Revisions and Technical Corrections Affecting Requirements for Ex Parte, 18892-18907 [E7-7202]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 72, Number 72 (Monday, April 16, 2007)]
[Rules and Regulations]
[Pages 18892-18907]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E7-7202]


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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, Department of 
Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
revising the rules of practice relating to ex parte and inter partes 
reexamination. The Office is designating 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 simplifying 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 revising the rules to 
prohibit supplemental patent owner responses to an Office action in an 
inter partes reexamination proceeding without a showing of sufficient 
cause. Finally, the Office is making miscellaneous clarifying changes 
as to terminology and applicability of the reexamination rules. The 
Office is not implementing its proposal (that was set forth in the 
proposed rule making) to newly provide for a patent owner reply to a 
request for reexamination, prior to the Office's decision on the 
request.

DATES: Effective Date: May 16, 2007.
    Applicability Date: The changes in this final rule apply to any 
reexamination proceeding (ex parte or inter partes) which is pending 
before the Office as of May 16, 2007 and to any reexamination 
proceeding which is filed after that date.

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

SUPPLEMENTARY INFORMATION: The Office is revising the rules of practice 
relating to ex parte and inter partes reexamination as follows:
    I: Designating 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, simplifying 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.
    II: Prohibiting supplemental patent owner responses to an Office 
action in an inter partes reexamination without a showing of sufficient 
cause.
    III: Making miscellaneous clarifying changes as to the terminology 
and applicability of the reexamination rules, and correcting 
inadvertent errors in the text of certain reexamination rules.

I. Reexamination Correspondence

    Subpart 1--The Patent Owner's Address of Record: Section 1.33(c) 
has been revised to designate the correspondence address for the patent 
to be reexamined, or being reexamined, as the correct address for all 
notices, official letters, and other communications for patent owners 
in reexamination proceedings. Prior to this revision to Sec.  1.33(c), 
all notices, official letters, and other communications for patent 
owners in a reexamination proceeding had been directed to the attorney 
or agent of record in the patent file at the address listed on the 
register of patent attorneys and agents maintained by the Office of 
Enrollment and Discipline (OED) pursuant to Sec.  11.5 and Sec.  11.11 
(hereinafter, the ``attorney or agent of record register address'').
    The correspondence address for any pending reexamination proceeding 
not having the same correspondence address as that of the patent is, by 
way of this revision to Sec.  1.33(c), automatically changed to that of 
the patent file--as of the effective date of this Notice. For any such 
proceeding, it is strongly encouraged that the patent owner 
affirmatively file a Notification of Change of Correspondence Address 
in the reexamination proceeding and/or the patent to conform the 
address of the proceeding with that of the patent and to clarify the 
record as to which address should be used for correspondence. While the 
correspondence address change for the reexamination proceeding is 
automatically effected (by rule) even if the patent owner notification 
is not filed, such a patent owner notification clarifies the record, 
and addresses 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 revision to Sec.  1.33(c) is based on the following: (1) Prior 
to the revision, the Office had received reexamination filings where 
the request had been served on the patent owner at the correspondence 
address under Sec.  1.33(a) that was the correct address for the 
patent, rather than at the attorney or agent of record register address 
that was the previously prescribed (prior to the present rule revision) 
correspondence address in Sec.  1.33(c) for use in reexamination. This 
occurred because the Sec.  1.33(a) address was, and is, the address 
used for correspondence during

[[Page 18893]]

