442 Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 

various analyses and reports to support 

this request. 

Third, the petitioner requests that the 

NRC revise 10 CFR 50.44 ‘‘to require 

that PWRs and BWR Mark IIIs operate 

with systems for combustible gas 

control that would be capable of 

precluding local concentrations of 

hydrogen in the containment from 

exceeding concentrations that would 

support combustions, fast deflagrations, 

or detonations that could cause a loss of 

containment integrity or loss of 

necessary accident mitigating features.’’ 

The petitioner presents information 

from various analyses and reports to 

support this request. 

Fourth, the petitioner asserts that 

‘‘[t]he current requirement that 

hydrogen monitors be functional within 

90-minutes after the initiation of safety 

injection is inadequate for protecting 

public and plant worker safety.’’ Thus, 

the petitioner requests that the NRC 

revise 10 CFR 50.44 to ‘‘require that 

PWRs and BWR Mark IIIs operate with 

combustible gas and oxygen monitoring 

systems that are qualified in accordance 

with 10 CFR 50.49. Petitioner also 

requests that NRC revise 10 CFR 50.44 

to require that after the onset of a severe 

accident, combustible gas monitoring 

systems be functional within a 

timeframe that enables the proper 

monitoring of quantities of hydrogen 

indicative of core damage and indicative 

of a potential threat to the containment 

integrity.’’ The petitioner presents 

information from various analyses and 

reports to support this request. 

Fifth, the petitioner requests that the 

NRC revise 10 CFR 50.44 to ‘‘require 

that licensees of PWRs and BWR Mark 

IIIs perform analyses that demonstrate 

containment structural integrity would 

be retained in the event of a severe 

accident.’’ Additionally, the petitioner 

requests that the NRC revise 10 CFR 

50.44 to require licensees of BWR Mark 

Is and BWR Mark IIs to perform 

analyses ‘‘using the most advanced 

codes, which demonstrate containment 

structural integrity would be retained in 

the event of a severe accident.’’ The 

petitioner presents information from 

various analyses and reports to support 

this request. 

Sixth, the petitioner requests that the 

NRC revise 10 CFR 50.44 to ‘‘require 

that licensees of PWRs with ice 

condenser containments and BWR Mark 

IIIs (and any other NPPs that would 

operate with hydrogen igniter systems) 

perform analyses that demonstrate 

hydrogen igniter systems would 

effectively and safely mitigate hydrogen 

in different severe accident scenarios.’’ 

The petitioner presents information 

from various analyses and reports 

regarding hydrogen igniter systems to 

support this request. 

IV. Determination of Petition 

In PRM 50–103, the petitioner raises 

six issues regarding the measurement 

and control of combustible gas 

generation and dispersal within a 

reactor system. The Commission is 

currently reviewing the 

‘‘Recommendations for Enhancing 

Reactor Safety in the 21st Century: The 

Near-Term Task Force Review of 

Insights from the Fukushima Dai-ichi 

Accident’’ (Fukushima Task Force 

Report, ML111861807), dated July 12, 

2011. The six requests included in the 

PRM relate to Recommendation 6 of the 

Fukushima Task Force Report: ‘‘[t]he 

task force recommends, as part of the 

longer term review, that the NRC 

identify insights about hydrogen control 

and mitigation inside containment or in 

other buildings as additional 

information is revealed through further 

study of the Fukushima Dai-ichi 

accident.’’ 

The Commission has recently directed 

staff to engage promptly with 

stakeholders to review and assess the 

recommendations of the Fukushima 

Task Force Report for the purpose of 

providing the Commission with fullyinformed options and 

recommendations. See U.S. Nuclear 

Regulatory Commission, ‘‘Near-Term 

Report and Recommendations for 

Agency Actions Following the Events in 

Japan,’’ Staff Requirements 

Memorandum SECY–11–0093, August 

19, 2011 (ADAMS Accession No. 

ML112310021) and U.S. Nuclear 

Regulatory Commission, ‘‘Engagement 

of Stakeholders Regarding the Events in 

Japan,’’ Staff Requirements 

Memorandum COMWDM–11–0001/ 

COMWCO–11–0001, August 22, 2011 

(ADAMS Accession No. ML112340693). 

The NRC has, therefore, decided to 

consider the issues raised by the PRM 

in a manner consistent with the process 

the Commission has established for 

addressing the recommendations from 

the Fukushima Task Force Report. Thus, 

the NRC will defer review of this PRM 

until the Commission gives further 

direction on Recommendation 6, to 

determine whether review of this PRM 

should be integrated with the effort 

related to the NRC staff’s review of 

Fukushima Task Force 

Recommendation 6. The NRC is not 

requesting public comment at this time 

but may do so in the future, if it decides 

public comment would be appropriate. 

V. Conclusion 

The NRC will coordinate 

consideration of the issues raised by 

PRM 50–103 in a manner consistent 

with the process the Commission has 

established for addressing the 

recommendations from the Fukushima 

Task Force Report and is not providing 

a separate opportunity for public 

comment on this PRM at this time. 

Dated at Rockville, Maryland, this 29th day 

of December 2011. 

For the Nuclear Regulatory Commission. 

Andrew L. Bates, 

Acting Secretary of the Commission. 

[FR Doc. 2011–33817 Filed 1–4–12; 8:45 am] 

BILLING CODE 7590–01–P 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

37 CFR Part 1 

[Docket No. PTO–P–2011–0072] 

RIN 0651–AC66 

Changes To Implement Miscellaneous 

Post Patent Provisions of the LeahySmith America Invents Act 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Notice of proposed rulemaking. 

SUMMARY: The Leahy-Smith America 

Invents Act expands the scope of 

information that any party may cite in 

a patent file, to include written 

statements made by a patent owner 

before a Federal court or the United 

States Patent and Trademark Office 

(Office) regarding the scope of any claim 

of the patent, and it provides for how 

such information may be considered in 

ex parte reexamination, inter partes 

review, and post grant review. The 

Leahy-Smith America Invents Act also 

provides for an estoppel that may attach 

with respect to ex parte reexamination 

based on an inter partes review or post 

grant review proceeding. The Office is 

revising the rules of practice to 

implement these post-patent provisions, 

as well as other miscellaneous 

provisions of the Leahy-Smith America 

Invents Act. 

DATES: Comment Deadline Date: To be 

ensured of consideration, written 

comments must be received on or before 

March 5, 2012. 

