Revisions and Technical Corrections Affecting Requirements for Ex Parte, 16072-16086 [06-2962]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 71, Number 61 (Thursday, March 30, 2006)]
[Proposed Rules]
[Pages 16072-16086]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 06-2962]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 41

[Docket No.: PTO-P-2005-0016]
RIN 0651-AB77


Revisions and Technical Corrections Affecting Requirements for Ex 
Parte and Inter Partes Reexamination

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rule making.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing changes to the rules of practice relating to ex parte and 
inter partes reexamination. The Office is proposing to provide for a 
patent owner reply to a request for an ex parte reexamination or an 
inter partes reexamination prior to the examiner's decision on the 
request. The Office is also proposing to prohibit supplemental patent 
owner responses to an Office action in an inter partes reexamination 
without a showing of sufficient cause. The Office additionally proposes 
to designate the correspondence address for the patent as the correct 
address for all communications for patent owners in an ex parte 
reexamination or an inter partes reexamination, and to simplify the 
filing of reexamination papers by providing for the use of a single 
``mail stop'' address for the filing of substantially all ex parte 
reexamination papers (such is already the case for inter partes 
reexamination papers). The Office is further proposing to make 
miscellaneous clarifying changes as to terminology and applicability of 
the reexamination rules.
    Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before May 30, 2006. No public hearing 
will be held.

ADDRESSES: Comments should be sent by electronic mail over the Internet 
addressed to: AB77.comments@uspto.gov. Comments may also be submitted 
by mail addressed to: Mail Stop Comments--Patents, Commissioner for 
Patents, PO Box 1450, Alexandria, VA 22313-1450; or by facsimile to 
(571) 273-7710, marked to the attention of Kenneth M. Schor, Senior 
Legal Advisor. Although comments may be submitted by mail or facsimile, 
the Office prefers to receive comments via the Internet. If comments 
are submitted by mail, the Office prefers that the comments be 
submitted on a DOS formatted 3\1/2\ inch disk accompanied by a paper 
copy.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (https://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    The comments will be available for public inspection at the Office 
of Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy, currently located at Room MDW 07D74 of 
Madison West, 600 Dulany Street, Alexandria, Virginia 22313-1450, and 
will be available through anonymous file transfer protocol (ftp) via 
the Internet (address: https://www.uspto.gov). Since comments will be 
made available for public inspection, information that is not desired 
to be made public, such as an address or phone number, should not be 
included in the comments.

FOR FURTHER INFORMATION CONTACT: By telephone--Kenneth M. Schor, at 
(571) 272-7710 or Robert J. Spar at (571) 272-7700; by mail addressed 
to U.S. Patent and Trademark Office, Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, 
marked to the attention of Kenneth M. Schor; by facsimile transmission 
to (571) 273-7710 marked to the attention of Kenneth M. Schor; or by 
electronic mail message over the Internet addressed to 
kenneth.schor@uspto.gov.

SUPPLEMENTARY INFORMATION: The Office is proposing changes to the rules 
of practice relating to ex parte and inter partes as follows:
    Proposal I: To provide for a patent owner reply to a request for an 
ex parte reexamination or an inter partes reexamination prior to the 
examiner's decision on the request.
    Proposal II: To prohibit supplemental patent owner responses to an 
Office action in an inter partes reexamination without a showing of 
sufficient cause.
    Proposal III: To designate the correspondence address for the 
patent as the correct address for all notices, official letters, and 
other communications for patent owners in an ex parte reexamination or 
an inter partes reexamination. Also, to simplify the filing of 
reexamination papers by providing for the use of ``Mail Stop Ex Parte 
Reexam'' for the filing of all ex parte reexamination papers (not just 
ex parte reexamination requests), other than certain correspondence to 
the Office of the General Counsel.

[[Page 16073]]

    Proposal IV: To make miscellaneous clarifying changes as to the 
terminology and applicability of the reexamination rules, and to 
correct inadvertent errors in the text of certain reexamination rules.