the pendency of applications, as well as post-grant correspondence in 
patents maturing from such applications. (2) Further, even if a 
potential reexamination requester realized that the attorney or agent 
of record register address was the proper patent owner address to use, 
patent practitioners occasionally move from one firm to another, and a 
potential reexamination requester was then faced with two (or more) 
Sec.  1.33(c) addresses for the practitioners of record; the requester 
then had to decide which practitioner to serve. (3) Finally, the 
``attorney or agent of record register address'' might not be kept up-
to-date. In this regard, the OED 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. On the other hand, a 
practitioner or patent owner was, and is, likely to be inclined to keep 
the Sec.  1.33(a) address up-to-date for prompt receipt of notices 
regarding the patent. Thus, the correspondence address for the patent 
provides a better or more reliable option for the patent owner's 
address than does the address in the register of patent attorneys and 
agents maintained by OED pursuant to Sec.  11.5 and Sec.  11.11 (which 
was the reexamination address for the patent owner called for by Sec.  
1.33(c) prior to the present revision of Sec.  1.33(c)).
    As was pointed out in the notice of proposed rule making (Revisions 
and Technical Corrections Affecting Requirements for Ex Parte and Inter 
Partes Reexamination, 71 FR 16072 (March 30, 2006) 1305 Off. Gaz. Pat. 
Office 132 (April 25, 2006)), 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 or agents, 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 in 
different states, mailing a notice related to a reexamination 
proceeding for the patent to the OED register address of an attorney or 
agent of record in the patented file, even the attorney or agent most 
recently made of record, is likely to result in correspondence not 
being received by the appropriate party (prior to the present rule 
change, the notice would have been mailed to the first-listed attorney 
or agent of record).
    Since the correspondence address of the patent file is used for 
maintenance fee correspondence where a fee address is not specified, 
patent owners already have an incentive to keep the correspondence 
address for a patent 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 was the case prior to the present revision of Sec.  
1.33(c)), it is more reasonable to rely on the correspondence address 
for the patent. The patentee is responsible for updating the 
correspondence address for the patent, and if the patentee does not, 
then the patentee appropriately bears 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 provides both a potential reexamination 
requester and the Office with one simple address to work with, and the 
requester and the Office should not be confused in the situations where 
attorneys move from firm to firm (as that has become more common). The 
correspondence address for the patent is available in public PAIR 
(Patent Application Information Retrieval) at the Office's Web site 
www.uspto.gov, so that a requester need only click on the address 
button for the patent, and he/she will know what address to use.
    Subpart 2--Reexamination correspondence addressed to the Office: 
Section 1.1(c) is revised to prescribe 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 correspondence to the 
Office of the General Counsel pursuant to Sec.  1.1(a)(3) and Sec.  
1.302(c).
    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. As per that rule making, the mail stop for ex parte 
reexamination proceedings could only be used for the original request 
papers for ex parte reexamination. The new mail stop for inter partes 
reexamination, on the other hand, was to be used for both original 
request papers and all subsequent 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 still 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, the filing of ex parte reexamination 
papers is now simplified by revising Sec.  1.1(c) to require the use of 
``Mail Stop Ex Parte Reexam'' for the filing of all ex parte 
reexamination papers (original request papers and all subsequent 
correspondence), other than correspondence to the Office of the General 
Counsel pursuant to Sec.  1.1(a)(3) and Sec.  1.302(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.

II. To Prohibit Supplemental Patent Owner Responses to an Office Action 
Without a Showing of Sufficient Cause

    The Office is amending 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 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

[[Page 18894]]

undesirable consequence of the rules in 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, provides that ``the Office may enter'' a supplemental response to 
an Office action under certain conditions. Whether or not the 
supplemental response should be entered, based on the individual 
circumstances for submission of a supplemental response is 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 
worthy of entry, Sec.  1.945 has been 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 must 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 was not presented together with the 
original response to the Office action; and (3) a compelling reason to 
enter the supplemental response. It is to be noted that in some 
instances, where there is a clear basis for the supplemental response, 
this three-prong showing may be easily satisfied. Thus, for example, 
the patent claim text may have been incorrectly reproduced, where a 
patent claim is amended in the original response. In such an instance, 
the patent owner need only point to the Sec.  1.111(a)(2)(i)(E) 
provision for correction of informalities (e.g., typographical errors), 
and state that the incorrect reproduction of the claim was not noted in 
the preparation of the original response. The compelling reason to 
enter the supplemental response is implicit in such a statement, as the 
record for the proceeding certainly must be corrected as to the 
incorrect reproduction of the claim.
    This revision permits 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 provides 
both the Office and the requester with notice of patent owner's reasons 
for desiring entry, and it permits the requester to rebut patent 
owner's stated position.
    It is to be noted that any requester comments filed after a patent 
owner response to an Office action must be filed ``within 30 days after 
the date of service of the patent owner's response.'' 35 U.S.C. 
314(b)(2). Thus, where the patent owner files a supplemental response 
to an Office action, the requester would be well advised to file any 
comments deemed appropriate within 30 days after the date of service of 
the patent owner's supplemental response to preserve requester's 
comment right, in the event the Office exercises its discretion to 
enter the supplemental response. (The requester's comments may address 
whether the patent owner showing is adequate, in addition to addressing 
the merits of the supplemental response.) If the patent owner's 
supplemental response is not entered by the Office, then both the 
supplemental response, and any comments following that supplemental 
response, will either be returned to parties or discarded as the Office 
chooses in its sole discretion. If the supplemental response and/or 
comments were scanned into the electronic Image File Wrapper (IFW) for 
the reexamination proceeding, and thus, the papers cannot be physically 
returned or discarded, then the supplemental response and/or comments 
entries will be marked ``closed'' and ``non-public,'' and they will not 
constitute part of the record of the reexamination proceeding. Such 
papers will not display in the Office's image file wrapper that is made 
available to the public, patent owners, and representatives of patent 
owners, i.e., they will not display in PAIR (Patent Application 
Information Retrieval) at the Office's Web site https://www.uspto.gov.