ADDRESSES: Comments should be sent 

by electronic mail addressed to: 

post_patent_provisions@uspto.gov. 

Comments may also be submitted by 

mail addressed to: Mail Stop 

Comments—Patents, Commissioner for 

Patents, P.O. Box 1450, Alexandria, VA, 

22313–1450, marked to the attention of 


emcdonald on DSK5VPTVN1PROD with PROPOSALS
Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 443 

Kenneth M. Schor, Senior Legal 

Advisor, Office of Patent Legal 

Administration, Office of the Associate 

Commissioner for Patent Examination 

Policy. 

Comments may also be sent by 

electronic mail message over the 

Internet via the Federal eRulemaking 

Portal. See the Federal eRulemaking 

Portal Web site (http:// 

www.regulations.gov) for additional 

instructions on providing comments via 

the Federal eRulemaking Portal. 

Although comments may be 

submitted by postal mail, the Office 

prefers to receive comments by 

electronic mail message over the 

Internet because sharing comments with 

the public is more easily accomplished. 

Electronic comments are preferred to be 

submitted in plain text, but also may be 

submitted in ADOBE® portable 

document format or MICROSOFT 

WORD® format. Comments not 

submitted electronically should be 

submitted on paper in a format that 

facilitates convenient digital scanning 

into ADOBE® portable document 

format. 

The comments will be available for 

public inspection at the Office of the 

Commissioner for Patents, currently 

located in Madison East, Tenth Floor, 

600 Dulany Street, Alexandria, Virginia. 

Comments also will be available for 

viewing via the Office’s Internet Web 

site (http://www.uspto.gov). Because 

comments will be made available for 

public inspection, information that the 

submitter does not desire to make 

public, such as an address or phone 

number, should not be included in the 

comments. 

FOR FURTHER INFORMATION CONTACT: 

Kenneth M. Schor, Senior Legal Advisor 

((571) 272–7710), or Joseph F. Weiss, Jr., 

Legal Advisor ((571) 272–7759), Office 

of Patent Legal Administration, Office of 

the Associate Commissioner for Patent 

Examination Policy. 

SUPPLEMENTARY INFORMATION: Section 6 

of the Leahy-Smith America Invents Act 

replaces the current inter partes 

reexamination proceedings with inter 

partes review proceedings, and creates 

new post grant review proceedings. See 

Public Law 112–29, 125 Stat. 284 

(2011). Section 6 of the Leahy-Smith 

America Invents Act also provides for 

an estoppel that may attach with respect 

to ex parte reexamination based on an 

inter partes review or post grant review 

proceeding. The Office is proposing to 

revise the rules of practice in title 37 of 

the Code of Federal Regulations (CFR) to 

implement these post-patent provisions, 

along with changes in nomenclature 

pertaining to the renaming of the ‘‘Board 

of Patent Appeals and Interferences’’ as 

the ‘‘Patent Trial and Appeal Board’’ 

and the replacement of references to 

interference proceedings with references 

to derivation proceedings. The post 

grant review, inter partes review, and 

derivation provisions of sections 3 and 

6 of the Leahy-Smith America Invents 

Act will be implemented by separate 

rulemakings. 

I. Background 

Section 6(g) of the Leahy-Smith 

America Invents Act amends 35 U.S.C. 

301 to expand the information that can 

be submitted in the file of an issued 

patent by including written statements 

made by a patent owner before a Federal 

court or the Office regarding the scope 

of any claim of the patent. The 

provision limits the Office’s use of such 

written statements to determining the 

meaning of a patent claim in ex parte 

reexamination proceedings that have 

already been ordered and in inter partes 

review and post grant review 

proceedings that have been instituted. 

This provision is effective on September 

16, 2012. 

Section 6(a) and (d) of the LeahySmith American Invents Act also 

contains provisions in new 35 U.S.C. 

315(e)(1) and 35 U.S.C. 325(e)(1) for 

estopping a third party requester from 

filing a request for ex parte 

reexamination, in certain instances 

where the third party requester filed a 

petition for inter partes review or post 

grant review and a final written decision 

under 35 U.S.C. 318(a) or 35 U.S.C. 

328(a) has been issued. In addition, a 

third party requester may not maintain 

an ex parte reexamination if the 

estoppel provisions are met during the 

pendency of the ex parte reexamination 

proceeding. The estoppel provisions 

apply to the real party(ies) in interest of 

the inter partes review or post grant 

review petitioner and any privy of such 

a petitioner. This provision is effective 

on September 16, 2012. 

In view of the estoppel provisions, the 

Office needs to be aware of any final 

written decision in an inter partes 

review or post grant review regarding 

the patentability of claims. Current 

§ 1.565(a) requires the patent owner to 

‘‘inform the Office of any prior or 

concurrent proceedings in which the 

patent is or was involved such as 

interferences, reissues, ex parte 

reexaminations, inter partes 

reexaminations, or litigation and the 

results of such proceedings.’’ Because 

current § 1.565(a) uses open language to 

provide a non-exhaustive listing of 

proceedings that patent owner must 

inform the Office about, the current rule 

will include inter partes review and 

post grant review proceedings, once 

they become effective. In addition, the 

third party requester (to whom the inter 

partes review or post grant review 

estoppel statutes are directed) may 

inform the Office of a final written 

decision in an inter partes review or 

post grant review of the patent subject 

to the ex parte reexamination by filing 

a ‘‘Notification of Existence of Prior or 

Concurrent Proceedings and Decisions 

Thereon’’ pursuant to Manual of Patent 

Examining Procedure (MPEP) § 2282 

(8th ed. 2001) (Rev. 8, July 2010). MPEP 

§ 2282 provides that ‘‘in order to ensure 

a complete file, with updated status 

information regarding prior or 

concurrent proceedings regarding the 

patent under reexamination, the Office 

will, at any time, accept from any 

parties, for entry into the reexamination 

file, copies of notices of suits and other 

proceedings involving the patent and 

copies of decisions or papers filed in the 

court from litigations or other 

proceedings involving the patent.’’ 

[Emphasis added] 

Section 6(h)(1) of the Leahy-Smith 

America Invents Act amends 35 U.S.C. 

303 to expressly identify the authority 

of the Director to initiate reexamination 

based on patents and publications cited 

in a prior reexamination request under 

35 U.S.C. 302, as well as on those cited 

under 35 U.S.C. 301 (which was 

previously expressly authorized). This 

provision is effective on September 16, 

2012. 