Discussion of Proposals I through IV

    Proposal I. To Provide for a Patent Owner Reply to a Request for 
Reexamination Prior to Decision on the Request: Since the inception of 
reexamination, a patent owner whose patent is challenged by a third 
party request for reexamination has not been afforded an opportunity to 
comment on the request prior to the examiner's decision on the request. 
This is equally so for both ex parte reexamination and inter partes 
reexamination. Under Sec.  1.530(a), ``[e]xcept as provided in Sec.  
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 Sec.  1.515 or Sec.  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.'' 
Under Sec.  1.540, ``[n]o submissions other than the statement pursuant 
to Sec.  1.530 and the reply by the ex parte reexamination requester 
pursuant to Sec.  1.535 will be considered prior to examination.'' 
Under Sec.  1.939(b), [u]nless otherwise authorized, no paper shall be 
filed prior to the initial Office action on the merits of the inter 
partes reexamination.
    The rule making history for Sec.  1.530(a) addressed the Office's 
rationale for the regulatory prohibition of a patent owner response to 
a request (prior to the examiner's decision on the request) in a 
hearing report issued by the Office, which stated that ``several 
persons felt that the patent owner should be allowed to comment before 
the decision [on the request] under Sec.  1.515 is made. Providing for 
such a comment would delay the decision under Sec.  1.515 which must be 
made within three months * * *.'' See Rules of Practice in Patent 
Cases; Reexamination Proceedings, 46 FR 29176, 29179 (May 29, 1981) 
(final rule). In Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 
985 (Fed. Cir. 1985), the propriety of the Office's regulatory 
prohibition of a patent owner response to a request prior to the 
decision on the request was upheld by the U.S. Court of Appeals for the 
Federal Circuit (hereinafter--the Federal Circuit). The Office argued 
in Patlex that this regulatory prohibition was adopted in the interest 
of efficiency, in view of the three-month deadline set by Congress in 
35 U.S.C. 303. The Office pointed out that the only purpose of the 
decision on the request is to decide whether reexamination should go 
forward at all, not to decide how any new question of patentability 
ultimately will be answered. The Patlex court supported the Office in 
this matter based upon the agency's (Office's) expression of a need for 
administrative convenience.
    Recently, however, the Office initiated a program to process and 
examine all new reexamination proceedings in one Central Reexamination 
Unit (the CRU). This is expected to permit increased efficiency in 
deciding new requests for reexamination to the point where a patent 
owner response to a request (prior to the examiner's decision on the 
request) can be accommodated, while continuing to comply with the 
statutory mandate to decide requests for reexamination within three 
months. Accordingly, the Office is proposing to provide for a patent 
owner reply to a request for an ex parte reexamination or an inter 
partes reexamination prior to the examiner's decision on the request. 
Such a patent owner reply would address patentee concerns as to their 
current inability to address a request prior to an order. Further, the 
patent owner's input could improve the information/evidence and 
understanding of the issues before the examiner deciding the request. 
That input should serve the purpose of reducing improper/unnecessary 
orders and providing more timely patent owner responses on the record 
to third party allegations. This proposal should enable the Office to 
be better able to weed out those requests that do not raise a 
substantial question of patentability, prior to instituting a full-
blown proceeding. Bringing the issues to light earlier via such a 
patent owner response to the request should facilitate the 
reexamination process pursuant to special dispatch.
    As a final point, in order to address the statutory mandate to 
decide all requests for reexamination within three months, the content 
and time for filing the patent owner's response (to the request) will 
be strictly limited. This should enable the Office to comply with the 
statute, while obtaining the benefits of the patent owner's comments 
prior to deciding the request.
    This proposal involves providing new sections Sec.  1.512 and Sec.  
1.921, and revising Sec.  1.510(b), Sec.  1.515(a), Sec.  1.530(a), 
Sec.  1.915(b) and Sec.  1.923.
    Proposal II. To Prohibit Supplemental Patent Owner Responses to an 
Office Action Without a Showing of Sufficient Cause: The Office is 
proposing to amend Sec.  1.945 to provide that a patent owner 
supplemental response (which can be filed to address a third party 
requester's comments on patent owner's initial response to an Office 
action) will be entered only where the patent owner has made a showing 
of sufficient cause as to why the supplemental response should be 
entered.
    Pursuant to Sec.  1.937(b), an inter partes reexamination 
proceeding is ``conducted in accordance with Sec. Sec.  1.104 through 
1.116, the sections governing the application examination process * * * 
except as otherwise provided * * * '' Thus, a patent owner's response 
to an Office action is governed by Sec.  1.111. Prior to the revision 
of Sec.  1.111(a)(2) implemented via the final rule, Changes To Support 
Implementation of the United States Patent and Trademark Office 21st 
Century Strategic Plan, 69 FR 56482 (Sept. 21, 2004), 1287 Off. Gaz. 
Pat. Office 67 (Oct. 12, 2004) (final rule), a patent owner could, in 
effect, file an unlimited number of supplemental responses to an Office 
action for an inter partes reexamination proceeding, thereby delaying 
prosecution. The changes to Sec.  1.111(a)(2) made in the Strategic 
Plan final rule, in effect, addressed this undesirable consequence of 
the rules in inter partes reexamination by providing that a reply (or 
response, in reexamination) which is supplemental to a Sec.  1.111(b) 
compliant reply will not be entered as a matter of right (with the 
exception of a supplemental reply filed while action by the Office is 
suspended under Sec.  1.103(a) or (c)). Section 1.111(a)(2)(i), as 
implemented in the Strategic Plan final rule, however, also provides 
that ``the Office may enter'' a supplemental response to an Office 
action under certain conditions. Thus, a patent owner's supplemental 
response that provides additional information, or one that further 
amends the claims, could be argued to ``simplify the issues for 
appeal'' and thereby satisfy Sec.  1.111(a)(2)(i)(F), or the 
supplemental response might be limited to ``cancellation of claims'' 
(to satisfy Sec.  1.111(a)(2)(i)(A)), or ``adoption of the examiner 
suggestions'' (to satisfy Sec.  1.111(a)(2)(i)(B)). Even a supplemental 
response that answers the third party requester comments might, in some 
instances, be argued to ``simplify the issues for appeal.'' Whether or 
not the supplemental response should be entered is then a question to 
be decided by the Office. In order to fully inform both the Office and 
the requester (so that the requester can provide rebuttal in its 
comments) as to why patent owner deems a supplemental response to be

[[Page 16074]]

worthy of entry, it is proposed that the rules be revised to require a 
patent owner showing of sufficient cause why entry should be permitted 
to accompany any supplemental response by the patent owner. The showing 
of sufficient cause would be required to provide: (1) A detailed 
explanation of how the criteria of Sec.  1.111(a)(2)(i) is satisfied; 
(2) an explanation of why the supplemental response could not have been 
presented together with the original response to the Office action; and 
(3) a compelling reason to enter the supplemental response.
    This proposal would permit the entry of a supplemental response to 
an Office action where there is a valid reason for it, and a showing to 
that effect is made by the patent owner. At the same time, it would 
provide the Office and the requester with notice of patent owner's 
reasons for desiring entry and permit the requester to rebut patent 
owner's stated position.
    This proposal involves Sec.  1.945.
    Proposal III. Reexamination Correspondence: 1. The Patent Owner's 
Address of Record: Currently, all notices, official letters, and other 
communications for patent owners in a reexamination proceeding must be 
directed to the attorney or agent of record (see Sec.  1.33(c)) in the 
patent file at the address listed on the register of patent attorneys 
and agents maintained pursuant to Sec.  11.5 and Sec.  11.11 (unless 
there is no attorney or agent of record, in which case the patent 
owner(s) address(es) of record are used). The Office has been receiving 
reexamination filings where the request has been served on the patent 
owner at the correspondence address under Sec.  1.33(a) that is a 
correct address for the patent, rather than at the patent owner address 
prescribed in Sec.  1.33(c) for use in reexamination. This has been 
occurring because the Sec.  1.33(a) address is the address used for 
correspondence during the pendency of applications, as well as post-
grant correspondence in patents maturing from such applications. 
Further, even if a potential reexamination requester realizes that the 
address indicated by Sec.  1.33(c) is the proper patent owner address 
to use, patent practitioners occasionally move from one firm to 
another, and the potential reexamination requester is then faced with 
two (or more) Sec.  1.33(c) addresses for the practitioners of record; 
the requester must decide which practitioner address to serve. Finally, 
the Sec.  1.33(c) address might not be kept up-to-date, while a 
practitioner or patent owner is likely to be inclined to keep the Sec.  
1.33(a) address up-to-date for prompt receipt of notices as to the 
patent. The Office of Enrollment and Discipline regularly has mail 
returned because the register of patent attorneys and agents maintained 
pursuant to Sec.  11.5 and Sec.  11.11 is not up-to-date. Thus, the 
Sec.  1.33(a) correspondence address for the patent provides a better 
or more reliable option for the patent owner's address than does the 
register of patent attorneys and agents maintained pursuant to Sec.  
11.5 and Sec.  11.11 (the reexamination address for the patent owner 
presently called for by Sec.  1.33(c)).
    It is to be noted that a change to the correspondence address may 
be filed with the Office during the enforceable life of the patent, and 
the correspondence address will be used in any correspondence relating 
to maintenance fees unless a separate fee address has been specified. 
See Sec.  1.33(d). A review of randomly selected recent listings of 
inter partes reexamination filings reflected that all had an attorney 
or agent of record for the related patents. There were an average of 
18.6 attorneys or agents of record for the patents, and for those 
attorneys, an average of 3.8 addresses (according to the register of 
patent attorneys and agents maintained pursuant to Sec.  11.5 and Sec.  
11.11). Although for half of the patents, all of the attorneys or 
agents had the same address, one patent had 77 attorneys and agents of 
record, and the register reflects 18 different addresses for these 
practitioners. In such a patent with many different attorneys and 
agents of record, and many of the practitioners being in different 
states, mailing a notice related to a reexamination proceeding for the 
patent to an attorney or agent of record in the patented file, even the 
attorney or agent most recently made of record (e.g., the attorney with 
the highest registration number), is likely to result in correspondence 
not being received by the appropriate party. Since the correspondence 
address of the patent file is used for maintenance fee correspondence, 
if a fee address is not specified, patent owners already have an 
incentive to keep the correspondence address for a patented file up-to-
date.
    Given the choice of relying on either the correspondence address 
for the patent or the address for the attorney/agent of record per the 
register of patent attorneys and agents (as is presently the case), it 
is more reasonable to rely on the correspondence address for the 
patent. The patentee should be responsible for updating the 
correspondence address for the patent, and if the patentee does not, 
then the patentee should bear the risk of a terminated reexamination 
prosecution due to the failure to respond to an Office action sent to 
an obsolete address. Further, use of the correspondence address for the 
patent will provide a potential reexamination requester and the Office 
with one simple address to work with, and the requester and the Office 
will not be confused in the situations where attorneys move from firm 
to firm (as that has become more common). The correspondence address 
for the patents is available in public PAIR (Patent Application 
Information Retrieval), so that a requester need only click on the 
address button for the patent, and he/she will know what address to 
use.
    The present proposal would accordingly revise Sec.  1.33(c) to 
designate the correspondence address for the patent as the correct 
address for all notices, official letters, and other communications for 
patent owners in reexamination proceedings.
    If the present proposal is implemented, the correspondence address 
for any pending reexamination proceeding not having the same 
correspondence address as that of the patent file will automatically be 
changed, by rule, to that of the patent file. For any such proceeding, 
it would be strongly encouraged (at that point) that the patent owner 
should affirmatively file a Notification of Change of Correspondence 
Address in the reexamination proceeding to conform the address of the 
proceeding with that of the patent. While the correspondence address 
change would automatically be effected (by rule) even if the patent 
owner notification is not filed, such a patent owner notification would 
clarify the record, and would address the possibility that, absent such 
a patent owner notification, correspondence may inadvertently be mailed 
to an incorrect address causing a delay in the prosecution.
    This aspect of the proposal involves Sec.  1.33.
    2. Reexamination correspondence addressed to the Office: In the 
final rule Changes to Implement the 2002 Inter Partes Reexamination and 
Other Technical Amendments to the Patent Statute, 68 FR 70996 (Dec. 22, 
2003), 1278 Off. Gaz. Pat. Office 218 (Jan. 20, 2004), Sec.  1.1(c) was 
amended to provide separate mail stops for ex parte reexamination 
proceedings and inter partes reexamination proceedings. See Sec.  
1.1(c). As per that rule making, the mail stop for ex parte 
reexamination proceedings can only be used for the original request 
papers for ex parte reexamination. The new mail stop for inter partes 
reexamination, on the other hand, includes both original request papers 
and all subsequent