III. Clarifying Changes as to Reexamination Rule Terminology and 
Applicability, and Correction of Inadvertent Errors in the Text of 
Certain Reexamination Rules

    The Office is making miscellaneous clarifying changes as to the 
terminology and applicability of the reexamination rules. The rule 
changes of sub-parts 1 and 2 below were originally 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) (proposed rule) 
(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 then re-presented those proposals in 
Revisions and Technical Corrections Affecting Requirements for Ex Parte 
and Inter Partes Reexamination, 71 FR 16072 (March 30, 2006) 1305 Off. 
Gaz. Pat. Office 132 (April 25, 2006) (proposed rule) after further 
consideration and in view of the changes 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 the changes set forth in sub-parts 1 and 2, remains as 
originally proposed in the Strategic Plan Proposed Rule.
    The four types (sub-parts) of revisions are explained as follows:
    Sub-part 1. The rules are amended to clarify that ``conclusion'' of 
a reexamination ``proceeding'' takes place when the reexamination 
certificate is issued and published, while ``termination'' of the 
``prosecution'' of the proceeding takes place when the patent owner 
fails to file a timely response in an ex parte or inter partes 
reexamination proceeding, or a Notice of Intent to Issue Reexamination 
Certificate (NIRC) is issued, whichever occurs first. This distinction 
is important, because a reexamination prosecution that 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 that has been concluded is not subject to being reopened. 
After the reexamination proceeding has been concluded, the Office is 
not permitted to reinstate the identical ground of rejection in a 
subsequent reexamination proceeding, when the same question of 
patentability raised by the prior art in the concluded proceeding is 
the basis of the rejection. See section 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

:
[[Page 18895]]


    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.

    Each of the Notice of Intent to Issue Reexamination Certificate 
cover sheet forms (ex parte reexamination Form PTOL 469 and inter 
partes reexamination Form PTOL 2068) specifically states (in its 
opening sentence) 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 are 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: ``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). 35 U.S.C. 316 contains an analogous statement for inter partes 
reexamination. 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'' is consistent with the presentation in Sec.  1.116(c) in 
the Appeals final rule. As a further indication in the 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 (and 
publication) of the reexamination certificate; at that point these 
proceedings are concluded.
    The above changes are directed to Sec. Sec.  1.502, 1.530(l)(2), 
1.550, 1.565(d), 1.570, 1.902, 1.953, 1.957, 1.958, 1.979, 1.991, 
1.997, and 41.4.
    Sub-part 2. The reexamination rules are revised to state that the 
reexamination certificate is ``issued and published.'' Prior to this 
revision, the rules referred to the issuance of the reexamination 
certificate, but failed to refer to the publication of the certificate.
    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). 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 that has been reexamined. 
Accordingly, the titles of Sec. Sec.  1.570 and 1.997, as well as 
paragraphs (b) and (d), are now 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 are likewise revised. These changes are 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.
    Sub-part 3. In Sec.  1.137, the introductory text of paragraphs (a) 
and (b) previously stated ``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-part, 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). Accordingly, the 
introductory text of Sec.  1.137(a), and that of Sec.  1.137(b), is now 
revised to provide for the situation where the prosecution is 
``limited'' pursuant to Sec.  1.957(c) (and the prosecution of the 
reexamination is not ``terminated''). Also, Sec.  1.137(e) is revised 
consistently with Sec.  1.137(a) and Sec.  1.137(b). Further, 
conforming changes are made to Sec. Sec.  1.8 and 41.4, which are 
revised to contain language that tracks that of Sec. Sec.  1.137(a) and 
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

[[Page 18896]]

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) ``limited'' scope of prosecution to the scope of the 
claims found patentable is the language deemed better suited for use in 
the rules.
    Sub-part 4. Section 1.8(b) is revised to explicitly provide a 
remedy for an inter partes reexamination proceeding where 
correspondence was mailed or transmitted in accordance with paragraph 
Sec.  1.8(a) by a patent owner, and 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.'' Pursuant to the 
previous version of Sec.  1.8(b), a remedy was 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 [was] held to be 
abandoned or the proceeding is dismissed, terminated, or decided with 
prejudice.'' [Emphasis added.] It could have appeared that Sec.  1.8(b) 
did not apply to the Sec.  1.957(c) scenario where prosecution is 
``limited'' rather than ``terminated.'' Therefore, Sec.  1.8(b) is 
revised to explicitly apply the Sec.  1.8(b) remedy in the Sec.  
1.957(c) scenario as well.
    In addition, the certificate of mailing and transmission is 
available to a third party requester filing papers in an inter partes 
reexamination. See MPEP 2624 and 2666.05. Just as a Sec.  1.8(b) remedy 
is (and was) provided for the patent owner in the Sec.  1.957(b) and 
Sec.  1.957(c) scenarios, Sec.  1.8(b) is now revised to explicitly 
provide a remedy for the requester in the Sec.  1.957(a) scenario.
    Sub-part 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. Revisions of some of the 
reexamination rules referring to these sections were inadvertently not 
made, and have now been made via this Notice. Further, Sec. Sec.  
1.510(f) and 1.915(c) are revised to change Sec.  1.34(a) to Sec.  
1.34, to update the two 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).
    In addition, in the final rule Clarification of Filing Date 
Requirements for Ex Parte and Inter Partes Reexamination Proceedings, 
71 FR 44219 (Aug. 4, 2006) (final rule), the following errors appear. 
At page 44222, it is stated:

    ``If after receiving a `Notice of Failure to Comply with * * * 
Reexamination Request Filing Requirements,' the requester does not 
remedy the defects in the request papers that are pointed out, then 
the request papers will not be given a filing date, and a control 
number will not be assigned * * *. If any identified non-compliant 
item has not been corrected, then a filing date (and a control 
number) will not be assigned to the request papers.'' [Emphasis 
added]

    The Office will, however, be assigning control numbers and receipt 
dates to requests for reexamination that are not compliant with the 
reexamination filing date requirements. Thus, the text should read, and 
is hereby corrected to read:

    ``If after receiving a `Notice of Failure to Comply with * * * 
Reexamination Request Filing Requirements,' the requester does not 
remedy the defects in the request papers that are pointed out, then 
the request papers will not be given a filing date. The simplest 
case * * *. If any identified non-compliant item has not been 
corrected, then a filing date will not be assigned to the request 
papers.''

    Comments Received: The Office published a notice proposing the 
changes to ex parte and inter partes reexamination practice for 
comment. See Revisions and Technical Corrections Affecting Requirements 
for Ex Parte and Inter Partes Reexamination, 71 FR 16072 (March 30, 
2006) 1305 Off. Gaz. Pat. Office 132 (April 25, 2006) (hereinafter, the 
``Revisions and Technical Corrections proposed rule''). In response to 
the Revisions and Technical Corrections proposed rule, the Office 
received four sets of written comments--one from an intellectual 
property organization, two from corporations, and one from a law firm. 
There were no comments received from individual patent practitioners or 
others.
    The following four proposals were set forth in the Revisions and 
Technical Corrections proposed rule:
    Proposal I: To newly 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 
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.
    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.
    After reviewing the comments, this notice of final rule making: (a) 
Adopts Proposals II--IV of the Revisions and Technical Corrections 
proposed rule for revision of the rules of practice, while making only 
stylistic and non-substantive changes to the relevant rules, which 
changes are discussed below, and (b) does not adopt Proposal I of the 
Revisions and Technical Corrections proposed rule.
    The comments taking issue with the proposals, and the Office's 
responses to those comments, now follow. Comments generally in support 
of a change that has been adopted are only discussed in some instances.

I. Comments as to Proposal I of the Revisions and Technical Corrections 
Proposed Rule

    Proposal I, as set forth in the Revisions and Technical Corrections 
proposed rule, was to newly provide for a patent owner reply to a 
request for reexamination, prior to the Office's decision on the 
request. Comments against implementing the proposal in any form, were 
advanced by a major intellectual property organization and one of the 
two corporations that commented on the proposal. One comment, which was 
advanced by the other corporation that commented, was in favor of 
implementing the proposal even more liberally in favor of the patent 
owner than was proposed.
    1. The corporate comment in favor of implementation of Proposal I: 
This comment states that commenter believes this proposed rule change 
allows for greater input from involved parties before an Examiner 
determines whether reexamination should be declared, and that the 
greater input would further the goal of a fair and efficient, well-
informed reexamination. The comment further states that the proposed 
rule change would allow patentees to inform the Patent Office of facts 
that may bear upon the decision on the reexamination

[[Page 18897]]

