension of time provisions of    1.956. The time
periods set forth in subsections (d) and (f) may not be extended.

   1.979 Action following decision by the Board of Patent Appeals and
Interferences or dismissal of appeal in inter partes reexamination.

   (a) Parties to the appeal may file a request for rehearing of the
decision within one month of the date of:

   (1) The original decision of the Board of Patent Appeals and
Interferences under    1.977(a),

   (2) The original    1.977(b) decision under the provisions of
1.977(b)(2),

   (3) The expiration of the time for the patent owner to take action under
   1.977(b)(2) or (c), or

   (4) The new decision of the Board of Patent Appeals and Interferences
under    1.977(g).

   (b) Within one month of the date of service of any request for rehearing
under paragraph (a) of this section, or any further request for
rehearing under paragraph (c) of this section, any party to the appeal
may once file comments in opposition to the request for rehearing or the
further request for rehearing. The comments in opposition must be
limited to the issues raised in the request for rehearing or the further
request for rehearing.

   (c) If a party to an appeal files a request for rehearing under
paragraph (a) of this section, or a further request for rehearing under
this section, the Board of Patent Appeals and Interferences will issue a
decision on rehearing which decision is deemed to incorporate the
earlier decision, except for those portions specifically withdrawn. If
the decision on rehearing becomes, in effect, a new decision, and the
Board of Patent Appeals and Interferences so states, then any party to
the appeal may, within one month of the new decision, once file a
further request for rehearing of the new decision under this subsection.

   (d) Any request for rehearing shall state with particularity the points
believed to have been misapprehended or overlooked in rendering the
decision and also state all other grounds upon which rehearing is sought.

   (e) The patent owner may not appeal to the U.S. Court of Appeals for the
Federal Circuit under    1.983 until all parties' rights to request
rehearing have been exhausted, at which time the decision of the Board
of Patent Appeals and Interferences is final and appealable by the
patent owner.

   (f) An appeal by a third-party requester is considered terminated by the
dismissal of the third-party requester's appeal, the failure of the
third-party requester to timely request rehearing under      1.979(a) or
(c), or a final decision under    1.979(e). The date of such termination
is the date on which the appeal is dismissed, the date on which the time
for rehearing expires, or the decision of the Board of Patent Appeals
and Interferences is final. An appeal by the patent owner is considered
terminated by the dismissal of the patent owner's appeal, the failure of
the patent owner to timely request rehearing under      1.979(a) or (c),
or the failure of the patent owner to timely file an appeal to the U.S.
Court of Appeals for the Federal Circuit under    1.983. The date of
such termination is the date on which the appeal is dismissed, the date
on which the time for rehearing expires, or the date on which the time
for the patent owner's appeal to the U.S. Court of Appeals for the
Federal Circuit expires. If an appeal to the U.S. Court of Appeals for
the Federal Circuit has been filed, the patent owner's appeal is
considered terminated when the mandate is received by the Office. Upon
termination of an appeal, if no other appeal is present, the
reexamination proceeding will be terminated and the Director will issue
a certificate under    1.997.

   (g) The times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.

   1.981 Reopening after decision by the Board of Patent Appeals and
Interferences in inter partes reexamination.

   Cases which have been decided by the Board of Patent Appeals and
Interferences will not be reopened or reconsidered by the primary
examiner except under the provisions of    1.977 without the written
authority of the Director, and then only for the consideration of
matters not already adjudicated, sufficient cause being shown.

Patent Owner Appeal to the United States Court of Appeals for the
Federal Circuit in inter partes Reexamination

   1.983 Patent owner appeal to the United States Court of Appeals for
the Federal Circuit in inter partes reexamination.

   The patent owner in a reexamination proceeding who is dissatisfied
with the decision of the Board of Patent Appeals and Interferences may,
subject to    1.979(e), appeal to the U.S. Court of Appeals for the
Federal Circuit. The appellant must take the following steps in such an
appeal:

   (1) In the U. S. Patent and Trademark Office file a timely written
notice of appeal directed to the Director in accordance with      1.302
and 1.304; and

   (2) In the Court, file a copy of the notice of appeal and pay the fee,
as provided for in the rules of the Court.

Concurrent Proceedings Involving Same Patent in inter partes
Reexamination

   1.985 Notification of prior or concurrent proceedings in inter partes
reexamination.

   (a) In any inter partes reexamination proceeding, the patent owner
shall call the attention of the Office to any prior or concurrent
proceedings in which the patent is or was involved, including but not
limited to interference, reissue, reexamination, or litigation and the
results of such proceedings.