[[Page 16075]]

correspondence filed in the Office (other than correspondence to the 
Office of the General Counsel pursuant to Sec.  1.1(a)(3) and Sec.  
1.302(c)), because the Central Reexamination Unit (CRU) was, and is, 
the central receiving area for all inter partes reexamination 
proceeding papers. The CRU has now also become the central receiving 
area for all ex parte reexamination proceeding papers. Accordingly, it 
is proposed to simplify the filing of reexamination papers by 
permitting the use of ``Mail Stop Ex Parte Reexam'' for the filing of 
all ex parte reexamination follow-on papers (not just ex parte 
reexamination requests), other than correspondence to the Office of the 
General Counsel pursuant to Sec. Sec.  1.1(a)(3) and 1.302(c)).
    This aspect of the proposal involves Sec.  1.1(c).
    Correspondence relating to all reexamination proceedings is best 
handled at one central location where Office personnel have specific 
expertise in reexamination because of the unique nature of 
reexamination proceedings. That central location is the CRU.
    Proposal IV. Clarifying Changes as to Reexamination Rule 
Terminology and Applicability, and Correction of Inadvertent Errors in 
the Text of Certain Reexamination Rules: The Office is proposing 
miscellaneous clarifying changes as to the terminology and 
applicability of the reexamination rules. The rule changes of sub-parts 
1 and 2 below were proposed in the Changes To Support Implementation of 
the United States Patent and Trademark Office 21st Century Strategic 
Plan, 68 FR 53816 (Sept. 12, 2003), 1275 Off. Gaz. Pat. Office 23 (Oct. 
7, 2003) (notice of proposed rule making) (hereinafter the Strategic 
Plan Proposed Rule). The Office did not proceed with those changes in 
the final rule Changes To Support Implementation of the United States 
Patent and Trademark Office 21st Century Strategic Plan, 69 FR 56482 ( 
Sept. 21, 2004), 1287 Off. Gaz. Pat. Office 67 (Oct. 12, 2004) (final 
rule) (hereinafter the Strategic Plan Final Rule). The Office is re-
presenting those proposals after further consideration and in view of 
the changes somewhat more recently made by the final rule Rules of 
Practice Before the Board of Patent Appeals and Interferences 69 FR 
49960 (Aug. 12, 2004), 1286 Off. Gaz. Pat. Office 21 (Sept. 7, 2004) 
(final rule) (hereinafter, the Appeals final rule). The essential 
substance of all change proposals set forth in Proposal IV, sub-parts 1 
and 2, remains as it was in the Strategic Plan Proposed Rule. The four 
revisions proposed in Proposal IV are set forth as follows:
    1. It is proposed that the rules be amended to clarify that the 
patent owner's failure to file a timely response in an ex parte or 
inter partes reexamination proceeding will terminate the prosecution of 
the reexamination proceeding, but will not terminate or conclude the 
reexamination proceeding itself. It is the issuance and publication of 
a reexamination certificate that concludes the reexamination 
proceeding. This distinction is important, because a reexamination 
prosecution which is terminated may be reopened at the option of the 
Director where appropriate. For example, a rejection that was withdrawn 
during the proceeding may be reinstated after the prosecution has 
terminated where the propriety of that rejection has been reconsidered. 
In contrast, a reexamination proceeding which has been concluded is not 
subject to being reopened. After the reexamination proceeding has been 
concluded, the Office is not permitted to reinstate the exact same 
ground of rejection in a reexamination proceeding, where the same 
question of patentability is raised by the prior art that is the basis 
of the rejection. See Sec.  13105, part (a), of the Patent and 
Trademark Office Authorization Act of 2002, enacted in Public Law 107-
273, 21st Century Department of Justice Appropriations Authorization 
Act, 116 Stat. 1758 (2002).
    This distinction between terminating the prosecution of the 
reexamination proceeding, and the conclusion of the reexamination 
proceeding, was highlighted by the Federal Circuit decision of In re 
Bass, 314 F.3d 575, 577, 65 USPQ2d 1156, 1157 (Fed. Cir. 2003), wherein 
the Court indicated that:

    Until a matter has been completed, however, the PTO may 
reconsider an earlier action. See In re Borkowski, 505 F.2d 713, 
718, 184 USPQ 29, 32-33 (CCPA 1974). A reexamination is complete 
upon the statutorily mandated issuance of a reexamination 
certificate, 35 U.S.C. 307(a); the NIRC merely notifies the 
applicant of the PTO's intent to issue a certificate. A NIRC does 
not wrest jurisdiction from the PTO precluding further review of the 
matter.