request, such as the outcome of litigation involving prior art 
submitted to the Patent Office with the request, and other relevant 
factors.
    The comment then goes on to request ``further clarification and 
certain modifications to the proposed rule change.'' The commenter 
urges that patent owner's reply to a Director-ordered examination 
should be allowed. The commenter asserts that the discarding/returning 
of a non-compliant patent owner reply to a request for reexamination 
(without a chance for re-submission) seems unduly harsh, and is unlike 
other Office rules that allow a submission to be corrected if not in 
proper form. The commenter further requests that various options as to 
relief from the 50-page limit for the reply be implemented. Finally, 
the commenter suggests implementation of the Electronic Filing System 
(EFS) to expedite submission of the reply to the request.
    2. The intellectual property organization comment opposed to 
implementation of Proposal I: The commenter points out that evidence 
has not been proffered to suggest a need for a patent owner to have an 
opportunity to reply to a request for reexamination before a decision 
has been made by the Office. It is asserted that no evidence has been 
advanced as to granted reexaminations that should not have been granted 
based on incomplete/inaccurate information, or because of the allegedly 
low statutory threshold of a ``substantial new question of 
patentability'' to order reexamination, or because of an examiner 
inexperienced in reexamination practices. The commenter later provides 
a statistical analysis to show that the Office's reexamination 
statistics do not justify implementation of Proposal I without such 
evidence.
    The comment states that the Office has made a substantial 
improvement in the handling of reexamination proceedings by creating 
the new Central Reexamination Unit (CRU) dedicated to these 
proceedings, resulting in better management of reexamination 
proceedings, more timely, detailed and thorough Office actions, and an 
increase of the quality of the work product. Given this, it seems 
premature to introduce the opportunity for a patent owner to file a 
reply before the Office makes a decision on the request before it is 
determined that the expertise being applied in the new reexamination 
unit will not avoid or at least minimize any problem that is 
identified. In addition, there is a concern that placing additional and 
perhaps unnecessary burdens on the new CRU will inhibit either the 
quality or special dispatch of the work being performed by the CRU.
    The comment identifies a ``significant concern with the proposed 
practice * * * that it has the potential to significantly alter the 
balance between the patent owner and a third party in ex parte 
reexaminations in further favor of the patent owner.'' The comment 
continues,--``The ex parte reexamination proceeding is recognized as 
being one that is biased heavily in favor of the patent owner by 
excluding participation by the third party after the request is filed 
(unless the patent owner files a statement after the request is granted 
that would trigger only one additional opportunity for the third party 
to reply to any statement filed by the patent owner) * * *. [U]nder the 
proposal, the patent owner effectively would have an opportunity to 
file a patent owner's statement before the PTO decision on the request 
and thereafter exclude the third party from further participation in 
the proceeding by simply not filing any patent owner's statement.'' The 
comment concludes that the Office ``should not bias the ex parte 
proceeding in further favor of the patent owner, and should not take 
steps that will create additional and unnecessary burdens on the 
reexamination unit that are likely to further weaken the incentives for 
third parties to provide useful information relevant to patentability 
to the [Office].'' The commenter then adds that ``[e]ven in an inter 
partes proceeding, we are not aware of any justification for 
unnecessarily adding to the burdens of the reexamination unit or 
providing opportunities for the patent owner to delay the initiation of 
inter partes reexamination.''
    3. The corporate comment opposed to implementation of Proposal I: 
The comment points out some generally favorable aspects of Proposal I, 
but counters with a recognition that ``the impact of the issuance and 
enforcement of potentially invalid patents [is] so detrimental to the 
public as to warrant giving the requester every opportunity to proffer 
prior art to the Office for its consideration even though some 
inefficiencies may result.'' Commenter expresses a concern that 
``permitting the patent owner to respond to the requester's comments 
before a reexamination determination is made'' could ``have the 
additional unintended affect [sic, effect] of going beyond merely 
addressing whether or not there is a substantial new question of 
patentability, thus discouraging third party requesters from using the 
reexamination process.'' The commenter notes the potential that the 
proposal ``will delay the issuance of orders because of the time spent 
by the examiner in reviewing the patent owner's comments. It will also 
begin an unofficial `mini' reexamination proceeding before the examiner 
actually has made a decision to order reexamination. That is, it will 
be difficult for the examiner to avoid considering why the subject 
matter as claimed was not anticipated or rendered obvious by the prior 
art cited in the request in view of the patent owner's reply before the 
order granting reexamination is made. This will result in the 
discouraging of third party requester's [sic] from utilizing the 
reexamination process because of the perception that the Office may 
unintentionally address `the merits' rather than merely determining 
whether or not the requester raised a substantial new question of 
patentability.'' The commenter expresses a final concern that 
``allowing patent owner comments may actually cause an increase in 
petition filings. Ultimately, this churn between the Office and the 
requester could create a different source of Office delays as well as 
expense for the requester before the order even issues.'' The commenter 
further states: ``Particularly for requests worthy of proceeding to 
reexamination, the Office should take care to ensure that patent 
owner's response does not delay issuance of the order and reexamination 
process.''
    Proposal I is not adopted for the detailed reasons set forth in the 
intellectual property organization and corporate comments opposed to 
implementation of Proposal I. Reexamination practice will, however, in 
the future be re-evaluated to determine whether this proposal should be 
reconsidered at a later date.
    The corporate comment opposed to implementation of Proposal I 
provided suggestions to address some of its concerns, and these will 
now be addressed. The suggestions include strictly limiting the patent 
owner's response with review to ensure that the patent owner does not 
``comment on the merits, rather than just the issue of whether a new 
question of patentability is raised'' and ``placing a high burden on 
the patent holder to overcome a request, such as by clear and 
convincing evidence.'' Such suggestions, however, would unduly 
complicate and prolong the reexamination proceeding with a requirement 
for a highly subjective determination as to what would be, or would not 
be, prohibited in a patent owner's direct reply to a reexamination 
request.

[[Page 18898]]

