EXXON CHEMICAL COMPANY

EXXON CHEMICAL

Law Technology
Richard D. Jordan
ATTORNEY

September 22, 1995

Via Facsimile

Assistant Commissioner for Patents
Box DAC
Washington, D.C. 20231
Attn: Gerald A. Dost
Senior Legal Advisor Special Program Law Office
Crystal Park 1, Ste. 520 
Re: Rules of Practice in Patent Cases
Reexamination Proceedings
Written Comments

Dear Mr. Dost:

Enclosed is a copy of my comments which were presented at
the PTO's September 20 hearing on proposed rules for
reexamination. These comments were presented on behalf of
Exxon Chemical Company whose headquarters office is located
at 13501 Katy Freeway, Houston, Texas 77079-1398.

I am presenting additional comments below. These comments
are also presented on behalf of Exxon Chemical Company.

500 Bayway Drive, Baytown, Texas 77520
P.O. Box 2149, Baytown, Texas 77522-2149
Tel: (713) 425-5398 Fax:1(713) 425-2911
A Division of Exxon Corpootion

Mr. Gerald A. Dost
September 22, 1995
Page 2

ADDITIONAL COMMENTS

Following testimony of many of the speakers, myself
included, Assistant Commissioner Goffney, Solicitor Linck,
and Deputy Assistant Commissioner Kunin asked several
questions which were primarily focused on examiner
interviews and fees. It was apparent from the questions that
were asked that that the PTO is highly concerned about the
proposed rules on these topics. Due to this perceived
concern, I am presenting these additional written comments
to clarify my suggestions presented at oral hearing. 
1. Examiner Interviews

As we stated at oral hearing, Exxon Chemical Company is in
favor of the PTO Codifying the proposed rules to allow a
third party requester the opportunity to request an
interview. In addition, we believe that the PTO rules should
be modified to specifically require a means for more
accurately recording what transpires at interviews,
regardless of which party requests the interviews or
regardless of whether all parties are actually present.

By using the word "recording" we do not imply that
interviews should be physically recorded by electronic means
or by a court reporter. Instead, we suggest that accurate
recordation should be a more thorough method of recordation
and reporting by an examiner as to what transpired at
interview.

Having an examiner record a more detailed summary of an
inter partes reexamination interview would fit in well with
the multi-examiner review system which we recommended for
consideration by the PTO at the oral hearing. (See attached
for multi-examiner review suggestions.) For example, under a
multi-examiner final review system, there would be three
examiners present.

Presumably, a legal specialist within the Examining Group,
the original examiner of the application, and a primary
examiner having knowledge of the relevant technical field.
One of the examiners would have the responsibility for
recording minutes and reporting the minutes back to all
parties (perhaps within 30 days of the interview),
regardless of whether they were present.

The minutes would preferably include a detailed discussion
of the issues presented, as well as a detailed discussion of
how each party responded to the issues presented. Copies of
any submissions should also be included in the minutes.

We also highly recommend that reporting of the minutes to
all parties include a brief, non-binding and informal
opinion by the examiners on the resolution of the issues
presented at hearing. This would give all parties the
opportunity not just to respond to an outstanding Office
Action, but the opportunity to respond to data or other
issues which may have been presented at interview.

II. Fees

After recommending a multi-examiner final review at the oral
hearing, Assistant Commissioner Goffney asked if we would be
willing to pay an increased filing over what was proposed to
have this type of reexamination process. Our response was
that we expect to pay a fair rate for any service requested
and that we considered that the proposed fee was not
excessive. Therefore, we would not consider it excessive to
increase the fee over what was proposed in order to gain the
advantage of multi-examiner final review.

On behalf of Exxon Chemical Company, we wish to again thank
the PTO for extending us the time at oral hearing for
presenting our testimony. If any further clarification of
our comments is desired, please contact me directly.