Section 3(i) of the Leahy-Smith 

America Invents Act replaces 

interference proceedings with 

derivation proceedings; section 3(j) 

replaces the title ‘‘Board of Patent 

Appeals and Interferences’’ with ‘‘Patent 

Trial and Appeal Board’’ in 35 U.S.C. 

134, 145, 146, 154, and 305; Section 6(a) 

replaces inter partes reexamination with 

inter partes review of a patent; Section 

6(d) provides for post-grant review of 

patents; and Section 7 amends 35 U.S.C. 

6(b) to define the duties of the Patent 

Trial and Appeal Board. 

II. Discussion of Specific Rules 

Title 37 of the Code of Federal 

Regulations, Part 1, is proposed to be 

amended as follows: 

The undesignated center heading 

before § 1.501: It is proposed that the 

undesignated center heading be revised 

to read ‘‘Citation of prior art and written 

statements.’’ 

Section 1.501: Proposed § 1.501 is 

rewritten to reflect the amendment to 35 

U.S.C. 301 by section 6(g)(1) of the 

Leahy-Smith America Invents Act. New 

35 U.S.C. 301(a)(2) would permit a 

submission under 35 U.S.C. 301 and 

1.501 to contain, in addition to prior art 


emcdonald on DSK5VPTVN1PROD with PROPOSALS
444 Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 

(currently provided for in § 1.501), 

‘‘statements of the patent owner filed in 

a proceeding before a Federal court or 

the Office in which the patent owner 

took a position on the scope of any 

claim of a particular patent’’ (claim 

scope statements of the patent owner). 

Proposed § 1.501 provides that a 

submission can include prior art and 

claim scope statements of the patent 

owner. The term ‘‘Federal court’’ in 35 

U.S.C. 301(a)(2) is understood to also 

include the United States Court of 

International Trade. 

Section 1.501(a): Proposed 

§ 1.501(a)(1), like current § 1.501(a), 

provides for submission to the Office of 

prior art directed to patents or printed 

publications allegedly bearing on the 

patentability of any claim of a particular 

patent. Section 1.501(a)(2) newly 

permits submission of statements of the 

patent owner filed in a proceeding 

before a Federal court or the Office in 

which the patent owner took a position 

on the scope of any claim of a patent 

(claim scope statements). Any statement 

submitted under this paragraph must be 

accompanied by any other documents, 

pleadings, or evidence from the 

proceeding in which the statement was 

filed that address the statement; and the 

statement and accompanying 

information under this paragraph must 

be submitted in redacted form to 

exclude information subject to an 

applicable protective order. For 

example, a third party may submit a 

deposition of the patent owner 

occurring during the course of the 

Federal court proceeding where the 

patent owner discusses the scope of a 

patent claim. A party submitting any 

submission that includes § 1.501(a)(2) 

information should also consider 

providing the following information to 

assist the Office in identifying the 

proceeding where the patent owner 

claim scope statement was made: (1) 

The forum in which the statement was 

made (the specific Federal court or the 

Office); (2) the Federal court or Office 

proceeding designation (case citation or 

numerical designation); (3) the status of 

the proceeding; (4) the relationship of 

the proceeding to the patent in which 

the submission is being made; (5) an 

identification of the specific papers of 

the proceeding containing the statement 

of the patent owner; and (6) an 

identification of the portion(s) of the 

papers relevant to the written statement 

being asserted to constitute a statement 

of the patent owner under 35 U.S.C. 

301(a)(2). Any patent owner statement 

regarding the scope of any claim of a 

particular patent made outside of a 

Federal court or Office proceeding is not 

a written statement eligible for 

submission under 35 U.S.C. 301(a)(2), 

even though it may be later entered into 

a Federal court or Office proceeding by 

a party other than the patent owner. See 

H.R. Rep. No. 112–98, Part 1, at page 46 

(2011) (‘‘[t]his addition will counteract 

the ability of patent owners to offer 

differing interpretations of prior art in 

different proceedings’’). 

Section 1.501(b): Proposed 

§ 1.501(b)(1) is directed to the 35 U.S.C. 

301(b) requirement that the submission 

include an explanation ‘‘in writing [of] 

the pertinency and manner of applying 

the prior art or written statements’’ to at 

least one patent claim. Proposed 

§ 1.501(b)(1) requires an explanation as 

to how the information in the 

submission is pertinent to the claim(s) 

of the patent and how it is applied to 

each of those claims. In some instances, 

a combination of prior art and written 

statements may be cited, while in other 

situations only prior art or written 

statements may be cited. In either 

situation, an explanation as to how the 

cited information applies to those 

specific claims must be included with 

the submission of patent owner 

statements under 35 U.S.C. 301(a)(2). 

Section 1.501(b)(1) requires an 

explanation of the additional 

information required by 35 U.S.C. 301(c) 

(as a result of the Leahy-Smith America 

Invents Act), because the additional 

information addresses and provides 

context to the written statement of the 

patent owner; thus, it provides an 

additional explanation as to how the 

cited information is pertinent to the 

claim(s). 

Proposed § 1.501(b)(2) is directed to 

the substance of the second sentence of 

current § 1.501(a), which provides 

regulatory authorization for a patent 

owner submitter to include an 

explanation of how the claims differ 

from the prior art submitted. Proposed 

§ 1.501(b)(2) simply adds statements of 

patent owner under 35 U.S.C. 301(a)(2) 

to the current regulatory authorization. 

Section 1.501(c): Proposed § 1.501(c) 

restates the last sentence of existing 

§ 1.501(a) directed to the timing for a 

submission under §§ 1.502 and 1.902 

when there is a reexamination 

proceeding pending for the patent in 

which the submission is made. Pursuant 

to current §§ 1.502 and 1.902, entry 

(into the official patent file) of a proper 

submission that is made after the date 

of an order to reexamine will be delayed 

(with certain exceptions specified in 

§§ 1.502 and 1.902) until the 

reexamination proceeding has been 

concluded by the issuance and 

publication of a reexamination 

certificate. This prevents harassment of 

the patent owner by frequent 

submissions of prior art made during a 

reexamination proceeding, as well as 

unwarranted interruption and delay of 

the reexamination proceeding, which 

would be contrary to the mandate under 

35 U.S.C. 305 and 35 U.S.C. 314(c) that 

all reexamination proceedings are to be 

‘‘conducted with special dispatch 

within the Office.’’ 