    The commenter that favored implementing Proposal I suggested 
implementing the proposal more liberally in favor of the patent owner 
than was proposed by the Office. Such points are, however, moot, as the 
proposal is not being adopted. The following is also added with respect 
to the suggestions made. As to the assertion that the discarding/
returning of a non-compliant patent owner reply without a chance for 
re-submission is unlike other Office rules that allow a submission to 
be corrected if not in proper form, in this instance there is a three-
month statutory period running against the Office to decide the 
request. A reply correction cycle would make it unduly burdensome for 
the Office to comply with the three-month statutory mandate. As to the 
various options as to liberalizing the 50-page limit for the reply 
suggested by commenter, this too would impact on the Office's ability 
to comply with the three-month statutory mandate.
    As to the suggestion for a patent owner reply to a Director-ordered 
reexamination, the following is observed: After reexamination is 
ordered at the initiative of the USPTO Director, the patent owner does 
in fact have the right to reply via a patent owner's statement under 
Sec.  1.530. This right of ``reply'' takes place before the proceeding 
enters into the examination stage, and is essentially what the 
commenter is requesting. As to a notification to patent owner prior to 
reexamination being ordered at the initiative of the USPTO Director, 
which the commenter also refers to, there is no official proceeding at 
that point in which to notify the patent owner of the intent to 
initiate a reexamination. Also, if such a notice of intent to initiate 
a reexamination were issued as suggested by the commenter, that would 
be tantamount to ordering reexamination since a substantial new 
question of patentability would be needed in each case. The effect 
would be the same as initiating reexamination followed by a patent 
owner's statement under Sec.  1.530 filed prior to the examination 
stage of the proceeding, which is provided for in the current practice. 
Further, the suggestion also is subject to the above-discussed concerns 
raised in the intellectual property organization and corporate comments 
opposed to implementation of Proposal I.

II. Comments as to Proposal II of the Revisions and Technical 
Corrections Proposed Rule

    Proposal II, as set forth in the Revisions and Technical 
Corrections proposed rule, was to prohibit a supplemental patent owner 
response to an Office action (which can be filed to address a third 
party requester's comments on patent owner's initial response to an 
Office action) without an adequate showing of sufficient cause for 
entry. This would be implemented by revising Sec.  1.945. Three 
comments addressed this proposal.
    1. The law firm comment expresses a belief that the proposed 
revision to Sec.  1.945 would achieve the Office's purpose of (1) 
providing assistance to the Office in exercising its discretion to 
enter supplemental replies pursuant to Sec.  1.111(a)(2) in inter 
partes reexamination proceedings, and (2) discouraging patent owners 
from filing superfluous supplemental replies that delay the 
proceedings. The commenter, however, raises certain concerns as to the 
proposal.
    Commenter correctly points out that, pursuant to the proposal, 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. The commenter then asserts that an explanation of why the 
supplemental response ``could not'' have been presented together with 
the original response is not workable. The commenter suggests use of 
``was not'' in place of ``could not'' to address the concern. This 
point is well taken and is adopted. Once the patent owner explains why 
the supplemental response ``was not'' presented together with the 
original response, the Office can evaluate the reason in terms of the 
equities it provides. Thus, if the patent owner was reasonably not 
aware of a certain fact or circumstance that generated patent owner's 
basis for the supplemental response, that will be a factor to be 
balanced against the delay in the proceeding and additional resources 
to be expended by the requester and the Office.
    Commenter also asserts that there is no guidance of what would be a 
``compelling reason'' to enter the supplemental response.
    This point is addressed here in terms of equities. A patent owner 
would need to show that its position would be prejudiced by the lack of 
entry of a supplemental response in a way that cannot be addressed 
later in the proceeding, and that the adverse effect on patent owner is 
significant enough to counter-balance the delay in the proceeding and 
additional resources to be expended by the requester and the Office. 
Thus, if the patent owner simply was not aware of an argument, or even 
rebuttal art, that the requester submitted in commenting on the Office 
action and patent owner's response, a supplemental response will not be 
entered for the purpose of addressing the argument, or rebuttal art. 
The purpose of the response is to respond to the Office action, not to 
reply to the requester or to reshape the patent owner's response after 
obtaining requester's input. Likewise, if the purpose of the 
supplemental response is merely to reconfigure claims without making a 
material change to the substance, or to add some claims for additional 
scope of protection, such would not provide a compelling reason.
    2. The intellectual property organization comment supports 
implementation of Proposal II. Commenter, however, requests 
clarification as follows: ``If a patent owner files a supplemental 
response to a PTO action in an inter partes reexamination proceeding, 
we understand that it must be accompanied by a showing of sufficient 
cause. We further understand that the filing of that supplemental 
response, whether or not accompanied by an appropriate showing and 
whether or not the PTO ultimately enters the supplemental response, 
will trigger an opportunity for the third party to file written 
comments that may address both the supplemental response and any 
showing of sufficient cause. Please confirm whether our understanding 
is correct.''
    In response, the following is provided. It is mandated by statute 
that any requester comments filed after a patent owner response to an 
Office action must be filed ``within 30 days after the date of service 
of the patent owner's response.'' 35 U.S.C. 314(b)(2). Thus, where the 
patent owner files a supplemental response to an Office action, the 
requester would be well advised to file any comments deemed appropriate 
(to address the merits and/or showing of sufficient cause) within 30 
days after the date of service of the patent owner's supplemental 
response, in case the Office exercises its discretion to enter the 
supplemental response. If the supplemental response is not entered, 
both the supplemental response and any comments following that 
supplemental response will either be returned to parties or discarded 
as the Office chooses in its sole discretion. If the supplemental 
response and/or comments were scanned into the electronic Image File 
Wrapper (IFW) for the reexamination proceeding, and thus, the papers 
cannot be physically returned or discarded, then the