    It is to be noted that both Notice of Intent to Issue Reexamination 
Certificate (NIRC) cover sheet forms, i.e., ex parte reexamination Form 
PTOL 469 and inter partes reexamination Form PTOL 2068, specifically 
state (in their opening sentences) that ``[p]rosecution on the merits 
is (or remains) closed in this * * * reexamination proceeding. This 
proceeding is subject to reopening at the initiative of the Office, or 
upon petition.'' This statement in both forms makes the point that the 
NIRC terminates the prosecution in the reexamination proceeding (if 
prosecution has not already been terminated, e.g., via failure to 
respond), but does not terminate or conclude the reexamination 
proceeding itself. Rather, it is the issuance and publication of the 
reexamination certificate that concludes the reexamination proceeding. 
The rules would be revised accordingly.
    Definitional Consideration: In the Strategic Plan Proposed Rule, 
the terminology used was that a patent owner's failure to file a timely 
response in a reexamination proceeding (and the issuance of the NIRC) 
would ``conclude'' the prosecution of the reexamination proceeding, but 
would not terminate the reexamination proceeding, and the issuance and 
publication of a reexamination certificate would ``terminate'' the 
reexamination proceeding. This usage of ``conclude'' and ``terminate'' 
has been reconsidered, however, and the usage of the terms has been 
reversed to be consistent with the way the Office defines 
``termination,'' as can be observed in the recent Appeals final rule 
(supra.). It is to be noted that the patent statute, in 35 U.S.C. 
307(a), states for ex parte reexamination (35 U.S.C. 316 contains an 
analogous statement for inter partes reexamination): ``In a 
reexamination proceeding under this chapter, when the time for appeal 
has expired or any appeal proceeding has terminated, the Director will 
issue and publish a certificate canceling any claim of the patent 
finally determined to be unpatentable, confirming any claim of the 
patent determined to be patentable, and incorporating in the patent any 
proposed amended or new claim determined to be patentable.'' (Emphasis 
added).
    Thus, after the appeal proceeding in the reexamination is 
terminated (which terminates the prosecution in the reexamination), the 
reexamination proceeding is concluded by the issuance and publication 
of the reexamination certificate.
    It is further observed that in the Appeals final rule, Sec.  
1.116(c) states that ``[t]he 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 
* * * reexamination prosecution from termination under Sec.  1.550(d) 
or Sec.  1.957(b) * * *.'' The use of ``termination of the 
prosecution'' where the reexamination proceeding has not concluded is 
consistent with the presentation in Sec.  1.116(c) in the Appeals final 
rule. As a further indication in the

[[Page 16076]]

Appeals final rule, Sec.  1.197(a) discusses the passing of 
jurisdiction over an application or patent under ex parte reexamination 
proceeding to the examiner after a decision by the Board of Patent 
Appeals and Interferences, and Sec.  1.197(b) then states that 
``[p]roceedings on an application are considered terminated by the 
dismissal of an appeal or the failure to timely file an appeal to the 
court or a civil action (Sec.  1.304) except * * *.'' Thus, the 
termination (of the appeal) does not signify the completion of an 
application or reexamination proceeding. Rather, the application then 
continues until patenting or abandonment, and the reexamination 
continues until issuance of the reexamination certificate; at that 
point these proceedings are concluded.
    The above changes would be directed to Sec. Sec.  1.502, 1.550, 
1.565(d), 1.570, 1.902, 1.953, 1.957, 1.958, 1.979, 1.991, 1.997, and 
41.4.
    2. Pursuant to 35 U.S.C. 307(a), ``when the time for appeal has 
expired or any appeal proceeding has terminated, the Director will 
issue and publish a certificate * * *'' (emphasis added) for an ex 
parte reexamination proceeding. Likewise, for an inter partes 
reexamination, 35 U.S.C. 316(a) states that ``when the time for appeal 
has expired or any appeal proceeding has terminated, the Director shall 
issue and publish a certificate'' (emphasis added). Accordingly, any 
reexamination proceeding is concluded when the reexamination 
certificate has been issued and published. It is at that point in time 
that the Office no longer has jurisdiction over the patent which has 
been reexamined.
    Sections 1.570 and 1.997 are the sections that implement the 
statutory ex parte and inter partes reexamination certificates, 
respectively. The titles of Sec. Sec.  1.570 and 1.997, as well as 
paragraphs (b) and (d) in both sections, currently refer to the 
issuance of the reexamination certificate, but fail to refer to the 
publication of the certificate. The titles of Sec. Sec.  1.570 and 
1.997, as well as paragraphs (b) and (d), are proposed to be revised to 
track the language of 35 U.S.C. 307 and 35 U.S.C. 316, and refer to 
both issuance and publication, to thereby make it clear in the rules 
when the reexamination proceeding is concluded. The other reexamination 
rules containing language referring to the issuance of the 
reexamination certificate would likewise be revised.
    The above changes would be directed to Sec. Sec.  1.502, 1.530, 
1.550, 1.565(c), 1.570, 1.902, 1.953, 1.957, 1.979, and 1.997.
    3. In Sec.  1.137, the introductory text of paragraphs (a) and (b) 
states ``a reexamination proceeding terminated under Sec. Sec.  
1.550(d) or 1.957(b) or (c).'' [Emphasis added]. As pointed out in the 
discussion of the first sub-proposal, when the patent owner fails to 
timely respond, it is actually the prosecution of the reexamination 
that is terminated under Sec.  1.550(d) for ex parte reexamination, or 
is terminated under Sec.  1.957(b) for inter partes reexamination. For 
the Sec.  1.957(c) scenario, however, the prosecution of the inter 
partes reexamination proceeding is not terminated when the patent owner 
fails to timely respond pursuant to Sec.  1.957(c). Rather, an Office 
action is issued to permit the third party requester to challenge the 
claims found patentable (as to any matter where the requester has 
preserved the right of such a challenge), and the prosecution is 
``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.'' Section 
1.957(c).
    It is proposed that the introductory text of Sec.  1.137(a) and 
Sec.  1.137(b) be revised to also provide for the situation where the 
prosecution is ``limited'' pursuant to Sec.  1.957(c) (and the 
prosecution of the reexamination is not ``terminated''). It is also 
proposed that Sec.  1.137(e) be revised consistent with Sec.  1.137(a) 
and Sec.  1.137(b).
    It is noted that Sec.  1.957(c) does, in fact, result in the 
``terminating'' of reexamination prosecution as to the non-patentable 
claims (under Sec.  1.957(b), on the other hand, prosecution is 
terminated in toto). It would be confusing, however, to refer to a 
termination of reexamination prosecution in the Sec.  1.957(c) 
scenario, since the limited termination as to the non-patentable claims 
could easily be confused with the termination of the entirety of the 
prosecution of Sec.  1.957(b). Accordingly, the Sec.  1.957(c) 
``limitation'' of the scope of the remaining claims is the language 
deemed better suited for use in the rules.
    The above changes would be directed to Sec. Sec.  1.8, 1.137 and 
41.4 (Sec. Sec.  1.8 and 41.4 contain language which tracks that of 
Sec.  1.137(a) and Sec.  1.137(b), and would thus be revised 
accordingly).
    4. Pursuant to Sec.  1.8(b), a remedy is provided for having 
correspondence considered to be timely filed, where correspondence was 
mailed or transmitted in accordance with paragraph Sec.  1.8(a) but not 
timely received in the Office, and ``the application is held to be 
abandoned or the proceeding is dismissed, terminated, or decided with 
prejudice.'' Such a remedy is not, however, explicitly provided for in 
an inter partes reexamination proceeding where correspondence was 
mailed or transmitted in accordance with paragraph Sec.  1.8(a), but 
not timely received in the Office. In that case, pursuant to Sec.  
1.957(c), the reexamination prosecution is not terminated, but is 
rather ``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.'' Therefore, it could appear that Sec.  1.8(b) does not apply to 
the Sec.  1.957(c) scenario. Therefore, Sec.  1.8(b) is proposed to be 
revised to explicitly provide the Sec.  1.8(b) remedy for the Sec.  
1.957(c) scenario as well.
    In addition, the certificate of mailing and transmission is 
available to an inter partes reexamination third party requester filing 
papers. See MPEP Sec. Sec.  2624 and 2666.05. Just as a Sec.  1.8(b) 
remedy would be provided for the patent owner in the Sec.  1.957(b) and 
(c) scenarios, it would also be provided for the requester in the Sec.  
1.957(a) scenario.
    The above change would be directed to Sec.  1.8.
    5. The final rule Rules of Practice Before the Board of Patent 
Appeals and Interferences 69 FR 49960 (Aug. 12, 2004), 1286 Off. Gaz. 
Pat. Office 21 (Sept. 7, 2004) (final rule) revised the reexamination 
appeal rules to remove and reserve Sec. Sec.  1.961 to 1.977. In 
addition, Sec. Sec.  1.959, 1.979, 1.993 were revised and new 
Sec. Sec.  41.60 through 41.81 were added. Revision of some of the 
reexamination rules referring to these sections was inadvertently not 
made. It is proposed to make those changes. Further, it is proposed 
that Sec. Sec.  1.510(f) and 1.915(c) be revised to change Sec.  
1.34(a) to Sec.  1.34, to update the sections to conform with the 
revision of Sec.  1.34 made in final rule Revision of Power of Attorney 
and Assignment Practice 69 FR 29865 (May 26, 2004) (final rule).
    It is further proposed that Sec.  1.33(c) be revised to add 
``Amendments and other papers filed in a reexamination proceeding on 
behalf of the patent owner must be signed by the patent owner, or if 
there is more than one owner by all the owners, or by an attorney or 
agent of record in the patent file, or by a registered attorney or 
agent not of record who acts in a representative capacity under the 
provisions of Sec.  1.34. Double correspondence with the patent owner 
or owners and the patent owner's attorney or agent, or with more than 
one attorney or agent, will not be undertaken.'' These two sentences 
were inadvertently deleted from Sec.  1.33(c) via the final rule 
Changes to Representation