Section 1.501(d): Proposed § 1.501(d) 

restates existing § 1.501(b), to permit the 

person making the submission to 

exclude his or her identity from the 

patent file by anonymously filing the 

submission. 

Section 1.501(e): Proposed § 1.501(e) 

requires that a submission made under 

§ 1.501 must reflect that a copy of the 

submission has been served upon the 

patent owner at the correspondence 

address of record in the patent, and that 

service was carried out in accordance 

with § 1.248. Service is required to 

provide notice to the patent owner of 

the submission. The presence of a 

certificate of service compliant with 

§ 1.248(b) is prima facie evidence of 

compliance with § 1.501(e). If service 

upon patent owner is unsuccessful, the 

submission must include proof of a 

bona fide attempt to serve. Proof of a 

bona fide attempt to serve must include 

a statement of facts with an explanation 

of the inability to serve the submission 

upon patent owner, along with all 

supporting evidence of the attempt of 

service. The statement of facts must be 

signed by a person having firsthand 

knowledge of the facts recited, regarding 

unsuccessful service. The statement of 

facts should include the steps taken to 

locate and serve the patent owner. A 

statement of facts which provides a 

mere conclusion or assertion of 

unsuccessful service will not satisfy this 

requirement. Copies of documentary 

proof such as certified/registered mail 

receipts, cover letters, telegrams or other 

forms of evidence that support a finding 

that the patent owner could not be 

served should be made part of the 

statement of facts. A submission will 

not be entered into the patent’s Image 

File Wrapper (IFW) if it does not 

include either proof of service 

compliant with § 1.248(b) or a sufficient 

explanation and proof of a bona fide 

attempt of service, and if such a 

submission is inadvertently entered, it 

will be expunged. Where a submission 

complies with the rule, all information 

included in the submission will be 

made of record in the IFW of the patent. 

A best practice for patent owners is to 

regularly monitor the IFW record of 

their patents in the event that a third 

party was unsuccessful in serving the 

patent owner at the correspondence 


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Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 445 

address of record. Such regular 

monitoring allows a patent owner to be 

aware of all information added to its 

patent files. 

Section 1.501(f): Proposed § 1.501(f) 

limits the use of statements of the patent 

owner and accompanying information 

submitted under § 1.501(a)(2) to what is 

provided for in 35 U.S.C. 301(d). Thus, 

statements of the patent owner and 

accompanying information submitted 

under paragraph (a)(2) may only be used 

for determination of the proper meaning 

of a patent claim in: (1) An ex parte 

reexamination proceeding that has been 

ordered pursuant to 35 U.S.C. 304; (2) 

an inter partes review proceeding that 

has been instituted pursuant to 35 

U.S.C. 314; and (3) a post grant review 

proceeding that has been instituted 

pursuant to 35 U.S.C. 324. Proposed 

§ 1.501(f) follows from new 35 U.S.C. 

301(d), which provides that ‘‘a written 

statement submitted pursuant to 

subsection (a)(2)’’ ‘‘shall not be 

considered by the Office for any 

purpose other than to determine the 

proper meaning of a patent claim in a 

proceeding that is ordered or instituted 

pursuant to section 304, 314, or 324.’’ 

The reference to 35 U.S.C. 314 is 

understood to apply to inter partes 

review, and not to inter partes 

reexamination, because inter partes 

reexamination is being replaced by inter 

partes review on the date that 35 U.S.C. 

301(d) becomes effective (i.e., 

September 16, 2012). While inter partes 

reexamination proceedings already 

ordered will continue after September 

16, 2012, 35 U.S.C. 314 is understood 

not to apply to such proceedings. 

Section 1.510: Proposed § 1.510(b)(2) 

is revised, and new §§ 1.510(b)(6) and 

(b)(7) are added to implement 

provisions of the Leahy-Smith America 

Invents Act. Section 1.510(b)(2) is 

revised to require that a request for 

reexamination identify every claim for 

which reexamination is requested, and 

for any statement of the patent owner 

submitted pursuant to § 1.501(a)(2) 

which is relied upon in the detailed 

explanation, explain how that statement 

is being used to determine the proper 

meaning of a patent claim in connection 

with prior art applied to that claim. New 

35 U.S.C. 301(d) provides that a 

statement of the patent owner, pursuant 

to § 1.501(a)(2), may be relied upon in 

the ex parte reexamination proceeding 

only after reexamination has been 

ordered. In order to comply with the 

requirement of 35 U.S.C. 302 that the 

‘‘request must set forth the pertinency 

and manner of applying cited prior art 

to every claim for which reexamination 

is requested,’’ the ‘‘detailed 

explanation’’ provided in the request 

(pursuant to § 1.510(b)(2)) must explain 

how each § 1.501(a)(2) statement is 

being used to determine the proper 

meaning of a patent claim in connection 

with the applied prior art. This must be 

explained for each claim for which the 

§ 1.501(a)(2) statement is being used in 

the request, and the explanation will be 

considered by the Office during the 

examination stage, if reexamination is 

ordered. At the order stage, the Office 

will use the broadest reasonable 

interpretation of the claims, without 

consideration to any § 1.501(a)(2) 

statement relied upon in the detailed 

explanation of a request. 

New § 1.510(b)(6) requires that the 

request contain a certification that the 

statutory estoppel provisions of inter 

partes review and post grant review do 

not bar the third party from requesting 

ex parte reexamination. To complement 

this revision, § 1.510(b)(7) requires that 

the request contain, as part of the 

certification, a statement identifying the 

real party(ies) in interest to the extent 

necessary to determine whether an inter 

partes review or post grant review filed 

subsequent to an ex parte reexamination 

bars the third party from maintaining a 

pending ex parte reexamination. An ex 

parte reexamination requester has the 

option to remain anonymous. In order to 

do so, the requester must: (1) Submit the 

statement identifying the real party(ies) 

in interest as a separate paper; (2) title 

the paper as a statement identifying the 

real party(ies) in interest; (3) request in 

the paper that the Office to retain the 

paper in confidence by sealing it; and 

(4) include, in a clear and conspicuous 

manner, an appropriate instructional 

label designating the statement as a nonpublic submission, e.g., NOT OPEN TO 

THE PUBLIC FOR OFFICE USE ONLY. 