[[Page 18899]]

supplemental response and/or comments entries will be marked ``closed'' 
and ``non-public,'' and they will not constitute part of the record of 
the reexamination proceeding. Such papers will not display in the 
Office's image file wrapper that is made available to the public, 
patent owners, and representatives of patent owners, i.e., they will 
not display in PAIR at the Office's Web site https://www.uspto.gov.
    3. One of the two corporate comments opposes Proposal II. Commenter 
states that `` `compelling reasons' for entering a supplemental reply 
is not the standard set by sections 111(a)(2)(i)(A)-(F), and no 
justification has been suggested for why a patentee should be subjected 
to such an obstacle. We submit that the undefined but presumably 
considerable `compelling reason' standard is unnecessary, and will 
unfairly prevent patentees from presenting information to the Patent 
Office that will assist in achieving a correct outcome in 
reexaminations. This will reduce the quality and reliability of 
reexamination decisions, and thus this proposed rule should not be 
implemented.''
    The comment is noted, but it is not persuasive in view of the 
following: Sections 1.111(a)(2)(i)(A) through (a)(2)(i)(F) were 
implemented with a focus on applications for patents, in which the 
prosecution is ex parte. For reexamination, however, there is a unique 
statutory mandate for special dispatch, which calls for measures to 
minimize delays in the proceeding. In an ex parte reexamination 
proceeding, delay brought about by a supplemental patent owner response 
can be acceptable where the delay is insignificant, in order to achieve 
the benefits to which the commenter alludes. In inter partes 
reexamination, however, each time the patent owner supplementally 
responds, the requester may, be statute, respond within a given time 
period; the Office must then process a whole new set of papers for the 
parties. Accordingly, the delay in inter partes reexamination is 
magnified, when the patent owner supplementally responds. The potential 
for extension of the prosecution each time the patent owner files a 
supplemental patent owner response is unique to inter partes 
reexamination, and will not be permitted without sufficient cause 
having been shown.
    The Office has been receiving supplemental patent owner responses 
purporting to meet the conditions of Sec.  1.111(a)(2)(i)(F), which 
have resulted in undue delays in the proceedings, requiring the Office 
to evaluate whether such supplemental responses comply with any of the 
provisions of Sec. Sec.  1.111(a)(2)(i)(A) through (a)(2)(i)(F).
    Furthermore, the reexamination statute gives the third party 
requester an absolute right to file comments on the patent owner's 
response. Accordingly, the Office is forced to evaluate two sets of 
papers from each party, causing yet further delay. In addition, the 
Office has seen patent owners file multiple supplemental responses 
causing dramatic delays in the administrative process (a typical 
situation is discussed in the next paragraph). While it is not uncommon 
for adverse parties to want to have ``the last word,'' the Office needs 
to set reasonable limits in order to control the administrative 
process, as well as comply with the statutory mandate for special 
dispatch in inter partes reexamination.
    A typical situation is as follows. A patent owner wishes to respond 
to the requester's comments on the patent owner's response, and the 
patent owner thus files a supplemental response to address the 
requester's comments. The requester may then choose to supplementally 
comment on patent owner's supplemental response. Multiple iterations of 
patent owner responses addressing requester comments followed by 
further requester comments may then take place. The Office has 
experienced this situation in a number of proceedings, and the Office 
has needed to address each set of supplemental responses and 
supplemental comments--to first ascertain why patent owner filed the 
supplemental response and the equities presented by the parties, and 
then to decide whether to either close from public view (or return) the 
papers, or to enter them, and the Office must perform all the attendant 
processing. The present rule revision requires the patent owner to 
state, up front, the basis for seeking entry of a supplemental 
response, and it gives the requester an opportunity for rebuttal. This 
provides the Office with a mechanism for immediately weeding out any 
inappropriate supplemental response. Also, the requirement that patent 
owner provide the basis for entry will alert the patent owner to 
situations where no appropriate basis exists, such that patent owner 
will realize it should not make a submission. This will save (a) the 
patent owner the effort of making the submission, only to have it 
returned, (b) the requester the effort of making a supplemental 
comment, only to have it returned, and (c) the Office from having to 
expend the resources to address and process the submissions.
    It is further to be noted that, in a litigation setting, the courts 
have established controls to limit the extent of briefing, and the 
Office is likewise justified in limiting the parties' responses to an 
Office action. Moreover, regardless of how many patent owner responses 
are permitted, it should be noted that the inter partes reexamination 
statute (35 U.S.C. 314) specifically contemplates that the requester 
has the right to respond to every patent owner submission, thereby 
giving the requester ``the last word.'' There is no intent in the 
statute to provide the patent owner with a chance to file a ``last 
word'' supplemental response to address the requester's comments. 
Indeed, 35 U.S.C. 314(b)(2) ends the iteration of addressing the Office 
action by stating that ``the third-party requester shall have one 
opportunity to file written comments addressing issues raised by the 
action of the Office or the patent owner's response thereto.'' As a 
final point, 35 U.S.C. 314(b)(1) provides the patent owner with the 
ability to respond to what the Office action says, not to the 
requester's comments, and that continues to be available in the 
proceeding. Such is the statutory framework for providing prosecution 
by parties, while, at the same time, maintaining the requirement for 
special dispatch in the inter partes reexamination proceeding.
    Proposal II has been adopted in revised form--an explanation is 
required as to why the supplemental response ``was not'' presented 
together with the original response to the Office action, rather than 
the proposed explanation of why the supplemental response ``could not'' 
have been presented.