Very truly yours,
Richard D. Jordan

cc: M.A. Nametz

Rules of Practice in Patent Cases
Reexamination Proceedings
Oral Testimony, September 20, 1995
Presented by Richard Jordan, representing Exxon Chemcial
Company

Assistant Commissioner Goffney, members of the Patent and
Trademark Office, ladies and gentlemen, my name is Richard
Jordan, and I am representing Exxon Chemical Company who has
its headquarters office located in Houston, Texas. I would
like to thank the PTO for allowing Exxon Chemical this
opportunity to present oral testimony on the rules of
practice in reexamination proceedings.

We at Exxon Chemical Company support greater participation
by third party requesters than is what is currently allowed
under the reexamination laws. With the appropriate laws and
rules in place, we believe that full inter partes
proceedings can provide the public with a more effective
system in which the Patent and Trademark Office will have a
higher degree of certainty in issuing patents having valid
claims.

While we at Exxon Chemical Company prefer the high quality
of inter partes, post-grant oppositions proceedings similar
to that of the European Patent Office, we will consider
taking advantage of the means provided under the proposed
legislation, H.R. 1732, if appropriate rules are promulgated
to provide a high quality reexamination process within the
USPTO. Although the PTO has done an excellent job in
providing a sound procedural model which is much improved
over the present system, we believe that there is still
significant room in which the quality of the reexamination
process can be improved within the framework of the proposed
legislation.

Specifically, we believe that quality of reexamination at
the PTO could be improved by modifying the proposed rules to
provide: 

(1) a more open and rigorous review system for examiner
interviews;

(2) a process in which more than one examiner would be
responsible for issuing the Right of Appeal Notice; and 

(3) specific procedures for consolidating multiple
reexamination requests of the same patent.

I will address each of these proposals in order.

(1st Proposal) The Proposed Rules Should be Modified to
Provide a More Open and Rigorous Review System for Examiner
Interviews 

The purpose of an interview should be two-fold in an inter
partes reexamination proceeding. On one hand, an interview
should provide any party to the proceeding a means to better
communicate issues to examiners, particularly those issues
which are difficult to express on paper. For example, one
might be better able to physically demonstrate (maybe by
charts, tables or physical demonstration) what is purported
to be the main technical aspect of an invention, and how
that technical aspect is or is not suggested by the prior
art. It may also be more effective to review complicated
data with examiners prior to submitting such data in
declaration form so that they will have a better
understanding of what the data represents.

A second purpose for an interview in an inter partes
reexamination proceeding should be to build a more complete
record for later review. For example, should a case be
appealed to the Board of Patent Appeals and Interferences in
which an interview was held, and the issues discussed in the
interview recorded, the Administrative Patent Judge in
charge of the appeal would have a more thorough record upon
which to base his decision. Likewise, an attorney who
reviews the file history of a reexamination proceeding would
have a better record upon which to base infringement/risk
assessments.

As the proposed rules now stand, they fall short in meeting
the two-fold objective of an interview. In particular, under
proposed rule 1.955, the benefits of examiner interviews are
heavily weighted in favor of the patent owner since that is
the only party who would be allowed to request an interview.
In our opinion, the proposed rules provide a tremendous
advantage to a patent owner. To that extent, we at Exxon
Chemical Company have serious doubt as to whether a third
party requester would ultimately gain much more under the
proposed rules than the present reexamination rules afford.
Therefore, we believe that the PTO should give long and
serious thought to modifying rule 1.955 in order to make the
reexamination proceeding more equitable by allowing a third
party requester the opportunity to initiate an interview.

Proposed rule 1.955 is also deficient in that there is no
specific requirement for recording what transpires at
interviews. We can only assume that the PTO will at least
issue an Examiner Interview Summary Record. This summary as
it is presently recorded, however, would be of little value
in an inter partes proceeding. First of all, the present
form of the record is too abbreviated to be of any real
value in subsequent proceedings. Secondly, it is unlikely
that much detail could be put into any interview record if
more than one party, as well as a senior level official
(whose presence would be required under the proposed rule),
are all present and are relying upon an examiner to
hurriedly write a summary of the interview. It would be
unreasonable under these Circumstances to expect anyone to
give an accurate account of what transpired during the
interview. Therefore, proposed rule 1.955 should also be
modified to include an effective procedure for recording the
details of what transpired at interview.