The Office will then maintain the real 

party(ies) in interest statement as a 

sealed, non-public submission. 

The estoppel provisions of inter 

partes review and post grant review are 

provided in new 35 U.S.C. 315(e)(1) and 

325(e)(1), respectively. These estoppel 

provisions bar a request for ex parte 

reexamination (or maintenance of an ex 

parte reexamination) by a third party 

requester, the requester’s real party(ies) 

in interest, or a privy, where the 

requester petitioned for an inter partes 

review or post grant review of a claim 

in the patent that resulted in a final 

written decision with respect to that 

claim on any ground that the petitioner 

raised or reasonably could have raised 

during that inter partes review or post 

grant review. The certification and 

identification in new §§ 1.510(b)(6) and 

1.510(b)(7) are consistent with the 

practice of real party(ies) in interest 

identification certification used for 

existing inter partes reexamination. As 

was the case for implementation of 

§§ 1.915(b)(7) and 1.915(b)(8) for inter 

partes reexamination, the certification 

and identification to be implemented 

via new §§ 1.510(b)(6) and 1.510(b)(7) 

address Congress’s desire to prevent 

harassment of the patent owner by third 

parties. See H.R. Rep. No. 112–98 (Part 

1), at 48. 

Section 1.515: Section 1.515 is revised 

to add: ‘‘A statement pursuant to 

§ 1.501(a)(2) will not be considered by 

the examiner in the examiner’s 

determination on the request.’’ New 35 

U.S.C. 301(d) states: ‘‘A written 

statement submitted pursuant to 

subsection (a)(2), and additional 

information submitted pursuant to 

subsection (c) [of 35 U.S.C. 301], shall 

not be considered by the Office for any 

purpose other than to determine the 

proper meaning of a patent claim in a 

proceeding that is ordered * * * 

pursuant to section 304.’’ The Office 

interprets 35 U.S.C. 301(d) as 

prohibiting it from considering a 

§ 1.501(a)(2) written statement when 

making the determination of whether to 

order ex parte reexamination under 35 

U.S.C. 303. See also H.R. Rep. No. 112– 

98, Part 1, at page 46 (2011). In making 

the § 1.515(a) determination of whether 

to order ex parte reexamination, the 

Office will generally (except in the rare 

case of an expired patent), give the 

claims the broadest reasonable 

interpretation consistent with the 

specification (See In re Yamamoto, 740 

F.2d 1569, 222 USPQ 934 (Fed. Cir. 

1984)). Consideration of the evidentiary 

weight to be accorded to a 35 U.S.C. 

301(a)(2) statement (as to the meaning of 

the claims with respect to the ultimate 

patentability decision) will not be given 

unless reexamination is ordered. If 

reexamination is ordered, the patent 

owner statements submitted pursuant to 

35 U.S.C. 301(a)(2) will be considered to 

the fullest extent possible when 

determining the scope of any claims in 

the patent which are subject to 

reexamination. 

Section 1.552: § 1.552 is rewritten to 

include new subsection § 1.552(d) to 

reflect the amendment of 35 U.S.C. 301 

by section 6(g)(1) of the Leahy-Smith 

America Invents Act. Proposed 

§ 1.552(d) states: ‘‘Any statement of the 

patent owner and any accompanying 

information submitted pursuant to 

§ 1.501(a)(2) which is of record in the 

patent being reexamined (which 

includes any reexamination files for the 

patent) may be used after a 

reexamination proceeding has been 

ordered to determine the proper 

meaning of a patent claim when 

applying patents or printed 


emcdonald on DSK5VPTVN1PROD with PROPOSALS
446 Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 

publications.’’ New 35 U.S.C. 301(a)(2) 

permits a submission under 35 U.S.C. 

301 to contain ‘‘statements of the patent 

owner filed in a proceeding before a 

Federal court or the Office in which the 

patent owner took a position on the 

scope of any claim of a particular 

patent.’’ Thus, written statements cited 

under new 35 U.S.C. 301(a)(2) may be 

considered after an ex parte 

reexamination proceeding has been 

ordered, but not in making the 

determination of whether to order ex 

parte reexamination under 35 U.S.C. 

303. See 35 U.S.C. 301(d). See also H.R. 

Rep. No. 112–98, Part 1, at page 46 

(2011). 

The Office also proposes to change 

the nomenclature in title 37 CFR to 

reflect renaming the ‘‘Board of Patent 

Appeals and Interferences’’ as the 

‘‘Patent Trial and Appeal Board,’’ 

including changes for the new trial 

proceedings of inter partes review, post 

grant review, and derivation. 

Specifically, the Office proposes to 

change ‘‘Board of Patent Appeals and 

Interferences’’ to the ‘‘Patent Trial and 

Appeal Board’’ in 37 CFR parts 1, 11, 

and 41 (in §§ 1.1(a)(1)(ii), 1.4(a)(2), 

1.6(d)(9), 1.8(a)(2)(i)(C), 1.9(g), 1.17(b), 

1.36(b), 1.48(j), 1.136(a)(1)(iv), 

1.136(a)(2), 1.136(b), 1.181(a)(1), 

1.181(a)(3), 1.191, 1.197(a), 1.198, 

1.248(c), 1.294(b), 1.301, 1.303(a), 

1.304(a)(1), 1.304(a)(1)(ii), 1.324(d), 

1.550(a), 1.701(a)(3), 1.701(c)(3), 

1.702(a)(3), 1.702(b)(4), 1.702(e), 

1.703(a)(5), 1.703(b)(4), 1.703(e), 

1.704(c)(9), 1.937(a), 1.959, 1.979(a), 

1.979(b), 1.981, 1.983(a), 1.983(c), 

1.983(d), 1.983(f), 11.5(b)(1), 11.6(d), 

41.1(a), 41.2, 41.10(a)–(c), and 41.77(a), 

and in the title of part 41). The Office 

likewise proposes to add specific 

references to trial proceedings before the 

Patent Trial and Appeal Board to 

§§ 1.5(c), 1.6(d), 1.6(d)(9), 1.11(e), 

1.136(a)(2), 1.136(b), 1.178(b), 1.248(c), 

1.322(a)(3), 1.324(a), 1.324(d), 1.565(a), 

1.565(e), 1.985(a), 1.985(b), 1.993, 

10.1(s), 11.10(b)(3)(iii), and 

11.57(b)(1)(i). Finally, the Office 

proposes to add specific references to 

derivation proceedings to §§ 1.48(j), 

1.55(a)(3)(i), 1.55(a)(4)(i)(A), 1.103(g), 

1.136(a)(1)(v), 1.313(b)(4), 1.701(a)(1), 

1.701(c)(1)(i–ii), 1.701(c)(2)(iii), 

1.702(b)(2), 1.702(c), 1.703(b)(2)(i–ii), 

1.703(b)(3)(iii), 1.703(c)(1–2), 

1.703(d)(3), and 5.3(b). 