III. Comments as to Proposal III of the Revisions and Technical 
Corrections Proposed Rule

    The second part of Proposal III, as set forth in the Revisions and 
Technical Corrections, was 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. No issues were raised by the comments as 
to that part of Proposal III.
    The first part of Proposal III, as set forth in the Revisions and 
Technical Corrections proposed rule, was to designate the 
correspondence address for the patent as the correct address for all 
notices, official letters, and other communications for patent owners 
in a reexamination. It was that part of Proposal III that was commented 
upon.

[[Page 18900]]

    1. One of the corporate comments supports the Proposal II rule 
change as to the designation of the correspondence address for the 
patent as the correct address for communications for patent owners in a 
reexamination, and recognizes the need to ease the burden on the Office 
in corresponding with patent owners in reexamination proceedings. 
Commenter, however, strongly encourages the Office to promptly post all 
correspondence electronically since ``the correspondence address will 
be the only address used for mailings by the Office'' under the 
proposal, ``and no double correspondence will be sent.''
    In response, all correspondence for a reexamination proceeding is 
in fact promptly posted electronically in the Office's Image File 
Wrapper (IFW) for that proceeding, and is available via the Office's 
public PAIR (Patent Application Information Retrieval) system. One of 
the benefits resulting from the Office's somewhat recent creation of 
the Central Reexamination Unit is that reexamination correspondence is 
now mailed by a central unit dedicated solely to reexamination, which 
is in a position to ensure prompt entry of correspondence into the IFW.
    2. The intellectual property organization comment likewise supports 
Proposal III. Commenter, however, identifies a concern that ``the 
Office states that it will automatically change the correspondence 
address to that of the patent file.'' Commenter suggests that, despite 
the rule revision, the correspondence address of the patent owner and 
any third party, should be maintained by the Office as ``whatever 
correspondence address has been established,'' and ``a specific 
requirement of the patent owner to comply with the adopted regulation'' 
should be made. This suggestion is presented to reduce ``the risk of 
termination of the prosecution of a reexamination proceeding by sending 
correspondence to the patent owner at an address different than has 
already been established in the pending reexamination proceeding.''
    This suggestion is not adopted; however, for inter partes 
reexamination proceedings, an accommodation will be made by the Office 
as is discussed below. Retaining the old attorney or agent of record 
register address as that of the patent owner's correspondence address 
in the face of the rule change which mandates otherwise can only lead 
to uncertainty and confusion. This would result in a situation where 
some correspondence addresses are done one way and others are done 
another way. Third party requesters would be placed in a quandary as to 
which address to serve. The same would be true for parties serving 
papers under MPEP 2286 or 2686 (notifications of existence of prior or 
concurrent proceedings). Retaining the address used for correspondence 
in the reexamination proceeding different from that used during the 
pendency of applications (as well as post-grant correspondence in 
patents maturing from such applications) will also make it difficult 
for members of the public reviewing the patent and its associated files 
and materials. Furthermore, searching out all the instances where the 
correspondence address would be in need of a change in view of the 
``adopted regulation'' in order to send the suggested ``specific 
requirement of the patent owner to comply with the adopted regulation'' 
would place a huge and undue burden on Office resources. The ex parte 
reexamination data captured by the Office through Sept. 30, 2006, will 
be used to illustrate this. There are 1,944 ex parte reexamination 
proceedings pending. The Office would need to check to see which of the 
8,252 total ex parte reexamination proceedings are the 1,944 pending 
reexamination proceedings. Then, Notices would need to be sent out for 
all of them, and the Office would also need to do the PALM work. For 
inter partes reexamination proceedings, however, there are 
approximately 200 pending proceedings. Accordingly, the Office intends 
to issue, in the near future, a notice in all pending inter partes 
reexamination proceedings, notifying the parties about this rule change 
and the patent owner's correct address. It is to be noted that 
requester paper service on patent owner occurs far more often in inter 
partes reexamination, than such service on patent owner in ex parte 
reexamination. Thus, the major impact of commenter's concern in this 
area has been addressed.
    IV. Proposal IV has been adopted as it was proposed--none of the 
comments took issue with any aspect of this proposal.

Section-by-Section Discussion

    Section 1.1: Section 1.1(c)(1) is amended to provide for use of 
``Mail Stop Ex Parte Reexam'' for the filing of all ex parte 
reexamination papers other than certain correspondence to the Office of 
the General Counsel. Parag