[[Page 16077]]

of Others Before the United States Patent and Trademark Office, 69 FR 
35428, 35452 (June 24, 2004) (final rule).
    This aspect of the proposal involves Sec. Sec.  1.33(c), 1.510(f), 
1.915(c), 1.953(b), 1.983(a), and 1.991.

Section-by-Section Discussion

    Section 1.1: It is proposed, pursuant to Proposal III, to amend 
Sec.  1.1(c)(1) to provide for use of ``Mail Stop Ex Parte Reexam'' for 
the filing of all ex parte reexamination follow-on papers (not just ex 
parte reexamination requests), other than certain correspondence to the 
Office of the General Counsel. Section 1.1 would be amended by revising 
paragraph (c)(1) from its current reading ``Requests for ex parte 
reexamination (original request papers only) should be additionally 
marked `Mail Stop Ex Parte Reexam' '' to read ``Requests for ex parte 
reexamination (original request papers) and all subsequent ex parte 
reexamination correspondence filed in the Office, other than 
correspondence to the Office of the General Counsel pursuant to Sec.  
1.1(a)(3) and Sec.  1.302(c), should be additionally marked `Mail Stop 
Ex Parte Reexam.' ''
    Section 1.8: Section 1.8(b) is proposed to be amended, pursuant to 
Proposal IV, to recite ``In the event that correspondence is considered 
timely filed by being mailed or transmitted in accordance with 
paragraph (a) of this section, but not received in the * * * Office 
after a reasonable amount of time has elapsed from the time of mailing 
or transmitting of the correspondence * * * or the prosecution of a 
reexamination proceeding is terminated pursuant to Sec.  1.550(d) or 
Sec.  1.957(b) or limited pursuant to Sec.  1.957(c), or a requester 
paper is refused consideration pursuant to Sec.  1.957(a), the 
correspondence will be considered timely if the party who forwarded 
such correspondence * * *.''
    The language ``the prosecution of a reexamination proceeding is 
terminated'' (for Sec. Sec.  1.550(d) and 1.957(b)) clarifies that the 
reexamination proceeding is not concluded under Sec. Sec.  1.550(d) or 
1.957(b), but rather, the prosecution of the reexamination is 
terminated.
    The language ``or the prosecution of a reexamination proceeding is 
* * * limited pursuant to Sec.  1.957(c)'' more appropriately sets 
forth that the Sec.  1.8(b) remedy is applied to avoid the Sec.  
1.957(c) consequences of a patent owner failure to respond in an inter 
partes reexamination.
    The language ``or a requester paper is refused consideration 
pursuant to Sec.  1.957(a)'' more appropriately sets forth that the 
Sec.  1.8(b) remedy is applied to avoid the Sec.  1.957(a) consequences 
of a failure to file a requester paper in an inter partes 
reexamination.
    Section 1.17: Sections 1.17(l) and (m) are proposed to be revised, 
pursuant to Proposal IV, to clarify that a reexamination proceeding is 
not concluded under Sec. Sec.  1.550(d) or 1.957(b), but rather, the 
prosecution of a reexamination is terminated under Sec. Sec.  1.550(d) 
or 1.957(b), or reexamination prosecution is limited under Sec.  
1.957(c). No change is being proposed as to the fee amounts.
    Section 1.33: It is proposed that Sec.  1.33(c) be revised, 
pursuant to Proposal III, to replace ``the attorney or agent of record 
(see Sec.  1.34(b)) in the patent file at the address listed on the 
register of patent attorneys and agents maintained pursuant to 
Sec. Sec.  11.5 and 11.11 or, if no attorney or agent is of record, to 
the patent owner or owners at the address or addresses of record'' with 
``correspondence address.'' As proposed to be revised, all notices, 
official letters, and other communications for the patent owner or 
owners in a reexamination proceeding will be directed to the 
correspondence address for the patent. As previously discussed, a 
change to the correspondence address may be filed with the Office 
during the enforceable life of the patent. It is further proposed, 
pursuant to Proposal IV, that Sec.  1.33(c) be revised to add 
``Amendments and other papers filed in a reexamination proceeding on 
behalf of the patent owner must be signed by the patent owner, or if 
there is more than one owner by all the owners, or by an attorney or 
agent of record in the patent file, or by a registered attorney or 
agent not of record who acts in a representative capacity under the 
provisions of Sec.  1.34. Double correspondence with the patent owner 
or owners and the patent owner's attorney or agent, or with more than 
one attorney or agent, will not be undertaken.''
    Section 1.137: Sections 1.137(a), (b), and (e) are proposed to be 
amended, pursuant to Proposal IV, to more appropriately set forth the 
Sec. Sec.  1.550(d) and 1.957(b) consequences of the patent owner's 
failure to make a required response. To do so, the introductory text of 
Sec.  1.137(a) and Sec.  1.137(b) is proposed to be revised to recite 
``a reexamination prosecution becoming terminated under Sec. Sec.  
1.550(d) or 1.957(b)'' (emphasis added), rather than ``a reexamination 
proceeding becoming terminated under Sec. Sec.  1.550(d) or 1.957(b)'' 
(emphasis added). In Sec.  1.137(e), ``a concluded ex parte 
reexamination prosecution'' and ``a concluded inter partes 
reexamination prosecution'' is proposed to be inserted in place of ``a 
terminated ex parte reexamination proceeding'' and ``a terminated inter 
partes reexamination proceeding'', respectively.
    Sections 1.137(a), (b) and (e) are proposed to be amended to 
clarify that the reexamination proceedings under Sec.  1.957(c) 
referred to in Sec. Sec.  1.137(b) and (c) are limited as to further 
prosecution; the prosecution is not terminated. To make this 
clarification, the introductory text portions of Sec.  1.137(a) and 
Sec.  1.137(b) are proposed to be revised to recite that the 
prosecution is ``limited under Sec.  1.957(c),'' rather than 
``terminated.'' Section 1.137(e) is proposed to be revised to also 
refer to ``revival'' of ``an inter partes reexamination limited as to 
further prosecution.''
    Section 1.502: Section 1.502 is proposed to be amended, pursuant to 
Proposal IV, to state that the ``reexamination proceeding'' is 
``concluded by the issuance and publication of a reexamination 
certificate.'' That is the point at which citations (having an entry 
right in the patent) which were filed after the order of ex parte 
reexamination will be placed in the patent file.
    Section 1.510: It is proposed that Sec.  1.510(b)(5) be revised, 
pursuant to Proposal I, as a conformatory change with respect to new 
Sec.  1.512 discussed below. In order to provide the patent owner with 
a maximized amount of time to file a reply under Sec.  1.512 to a third 
party request, the request must be served on the patent owner by 
facsimile transmission, personal service (courier) or overnight 
delivery, as opposed to first class mail. Accordingly, Sec.  
1.510(b)(5) would be revised to require that the request include a 
certification in accordance with Sec.  1.248(b) by the third party 
requester that a copy of the request was served in its entirety on the 
patent owner at the address as provided for in Sec.  1.33(c) by 
facsimile transmission, personal service (courier) or overnight. The 
name and address of the party served must be indicated. If service on 
the patent owner was not possible, then a duplicate copy must be 
supplied to the Office. A filing date will not be granted to the 
request until either the certification by the requester is received, or 
the Office serves the supplied duplicate copy on the patent owner.
    It is further proposed that Sec.  1.510(f) be revised, pursuant to 
Proposal IV, to change Sec.  1.34(a) to Sec.  1.34. This change would 
update the section to conform with the revision of Sec.  1.34 made in 