III. Rulemaking Considerations 

A. Administrative Procedure Act 

(APA): This proposed rule revises 

existing rules governing prior art 

citations and patent owner statements in 

a patent file and ex parte reexamination 

to implement the following provisions 

of sections 3 and 6 of the Leahy-Smith 

America Invents Act: (1) Section 6(g) 

which amends 35 U.S.C. 301, to expand 

the scope of information that can be 

submitted in the file of an issued patent; 

(2) the provisions of sections 6(a) and 

6(d) (which newly enact inter partes 

review and post grant review, 

respectively) that provide for estoppels 

effective as to proceedings before the 

Office, including but not limited to 

reexamination; and (3) sections 3(j) and 

7 which change the title ‘‘Board of 

Patent Appeals and Interferences’’ to 

‘‘Patent Trial and Appeal Board,’’ and 

change references to interference 

proceedings to derivation proceedings. 

Therefore, the changes in this 

proposed rule are merely procedural 

and/or interpretive. See Bachow 

Communs., Inc. v. FCC, 237 F.3d 683, 

690 (DC Cir. 2001) (rules governing an 

application process are procedural 

under the Administrative Procedure 

Act); Inova Alexandria Hosp. v. Shalala, 

244 F.3d 242, 350 (4th Cir. 2001) (rules 

for handling appeals were procedural 

where they did not change the 

substantive standard for reviewing 

claims); Nat’l Org. of Veterans’ 

Advocates v. Sec’y of Veterans Affairs, 

260 F.3d 1365, 1375 (Fed. Cir. 2001) 

(rule that clarifies interpretation of a 

statute is interpretive). 

Accordingly, prior notice and 

opportunity for public comment are not 

required pursuant to 5 U.S.C. 553(b) or 

(c) (or any other law) and thirty-day 

advance publication is not required 

pursuant to 5 U.S.C. 553(d) (or any other 

law). See Cooper Techs. Co. v. Dudas, 

536 F.3d 1330, 1336–37 (Fed. Cir. 2008) 

(stating that 5 U.S.C. 553, and thus 35 

U.S.C. 2(b)(2)(B), does not require notice 

and comment rulemaking for 

‘‘interpretative rules, general statements 

of policy, or rules of agency 

organization, procedure, or practice.’’) 

(quoting 5 U.S.C. 553(b)(A)). The Office, 

however, is publishing these changes for 

comment as it seeks the benefit of the 

public’s views on the Office’s proposed 

implementation of these provisions of 

the Leahy-Smith America Invents Act. 

B. Regulatory Flexibility Act: As prior 

notice and an opportunity for public 

comment are not required pursuant to 5 

U.S.C. 553 or any other law, neither a 

regulatory flexibility analysis nor a 

certification under the Regulatory 

Flexibility Act (5 U.S.C. 601 et seq.) is 

required. See 5 U.S.C. 603. 

C. Executive Order 12866 (Regulatory 

Planning and Review): This rulemaking 

has been determined to be not 

significant for purposes of Executive 

Order 12866 (Sept. 30, 1993). 

D. Executive Order 13563 (Improving 

Regulation and Regulatory Review): The 

Office has complied with Executive 

Order 13563. Specifically, the Office 

has, to the extent feasible and 

applicable: (1) Made a reasoned 

determination that the benefits justify 

the costs of the rule; (2) tailored the rule 

to impose the least burden on society 

consistent with obtaining the regulatory 

objectives; (3) selected a regulatory 

approach that maximizes net benefits; 

(4) specified performance objectives; (5) 

identified and assessed available 

alternatives; (6) involved the public in 

an open exchange of information and 

perspectives among experts in relevant 

disciplines, affected stakeholders in the 

private sector and the public as a whole, 

and provided on-line access to the 

rulemaking docket; (7) attempted to 

promote coordination, simplification, 

and harmonization across government 

agencies and identified goals designed 

to promote innovation; (8) considered 

approaches that reduce burdens and 

maintain flexibility and freedom of 

choice for the public; and (9) ensured 

the objectivity of scientific and 

technological information and 

processes. 

E. Executive Order 13132 

(Federalism): This rulemaking does not 

contain policies with federalism 

implications sufficient to warrant 

preparation of a Federalism Assessment 

under Executive Order 13132 (Aug. 4, 

1999). 

F. Executive Order 13175 (Tribal 

Consultation): This rulemaking will not: 

(1) Have substantial direct effects on one 

or more Indian tribes; (2) impose 

substantial direct compliance costs on 

Indian tribal governments; or (3) 

preempt tribal law. Therefore, a tribal 

summary impact statement is not 

required under Executive Order 13175 

(Nov. 6, 2000). 

G. Executive Order 13211 (Energy 

Effects): This rulemaking is not a 

significant energy action under 

Executive Order 13211 because this 

rulemaking is not likely to have a 

significant adverse effect on the supply, 

distribution, or use of energy. Therefore, 

a Statement of Energy Effects is not 

required under Executive Order 13211 

(May 18, 2001). 

H. Executive Order 12988 (Civil 

Justice Reform): This rulemaking meets 

applicable standards to minimize 

litigation, eliminate ambiguity, and 

reduce burden as set forth in sections 

3(a) and 3(b)(2) of Executive Order 

12988 (Feb. 5, 1996). 

I. Executive Order 13045 (Protection 

of Children): This rulemaking does not 

concern an environmental risk to health 

or safety that may disproportionately 

affect children under Executive Order 

13045 (Apr. 21, 1997). 


emcdonald on DSK5VPTVN1PROD with PROPOSALS
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J. Executive Order 12630 (Taking of 

Private Property): This rulemaking will 

not effect a taking of private property or 

otherwise have taking implications 

under Executive Order 12630 (Mar. 15, 

1988). 