(2nd Proposal) The Present Rules Should Be Modified to
Provide a Process in Which More than One Examiner Would Be
Responsible for Issuing the Right of Appeal Notice 

As we mentioned in our opening remarks, Exxon Chemical
Company is strongly in favor of inter partes, post-grant
oppositions proceedings similar to that of the European
Patent Office because of the high degree of quality which
that type of proceeding affords. One of the reasons for such
a high degree of quality in that proceeding is that the
final decision is given by three examiners. Needless to say,
with a decision from three capable examiners, it is less
likely that there will be ancillary issues later raised such
as examiner bias or an examiner's lack of understanding of
the relevant art or law.

An even higher quality of reexamination in the USPTO could
be achieved oy following a multi-examiner final review
process similar to that in EPO oppositions. This type of
review process would not be at odds with the present House
Bill, and would in fact be in alignment with multi-examiner
review of patent applications in which the PTO already has
experience.

To include a multi-examiner final review process for
reexaminations would take little modification of the
proposed rules. For example, prcposed rule 1.953 stipulates
that "the examiner" shall issue a "Right of Appeal Notice"
unless prosecution is reopened, and that such a notice,
shall include a final rejection and/or final decision
favorable to Patentability. Instead of one examiner issuing
the Right of Appeal Notice with the final written decision,
it would be preferable for a panel of three examiners to
have this responsibility. This panel could include, for
example, a legal specialist within the Examining Group, the
original examiner of the application, and a primary examiner
having knowledge of the relevant technical field. It may be
that all examiners would concur on the written decision or
that one may dissent with his or her own written opinion.
This would be similar to the process in which the Board of
Patent Appeals and Interferences issues its decisions.

A multi-examiner final review process would be of benefit to
both the public and the PTO in that a high degree of quality
in the reexamination process would be ensured. Whether all
examiners concur in the final decision, or whether there is
a dissent, the result would be a sound record upon which a
subsequent reviewing body would be able to make better
informed decisions. As we see it, the subsequent reviewing
body might be not just the Board of Patent Appeals and
Interferences or a federal court, but the public at large,
which may be interested in previewing the case files for
purposes of giving credible infringement/risk assessments.

Since a multi-panel final review process would have a high
degree of what one might call "built-in" quality, it would
be unnecessary for the PTO to have a quality review program
for reexaminations. In cases where there was a unanimous
final decision by the examiners, it is also less likely that
such a decision would be appealed by the losing party. This
would mean, of course, that the work load of the
Administratiwe Patent Judge should not be unduly increased.

One last point regarding a multi-examiner final review
process is that each examiner should be present at
interviews for the obvious reason of ensuring that each
examiner is familiar with the details of that issues at
hand. Therefore, proposed rule 1.955 would also have to be
modified for consistency. 

(3rd Proposal) The Present Rules Should Be Modified to
Provide Specific Procedures for Consolidating Multiple
Reexamination Requests of the Same Patent.

It is not unreasonable to assume that certain patents would
spark sufficient commercial interest such that several
different parties might file separate reexamination
requests. At present, the proposed rules do not specify
procedures for taking into account multiple reexamination
requests for the same patent. It would seem that it would be
efficient for the PTO to consolidate multiple requests once
the decision has been made that a substantial new question
of patentability has been raised by each requester. Whatever
the PTO does in cases of multiple reexamination requests,
rules should be published to give the public prior notice of
what procedures would be followed. This would be far too
complicated of a procedure in which the public would
otherwise be at the mercy of PTO internal policy.

Conclusion

In conclusion, we believe that quality of reexamination at
the PTO could be improved by modifying the proposed rules to
provide:

(1) a more open and rigorous review system for examiner
interviews;

(2) a, process in which more than one examiner would be
responsible for issuing the Right of Appeal Notice; and

(3) specific procedures for consolidating multiple
reexamination requests of the same patent.

In our opinion, if these modifications are not made, it is
questionable whether a potential third party requester would
be in a much improved position relative to that which one is
afforded under the present system. We, therefore, request
that the PTO give serious consideration to modifying the
proposed rules.

Again, thank you for the time allotted.