Revision of Power of Attorney and Assignment Practice 69 FR 29865 (May 
26, 2004) (final rule).

[[Page 16078]]

    Section 1.512: Pursuant to Proposal I, it is proposed to provide 
new Sec.  1.512 to provide for a patent owner reply to a request for an 
ex parte reexamination prior to the examiner's decision on the request.
    Section 1.512(a) would permit a reply to a third party ex parte 
reexamination request under Sec.  1.510 to be filed by the patent owner 
within thirty days from the date of service of the request on the 
patent owner. Since the statute requires that the decision on the 
request be issued within three months following the filing of a request 
for reexamination, this thirty-day period is not extendable. It is 
strongly encouraged that any patent owner reply to a request be faxed 
directly to the CRU to ensure receipt and matching with the 
reexamination proceeding prior to the examiner's decision on the 
request.
    It is to be noted that this provision for patent owner reply to a 
request does not apply to Director ordered reexaminations and patent 
owner requested reexaminations. It does not apply to Director ordered 
reexaminations, since there is no request for reexamination. It does 
not apply to patent owner requested reexaminations, since the patent 
owner can place all of its comments in its request.
    Section 1.512(a) would also require that any reply to a request by 
the patent owner must be served upon the third party requester in 
accordance with Sec.  1.248. Service on the requester of all patent 
owner papers is required in a third party requested reexamination.
    Section 1.512(b) would require (1) that the total reply to the 
request not exceed fifty total pages in length excluding evidence and 
reference materials such as prior art references, (2) that the form of 
the reply must be in accordance with the requirements of Sec.  1.52, 
and (3) that the reply must not include any proposed amendment of the 
claims. Fifty pages is deemed a sufficient upper limit for the patent 
owner's rebuttal of the requester's case, and an excessive length would 
only delay the process. Section 1.512(b) would also require that the 
reply not include any proposed amendment of the claims. The 
determination on whether to order reexamination is made on the patent 
claims as they exist at the filing of the request; thus there is no 
need for an amendment at this point in the process, and again, an 
amendment would only delay the process.
    Section 1.512(c) would provide that the reply will be considered 
only to the extent that it relates to the issues raised in the request 
for reexamination. Although a reply that does not solely relate to the 
issues raised in the request will not be returned to the patent owner, 
any portion of the reply that does not relate to the issues raised in 
the request will not be considered, and comments will not be provided 
by the Office as to what was not considered.
    Section 1.512(c) would further provide for the returning or 
discarding of the reply papers, if the reply to the request: is not 
timely filed, fails to comply with Sec.  1.512(b), or fails to include 
a certification that the reply was served upon the requester in 
accordance with Sec.  1.248. In these instances, the reply will be 
returned to the patent owner or discarded (at the Office's option) 
without consideration. Further, there will be no opportunity to file a 
supplemental reply, given the time constraints discussed above.
    Section 1.512(d) would provide that the third party requester may 
not file a paper responsive to the patent owner reply to the request, 
and that any such paper will be returned to the requester or discarded 
(at the Office's option) without consideration. There is no need for a 
further requester paper at this point, since, if reexamination is 
denied, third party requester will continue to have (pursuant to Sec.  
1.515(c)) the right to seek review by a petition under Sec.  1.181 
within one month of the mailing date of the examiner's determination 
refusing reexamination. At that point, the requester can address the 
patent owner reply to the request.
    Section 1.515(a): Section 1.515(a) is proposed to be amended, 
pursuant to Proposal IV, as a conformatory change with respect to new 
Sec.  1.512. Section 1.515(a) would be revised to state that the 
examiner will consider any patent owner reply under Sec.  1.512 
together with the request for reexamination, in determining whether to 
grant reexamination. The first sentence of Sec.  1.515(a) would read: 
``Within three months following the filing date of a request for an ex 
parte reexamination under Sec.  1.510, an examiner will consider the 
request and any patent owner reply under Sec.  1.512 and determine 
whether or not a substantial new question of patentability affecting 
any claim of the patent is raised * * *.'' The bold shows the added 
text.
    Section 1.530: Section 1.530(a) is proposed to be amended, pursuant 
to Proposal I as a conformatory change with respect to new Sec.  1.512. 
Currently, Sec.  1.530(a) provides: ``Except as provided in Sec.  
1.510(e), no statement or other response by the patent owner * * * 
shall be filed prior to the determinations made in accordance with 
Sec.  1.515 or Sec.  1.520.'' Since the patent owner would be permitted 
to file, prior to the determination made in accordance with Sec.  
1.515, a reply to a third party ex parte reexamination request under 
Sec.  1.510 if proposed new Sec.  1.512 is adopted, Sec.  1.530(a) 
would be revised to provide: ``Unless otherwise authorized, 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 Sec.  1.515 or Sec.  1.520.'' This ``unless 
otherwise authorized'' language is the same as is used in the inter 
partes reexamination analogous provision Sec.  1.939. In addition, the 
disposition of the unauthorized paper would be explicitly set forth in 
the Sec.  1.530(a), i.e., the paper will be returned or discarded at 
the Office's option.
    Section 1.530(k) is proposed to be amended, pursuant to Proposal 
IV, to state that proposed amendments in ex parte or inter partes 
reexamination are not effective until the reexamination certificate is 
both ``issued and published'' (emphasis added) to conform Sec.  
1.530(k) with the language of 35 U.S.C. 307.
    Section 1.550: Section 1.550(d) is proposed to be amended, pursuant 
to Proposal IV, to recite that ``[i]f the patent owner fails to file a 
timely and appropriate response to any Office action or any written 
statement of an interview required under Sec.  1.560(b), the 
prosecution in the ex parte reexamination proceeding will be a 
terminated prosecution, and the Director will proceed to issue and 
publish a certificate concluding the reexamination proceeding under 
Sec.  1.570 * * *'' (emphasis added.). This makes it clear that the 
patent owner's failure to timely file a required response (or interview 
statement) will result in the terminating of prosecution of the 
reexamination proceeding, but will not conclude the reexamination 
proceeding. It is to be noted that the prosecution will be a terminated 
prosecution as of the day after the response was due and not timely 
filed. In this instance, the NIRC will be subsequently issued; however, 
it will not be the instrument that operates to terminate the 
prosecution, since that will have already automatically occurred upon 
the failure to respond. Further, ``issued and published'' is used to 
conform Sec.  1.550(d) with the language of 35 U.S.C. 307.
    Section 1.565: Pursuant to Proposal IV, it is proposed that Sec.  
1.565(c) be amended to set forth that consolidated ex parte 
reexamination proceedings will result in the issuance and publication 
of a single certificate under Sec.  1.570. As pointed out above, this 
tracks the