K. Congressional Review Act: Under 

the Congressional Review Act 

provisions of the Small Business 

Regulatory Enforcement Fairness Act of 

1996 (5 U.S.C. 801 et seq.), prior to 

issuing any final rule, the United States 

Patent and Trademark Office will 

submit a report containing the final rule 

and other required information to the 

United States Senate, the United States 

House of Representatives, and the 

Comptroller General of the Government 

Accountability Office. The changes in 

this notice are not expected to result in 

an annual effect on the economy of 100 

million dollars or more, a major increase 

in costs or prices, or significant adverse 

effects on competition, employment, 

investment, productivity, innovation, or 

the ability of United States-based 

enterprises to compete with foreignbased enterprises in domestic and 

export markets. Therefore, this notice is 

not expected to result in a ‘‘major rule’’ 

as defined in 5 U.S.C. 804(2). 

L. Unfunded Mandates Reform Act of 

1995: The changes proposed in this 

notice do not involve a Federal 

intergovernmental mandate that will 

result in the expenditure by State, local, 

and tribal governments, in the aggregate, 

of 100 million dollars (as adjusted) or 

more in any one year, or a Federal 

private sector mandate that will result 

in the expenditure by the private sector 

of 100 million dollars (as adjusted) or 

more in any one year, and will not 

significantly or uniquely affect small 

governments. Therefore, no actions are 

necessary under the provisions of the 

Unfunded Mandates Reform Act of 

1995. See 2 U.S.C. 1501 et seq. 

M. National Environmental Policy 

Act: This rulemaking will not have any 

effect on the quality of the environment 

and is thus categorically excluded from 

review under the National 

Environmental Policy Act of 1969. See 

42 U.S.C. 4321 et seq. 

N. National Technology Transfer and 

Advancement Act: The requirements of 

section 12(d) of the National 

Technology Transfer and Advancement 

Act of 1995 (15 U.S.C. 272 note) are not 

applicable because this rulemaking does 

not contain provisions which involve 

the use of technical standards. 

O. Paperwork Reduction Act: The 

Paperwork Reduction Act of 1995 (44 

U.S.C. 3501 et seq.) requires that the 

Office consider the impact of paperwork 

and other information collection 

burdens imposed on the public. This 

proposed rulemaking involves 

information collection requirements 

which are subject to review by the 

Office of Management and Budget 

(OMB) under the Paperwork Reduction 

Act of 1995 (44 U.S.C. 3501–3549). The 

collection of information involved in 

this notice has been submitted to OMB 

under OMB control number 0651–00xx. 

The proposed collection will be 

available at OMB’s Information 

Collection Review Web site (http:// 

www.reginfo.gov/public/do/PRAMain). 

Needs and Uses: This information 

collection is necessary so that the public 

may file, in a patent, submissions of 

patents and printed publications, and 

statements of the patent owner filed in 

a proceeding before a Federal court or 

the Office in which the patent owner 

took a position on the scope of any 

claim of the patent. The public may use 

this information to aid in ascertaining 

the patentability and/or scope of the 

claims of the patent. 

Title of Collection: Post Patent Public 

Submissions. 

OMB Control Number: 0651–00xx. 

Method of Collection: By mail, 

facsimile, hand delivery, or 

electronically to the Office. 

Affected Public: Individuals or 

households; businesses or other forprofits; and not-for-profit institutions. 

Estimated Number of Respondents: 

1,000 responses per year. 

Estimated Time Per Response: The 

Office estimates that the responses in 

this collection will take the public 10 

hours. 

Estimated Total Annual Respondent 

Burden Hours: 10,000 hours per year. 

Estimated Total Annual Respondent 

Cost Burden: $3,400,000 per year. 

The Office is soliciting comments to: 

(1) Evaluate whether the proposed 

information requirement is necessary for 

the proper performance of the functions 

of the Office, including whether the 

information will have practical utility; 

(2) evaluate the accuracy of the Office’s 

estimate of the burden; (3) enhance the 

quality, utility, and clarity of the 

information to be collected; and (4) 

minimize the burden of collecting the 

information on those who are to 

respond, including by using appropriate 

automated, electronic, mechanical, or 

other technological collection 

techniques or other forms of information 

technology. 

Please send comments on or before 

March 5, 2012 to Mail Stop Comments— 

Patents, Commissioner for Patents, P.O. 

Box 1450, Alexandria, VA, 22313–1450, 

marked to the attention of Raul Tamayo, 

Legal Advisor, Office of Patent Legal 

Administration, Office of the Associate 

Commissioner for Patent Examination 

Policy. Comments should also be 

submitted to the Office of Information 

and Regulatory Affairs, Office of 

Management and Budget, New 

Executive Office Building, Room 10202, 

725 17th Street NW., Washington, DC 

20503, Attention: Desk Officer for the 

Patent and Trademark Office. 

Notwithstanding any other provision 

of law, no person is required to respond 

to, nor shall a person be subject to a 

penalty for failure to comply with, a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act, unless that collection of 

information displays a currently valid 

OMB control number. 

List of Subjects in 37 CFR Part 1 

Administrative practice and 

procedure, Courts, Freedom of 

information, Inventions and patents, 

Reporting and record keeping 

requirements, Small businesses, and 

Biologics. 

For the reasons set forth in the 

preamble, 37 CFR Part 1 is proposed to 

be amended as follows: 

PART 1—RULES OF PRACTICE IN 

PATENT CASES 

1. The authority citation for 37 CFR 

Part 1 continues to read as follows: 

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

otherwise noted. 

2. The undesignated center heading 

before § 1.501 is revised to read as 

follows: 

Citation of Prior Art and Written 

Statements 

3. Section 1.501 is revised to read as 

follows: 

§ 1.501 Citation of prior art and written 

statements in patent files. 

(a) Information content of submission: 

At any time during the period of 

enforceability of a patent, any person 

may file a written submission with the 

Office under this section, which is 

directed to the following information: 

(1) Prior art consisting of patents or 

printed publications which the person 

making the submission states to have a 

bearing on the patentability of any claim 

of the patent; or 

(2) Statements of the patent owner 

filed in a proceeding before a Federal 

court or the Office in which the patent 

owner took a position on the scope of 

any claim of the patent. Any statement 

submitted under this paragraph must be 

accompanied by any other documents, 

pleadings, or evidence from the 

proceeding in which the statement was 

filed that address the written statement, 

and such statement and accompanying 


emcdonald on DSK5VPTVN1PROD with PROPOSALS
448 Federal Register / Vol. 77, No. 3 / Thursday, January 5, 2012 / Proposed Rules 

information under this paragraph must 

be submitted in redacted form to 

exclude information subject to an 

applicable protective order. Submission 

of a statement of the patent owner made 

outside of a Federal court or Office 

proceeding and later filed for inclusion 

in a Federal court or Office proceeding 

is not permitted by this section, and 

such a submission will not be entered 

into the patent file. 