   (b) Notwithstanding any provision of the rules, any person at any time
may file a paper in an inter partes reexamination proceeding notifying
the Office of a prior or concurrent proceedings in which the same patent
is or was involved, including but not limited to interference, reissue,
reexamination, or litigation and the results of such proceedings. Such
paper must be limited to merely providing notice of the other proceeding
without discussion of issues of the current inter partes reexamination
proceeding. Any paper not so limited will be returned to the sender.

   1.987 Suspension of inter partes reexamination proceeding due to
litigation.

   If a patent in the process of inter partes reexamination is or
becomes involved in litigation, the Director shall determine whether or
not to suspend the inter partes reexamination proceeding.

   1.989 Merger of concurrent reexamination proceedings.

   (a) If any reexamination is ordered while a prior inter partes
reexamination proceeding is pending for the same patent, a decision may
be made to merge the two proceedings or to suspend one of the two
proceedings. Where merger is ordered, the merged examination will
normally result in the issuance of a single reexamination certificate
under    1.997.

   (b) An inter partes reexamination proceeding filed under    1.913 which
is merged with an ex parte reexamination proceeding filed under    1.510
will result in the merged proceeding being governed by      1.902-1.997,
except that the rights of any third-party requester of the ex parte
reexamination shall be governed by      1.510-1.560.

   1.991 Merger of concurrent reissue application and inter partes
reexamination proceeding.

   If a reissue application and an inter partes reexamination proceeding
on which an order pursuant to    1.931 has been mailed are pending
concurrently on a patent, a decision may be made to merge the two
proceedings or to suspend one of the two proceedings. Where merger of a
reissue application and an inter partes reexamination proceeding is
ordered, the merged proceeding will be conducted in accordance with
1.171 through 1.179 and the patent owner will be required to place and
maintain the same claims in the reissue application and the inter partes
reexamination proceeding during the pendency of the merged proceeding.
In a merged proceeding the third-party requester may participate to the
extent provided under      1.902-1.997, except such participation shall
be limited to issues within the scope of inter partes reexamination. The
examiner's actions and any responses by the patent owner or third-party
requester in a merged proceeding will apply to both the reissue
application and the inter partes reexamination proceeding and be
physically entered into both files. Any inter partes reexamination
proceeding merged with a reissue application shall be terminated by the
grant of the reissued patent.

   1.993 Suspension of concurrent interference and inter partes
reexamination proceeding.

   If a patent in the process of inter partes reexamination is or
becomes involved in an interference, the Director may suspend the inter
partes reexamination or the interference. The Director will not consider
a request to suspend an interference unless a motion under    1.635 to
suspend the interference has been presented to, and denied by, an
administrative patent judge and the request is filed within ten (10)
days of a decision by an administrative patent judge denying the motion
for suspension or such other time as the administrative patent judge may
set.

   1.995 Third-party requester's participation rights preserved in
merged proceeding.

   When a third-party requester is involved in one or more proceedings
including an inter partes reexamination proceeding, the merger of such
proceedings will be accomplished so as to preserve the third-party
requester's right to participate to the extent specifically provided for
in these regulations. In merged proceedings involving different
requesters, any paper filed by one party in the merged proceeding shall
be served on all other parties of the merged proceeding.

Reexamination Certificate in inter partes Reexamination

   1.997 Issuance of inter partes reexamination certificate.

   (a) Upon the conclusion of an inter partes reexamination proceeding,
the Director will issue a certificate in accordance with 35 U.S.C. 316
setting forth the results of the inter partes reexamination proceeding
and the content of the patent following the inter partes reexamination
proceeding.

   (b) A certificate will be issued in each patent in which an inter partes
reexamination proceeding has been ordered under    1.931. Any statutory
disclaimer filed by the patent owner will be made part of the
certificate.

   (c) The certificate will be sent to the patent owner at the address as
provided for in    1.33(c). A copy of the certificate will also be sent
to the third-party requester of the inter partes reexamination
proceeding.

   (d) If a certificate has been issued which cancels all of the claims of
the patent, no further Office proceedings will be conducted with regard
to that patent or any reissue applications or any reexamination requests
relating thereto.

   (e) If the inter partes reexamination proceeding is terminated by the
grant of a reissued patent as provided in    1.991, the reissued patent
will constitute the reexamination certificate required by this section
and 35 U.S.C. 316.

   (f) A notice of the issuance of each certificate under this section will
be published in the Official Gazette.

March 30, 2000                                            Q. TODD DICKINSON
                                            Under Secretary of Commerce for
                                  Intellectual Property and Director of the
                                  United States Patent and Trademark Office