[[Page 16079]]

statutory language. It is further proposed that Sec.  1.565(d) be 
amended to make it clear that the issuance of a reissue patent for a 
merged reissue-reexamination proceeding effects the conclusion of the 
reexamination proceeding. This is distinguished from the termination of 
the reexamination prosecution, as pointed out above. As a further 
technical change, it is proposed to change ``consolidated'' in Sec.  
1.565(c) to ``merged,'' for consistency with the terminology used in 
Sec.  1.565(d). There is no difference in the meaning of the two terms, 
and the use of different terms in the two subsections is confusing. In 
addition, in Sec.  1.565(d), it is proposed to replace ``normally'' 
with ``usually,'' as ``normally'' is deemed an inadvertent 
inappropriate choice of terminology. The same term (``usually'') would 
be added to Sec.  1.565(c). It is to be noted that there are instances 
where the Office does not consolidate or merge an ongoing ex parte 
reexamination proceeding with a subsequent reexamination or reissue 
proceeding, which are addressed on a case-by-case basis. The following 
are examples. If the prosecution in an ongoing ex parte reexamination 
proceeding has terminated (e.g., by the issuance of a Notice of Intent 
to Issue Reexamination Certificate), the ex parte reexamination 
proceedings will generally not be consolidated or merged with a 
subsequent reexamination or reissue proceeding. If an ongoing ex parte 
reexamination proceeding is ready for decision by the Board of Patent 
Appeals and Interferences, or is on appeal to the U.S. Court of Appeals 
for the Federal Circuit, it would be inefficient (and contrary to the 
statutory mandate for special dispatch) to ``pull back'' the ongoing ex 
parte reexamination proceeding for merger with a subsequent 
reexamination or reissue proceeding. As a final example, an ongoing ex 
parte reexamination proceeding might be directed to one set of claims 
for which a first accused infringer (with respect to the second set) 
has filed the ongoing request for reexamination. A later reexamination 
request might then be directed to a different set of claims for which a 
second accused infringer (with respect to the second set) has filed the 
request. In this instance, where there are simply no issues in common, 
merger would serve only to delay the resolution of the first 
proceeding, representing a harm to the reexamination system. If 
reexamination is to act as an effective alternative to litigation, the 
ability to decide the question of whether to merge/consolidate based on 
the merits of a particular fact pattern must be reserved to the Office.
    Section 1.570: Pursuant to Proposal IV, it is proposed that the 
heading of Sec.  1.570 and Sec.  1.570(a) be amended to make it clear 
that the issuance and publication of the ex parte reexamination 
certificate effects the conclusion of the reexamination proceeding. The 
failure to timely respond, or the issuance of the NIRC, do not conclude 
the reexamination proceeding. Section 1.570, paragraphs (b) and (d), 
would be amended to recite that the reexamination certificate is both 
issued and published for consistency with the language of 35 U.S.C. 
307.
    Section 1.902: Pursuant to Proposal IV, it is proposed to amend 
Sec.  1.902 to state that the ``reexamination proceeding'' is 
``concluded by the issuance and publication of a reexamination 
certificate.'' That is the point at which citations (having a right to 
entry in the patent) which were filed after the order of inter partes 
reexamination will be placed in the patent file.
    Section 1.915: It is proposed that Sec.  1.915(b)(6) be revised, 
pursuant to Proposal I, as a conformatory change with respect to new 
Sec.  1.921 discussed below. In order to provide the patent owner with 
a maximized amount of time to file a reply under Sec.  1.921 to the 
third party's request, the request must be served on the patent owner 
by facsimile transmission, personal service (courier) or overnight 
delivery, as opposed to first class mail. Accordingly, Sec.  
1.915(b)(6) would be revised to require that the request include a 
certification in accordance with Sec.  1.248(b) by the third party 
requester that a copy of the request was served in its entirety on the 
patent owner at the address as provided for in Sec.  1.33(c) by 
facsimile transmission, personal service (courier) or overnight. The 
name and address of the party served must be indicated. If service on 
the patent owner was not possible, then a duplicate copy must be 
supplied to the Office. A filing date will not be granted to the 
request until either the certification by the requester is received, or 
the Office serves the supplied duplicate copy on the patent owner.
    Pursuant to Proposal IV, it is proposed that Sec.  1.915(c) be 
revised to change Sec.  1.34(a) to Sec.  1.34. This change would update 
the section to conform with the revision of Sec.  1.34 made in Revision 
of Power of Attorney and Assignment Practice 69 FR 29865 (May 26, 2004) 
(final rule).
    Section 1.921: Pursuant to Proposal I, it is proposed to provide 
new Sec.  1.921 to provide for a patent owner reply to a request for an 
inter partes reexamination prior to the examiner's decision on the 
request.
    Section 1.921(a) would permit a reply to a third party inter partes 
reexamination request under Sec.  1.915 to be filed by the patent owner 
within thirty days from the date of service of the request on the 
patent owner. Since the statute requires that the decision on the 
request be issued within three months following the filing of a request 
for reexamination, this thirty-day period is not extendable. It is 
strongly encouraged that any patent owner reply to a request be faxed 
directly to the CRU or hand-carried to the CRU, to ensure receipt and 
matching with the reexamination proceeding prior to the examiner's 
decision on the request.
    It is to be noted that this provision for a patent owner reply to a 
request does not apply to Director ordered reexaminations and patent 
owner requested reexaminations, since there cannot be a Director 
ordered inter partes reexamination or a patent owner requested inter 
partes reexamination.
    Section 1.921(a) would also require that any reply to a request by 
the patent owner must be served upon the third party requester in 
accordance with Sec.  1.248. Service on the requester of all patent 
owner papers is required in any inter partes reexamination.
    Section 1.921(b) would require (1) that the entire reply to the 
request not exceed 50 total pages in length excluding evidence and 
reference materials such as prior art references, (2) that the form of 
the reply must be in accordance with the requirements of Sec.  1.52, 
and (3) that the reply must not include any proposed amendment of the 
claims. Fifty pages is deemed a sufficient upper limit for the patent 
owner's rebuttal of the requester's case, and an excessive length would 
only delay the process. Section 1.921(b) would also require that the 
reply not include any proposed amendment of the claims. The 
determination on whether to order reexamination is made on the patent 
claims as they exist at the filing of the request; thus there is no 
need for an amendment at this point in the process, and again, an 
amendment would only delay the process.
    Section 1.921(c) would provide that the reply will be considered 
only to the extent that it relates to the issues raised in the request 
for reexamination. Although a reply that does not solely relate to the 
issues raised in the request will not be returned to the patent owner, 
any portion of the reply that does not relate to the issues raised in 
the request will not be considered, and comments