(b) Explanation included: A 

submission pursuant to paragraph (a) of 

this section: 

(1) Must explain in writing the 

pertinence and manner of applying any 

prior art submitted under paragraph 

(a)(1) of this section and any written 

statement and accompanying 

information submitted under paragraph 

(a)(2) of this section to at least one claim 

of the patent, in order for the 

submission to become a part of the 

official file of the patent; and 

(2) May, if the submission is made by 

the patent owner, include an 

explanation of how the claims differ 

from any prior art submitted under 

paragraph (a)(1) of this section or any 

written statements and accompanying 

information submitted under paragraph 

(a)(2) of this section. 

(c) Reexamination pending: If a 

reexamination proceeding has been 

requested and is pending for the patent 

in which the submission is filed, entry 

of the submission into the official file of 

the patent is subject to the provisions of 

§§ 1.502 and 1.902. 

(d) Identity: If the person making the 

submission wishes his or her identity to 

be excluded from the patent file and 

kept confidential, the submission papers 

must be submitted anonymously 

without any identification of the person 

making the submission. 

(e) Service of the submission: A 

submission made under this section 

must reflect that a copy of the 

submission has been served upon the 

patent owner at the correspondence 

address of record in the patent, in 

accordance with § 1.248, or that a bona 

fide attempt of service was made. A 

submission that fails to include either 

proof of service or a sufficient 

explanation and proof of a bona fide 

attempt of service will not be entered 

into the patent file, and will be 

expunged if inadvertently entered. 

(f) Consideration of statements of 

patent owner: Statements of the patent 

owner and accompanying information 

submitted under paragraph (a)(2) of this 

section shall not be considered by the 

Office for any purpose other than as 

provided for in 35 U.S.C. 301(d) . If 

reexamination is ordered, the patent 

owner statements submitted pursuant to 

section 301(a)(2) will be considered 

when determining the scope of any 

claims in the patent subject to 

reexamination. 

4. Section 1.510 is amended by 

revising paragraph (b)(2), and adding 

new paragraphs (b)(6) and (b)(7), to read 

as follows: 

§ 1.510 Request for ex parte 

reexamination. 

* * * * * 

(b) * * * 

(2) An identification of every claim 

for which reexamination is requested, 

and a detailed explanation of the 

pertinency and manner of applying the 

cited prior art to every claim for which 

reexamination is requested. For each 

statement and accompanying 

information of the patent owner 

submitted pursuant to § 1.501(a)(2) 

which is relied upon in the detailed 

explanation, the request must explain 

how that statement is being used to 

determine the proper meaning of a 

patent claim in connection with the 

prior art applied to that claim and how 

each relevant claim is being interpreted. 

If appropriate, the party requesting 

reexamination may also point out how 

claims distinguish over cited prior art. 

* * * * * 

(6) A certification that the statutory 

estoppel provisions of both inter partes 

review (35 U.S.C. 315(e)(1)) and post 

grant review (35 U.S.C. 325(e)(1)) do not 

prohibit the ex parte reexamination. 

(7) A statement identifying the real 

party(ies) in interest to the extent 

necessary to determine whether any 

inter partes review or post grant review 

filed subsequent to an ex parte 

reexamination bars a pending ex parte 

reexamination filed by the real 

party(ies) in interest or its privy from 

being maintained. 

5. Section 1.515 is amended by 

revising paragraph (a) to read as follows: 

§ 1.515 Determination of the request for ex 

parte reexamination. 

(a) Within three months following the 

filing date of a request for an ex parte 

reexamination, an examiner will 

consider the request and determine 

whether or not a substantial new 

question of patentability affecting any 

claim of the patent is raised by the 

request and the prior art cited therein, 

with or without consideration of other 

patents or printed publications. A 

statement and any accompanying 

information submitted pursuant to 

§ 1.501(a)(2) will not be considered by 

the examiner in the examiner’s 

determination on the request. The 

examiner’s determination will be based 

on the claims in effect at the time of the 

determination, will become a part of the 

official file of the patent, and will be 

mailed to the patent owner at the 

address provided for in § 1.33(c) and to 

the person requesting reexamination. 

* * * * * 

6. Section 1.552 is amended by 

adding new paragraph (d) to read as 

follows: 

§ 1.552 Scope of reexamination in ex parte 

reexamination proceedings. 

* * * * * 

(d) Any statement of the patent owner 

and any accompanying information 

submitted pursuant to § 1.501(a)(2) 

which is of record in the patent being 

reexamined (which includes any 

reexamination files for the patent) may 

be used after a reexamination 

proceeding has been ordered to 

determine the proper meaning of a 

patent claim when applying patents or 

printed publications. 

Dated: December 30, 2011. 

David J. Kappos, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2011–33813 Filed 1–4–12; 8:45 am] 

BILLING CODE 3510–16–P 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

37 CFR Part 1 

[Docket No. PTO–P–2011–0073] 

RIN 0651–AC67 

Changes To Implement the 

Preissuance Submissions by Third 

Parties Provision of the Leahy-Smith 

America Invents Act 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Notice of proposed rulemaking. 

SUMMARY: The United States Patent and 

Trademark Office (Office) is proposing 

changes to the rules of patent practice 

to implement the preissuance 

submissions by third parties provision 

of the Leahy-Smith America Invents 

Act. This provision provides a 

mechanism for third parties to 

contribute to the quality of issued 

patents by submitting to the Office, for 

consideration and inclusion in the 

record of patent applications, any 

patents, published patent applications, 

or other printed publications of 

potential relevance to the examination 

of the applications. A preissuance 

submission may be made in any nonVerDate Mar<15>2010 14:51 Jan 04, 2012 Jkt 226001 PO 00000 Frm 00008 Fmt 4702 Sfmt 4702 E:\FR\FM\05JAP1.SGM 05JAP1

emcdonald on DSK5VPTVN1PROD with PROPOSALS