[[Page 16080]]

will not be provided by the Office as to what was not considered.
    Section 1.921(c) would further provide for the returning or 
discarding of the reply papers if the reply to the request: Is not 
timely filed, fails to comply with Sec.  1.921(b), or fails to include 
a certification that the reply was served upon the requester in 
accordance with Sec.  1.248. In these instances, the reply will be 
returned to the patent owner or discarded (at the Office's option) 
without consideration. Further, there will be no opportunity to file a 
supplemental reply, given the time constraints discussed above.
    Section 1.921(d) would provide that the third party requester may 
not file a paper responsive to the patent owner reply to the request, 
and that any such paper will be returned to the requester or discarded 
(at the Office's option) without consideration. There is no need for a 
further requester paper at this point, since, if reexamination is 
denied, the third party requester will continue to have (pursuant to 
Sec.  1.927) the right to seek review by a petition under Sec.  1.181 
within one month of the mailing date of the examiner's determination 
refusing reexamination. At that point, the requester can address the 
patent owner reply to the request.
    Section 1.923: Section 1.923 is proposed to be amended, pursuant to 
Proposal I, as a conformatory change with respect to new Sec.  1.921. 
Section 1.923 would be revised to state that the examiner will consider 
any patent owner reply under Sec.  1.921 together with the request for 
reexamination, in determining whether to grant reexamination. In 
addition, in the first sentence, ``Sec.  1.919'' would be changed to 
``Sec.  1.915,'' since it is Sec.  1.915 that provides for the request; 
Sec.  1.919 provides for the filing date of the request.
    Section 1.945: Currently, Sec.  1.945 provides that ``[t]he patent 
owner will be given at least thirty days to file a response to any 
Office action on the merits of the inter partes reexamination.'' 
Pursuant to Proposal II, it is proposed that Sec.  1.945 be revised to 
address the filing of a supplemental response to an Office action. As 
it is proposed to revise Sec.  1.945, any supplemental response to an 
Office action would be entered only where the supplemental response is 
accompanied by a showing of sufficient cause why the supplemental 
response should be entered. The showing of sufficient cause would be 
required to provide: (1) A detailed explanation of how the requirements 
of Sec.  1.111(a)(2)(i) are satisfied; (2) an explanation of why the 
supplemental response could not have been presented together with the 
original response to the Office action; and (3) a compelling reason to 
enter the supplemental response.
    The decision on the sufficiency of the showing will not be issued 
until after receipt of requester comments under Sec.  1.947 on the 
supplemental response, or the expiration of the 30-day period for 
requester comments (whichever comes first). The decision would be 
communicated to the parties either prior to, or with, the next Office 
action on the merits, as is deemed appropriate for the handling of the 
case.
    A showing of sufficient cause will not be established by an 
explanation that the supplemental response is needed to address the 
requester's comments (on patent owner's response), and could not have 
been presented together with the original response because it was not 
known that requester would raise a particular point. The inter partes 
reexamination statute (35 U.S.C. 314) provides for the patent owner to 
respond to an Office action, and the requester to comment on that 
response. There is no intent in the statute to provide the patent owner 
with a chance to file a supplemental response to address the 
requester's comments.
    It is pointed out that no corresponding rule revision is needed in 
ex parte reexamination, since there is no third party requester comment 
on a patent owner response (that a patent owner will wish to address), 
and Sec.  1.111(a)(2) will adequately deal with patent owner 
supplemental responses.
    Section 1.953: Revision is proposed pursuant to Proposal IV. 
Section 1.953(b) states ``Any appeal by the parties shall be conducted 
in accordance with Sec. Sec.  1.959-1.983.'' This reference to 
Sec. Sec.  1.959-1.983 is not correct, as some of the referenced rules 
have been deleted and others added. Instead of revising the incorrect 
reference, the entire sentence is proposed to be deleted as being out 
of place in Sec.  1.953, which is not directed to the appeal process, 
but rather an Office action notifying parties of the right to appeal.
    Section 1.953(c) is proposed to be amended, pursuant to Proposal 
IV, to state that if a notice of appeal is not timely filed after a 
Right of Appeal Notice, then ``prosecution in the inter partes 
reexamination proceeding will be terminated.'' This will not, however, 
conclude the reexamination proceeding.
    The subheading preceding Sec.