18892 Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 

70°14′27.546′′ W; thence to the point of 

beginning.(DATUM:NAD 83). All 

vessels are restricted from entering this 

area. 

(b) Effective Date. This section is 

effective 8 a.m. April 2, 2007 until 11:59 

p.m. on April 15, 2007. 

(c) Definitions. (1) Designated 

representative means a Coast Guard 

Patrol Commander, including a Coast 

Guard coxswain, petty officer, or other 

officer operating a Coast Guard vessel 

and a Federal, State, and local officer 

designated by or assisting the Captain of 

the Port (COTP). 

(2) [Reserved] 

(d) Regulations. (1) In accordance 

with the general regulations in 165.23 of 

this part, entry into or movement within 

this zone by any person or vessel is 

prohibited unless authorized by the 

COTP, Northern New England or the 

COTP’s designated representative. 

(2) The safety zone is closed to all 

vessel traffic, except as may be 

permitted by the COTP or the COTP’s 

designated representative. 

(3) Vessel operators desiring to enter 

or operate within the safety zone may 

contact the COTP or the COTP’s 

designated representative at telephone 

number 207–767–0303 or on VHF 

Channel 13 (156.7 MHz) or VHF 

channel 16 (156.8 MHz) to seek 

permission to do so. If permission is 

granted, all persons and vessels must 

comply with the instructions given to 

them by the COTP or the COTP’s 

designated representative. 

Dated: April 2, 2007. 

S.P. Garrity, 

Captain, U.S. Coast Guard, Captain of the 

Port, Northern New England. 

[FR Doc. E7–7187 Filed 4–13–07; 8:45 am] 

BILLING CODE 4910–15–P 

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. 

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 § 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 § 11.5 

and § 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 § 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 § 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 § 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 § 1.33(c) for use in 

reexamination. This occurred because 

the § 1.33(a) address was, and is, the 

address used for correspondence during 


cprice-sewell on PROD1PC66 with RULES
Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 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) § 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 § 11.5 and 

§ 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 § 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 

§ 11.5 and § 11.11 (which was the 

reexamination address for the patent 

owner called for by § 1.33(c) prior to the 

present revision of § 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 

§ 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 § 11.5 and § 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 firstlisted 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 

§ 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 § 1.1(a)(3) and § 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), § 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 § 1.1(a)(3) and § 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 § 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 § 1.1(a)(3) 

and § 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 § 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 § 1.937(b), an inter partes 

reexamination proceeding is 

‘‘conducted in accordance with §§ 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 

§ 1.111. Prior to the revision of 

§ 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 

§ 1.111(a)(2) made in the Strategic Plan 

final rule, in effect, addressed this 


cprice-sewell on PROD1PC66 with RULES
18894 Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 

undesirable consequence of the rules in 

reexamination by providing that a reply 

(or response, in reexamination) which is 

supplemental to a § 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 

§ 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, § 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 § 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 

§ 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 

http://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 represented 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 


cprice-sewell on PROD1PC66 with RULES
Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 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, § 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 § 1.550(d) or 

§ 1.957(b) * * *.’’ The use of 

‘‘termination of the prosecution’’ is 

consistent with the presentation in 

§ 1.116(c) in the Appeals final rule. As 

a further indication in the Appeals final 

rule, § 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 § 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 (§ 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 

§§ 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 

§§ 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 §§ 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 § 1.137, the 

introductory text of paragraphs (a) and 

(b) previously stated ‘‘a reexamination 

proceeding terminated under 

§§ 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 

§ 1.550(d) for ex parte reexamination, or 

is terminated under § 1.957(b) for inter 

partes reexamination. For the § 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 § 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 § 1.137(a), and 

that of § 1.137(b), is now revised to 

provide for the situation where the 

prosecution is ‘‘limited’’ pursuant to 

§ 1.957(c) (and the prosecution of the 

reexamination is not ‘‘terminated’’). 

Also, § 1.137(e) is revised consistently 

with § 1.137(a) and § 1.137(b). Further, 

conforming changes are made to §§ 1.8 

and 41.4, which are revised to contain 

language that tracks that of §§ 1.137(a) 

and 1.137(b). 

It is noted that § 1.957(c) does, in fact, 

result in the ‘‘terminating’’ of 

reexamination prosecution as to the 

non-patentable claims (under § 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 § 1.957(c) scenario, 

since the limited termination as to the 


cprice-sewell on PROD1PC66 with RULES
18896 Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 

non-patentable claims could easily be 

confused with the termination of the 

entirety of the prosecution of § 1.957(b). 

Accordingly, the § 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 § 1.8(a) by a patent owner, 

and pursuant to § 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 § 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 § 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 § 1.8(b) did not apply to 

the § 1.957(c) scenario where 

prosecution is ‘‘limited’’ rather than 

‘‘terminated.’’ Therefore, § 1.8(b) is 

revised to explicitly apply the § 1.8(b) 

remedy in the § 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 § 1.8(b) remedy is 

(and was) provided for the patent owner 

in the § 1.957(b) and § 1.957(c) 

scenarios, § 1.8(b) is now revised to 

explicitly provide a remedy for the 

requester in the § 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 §§ 1.961 to 1.977. 

In addition, §§ 1.959, 1.979, 1.993 were 

revised and new §§ 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, §§ 1.510(f) and 1.915(c) 

are revised to change § 1.34(a) to § 1.34, 

to update the two sections to conform 

with the revision of § 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 nonsubstantive 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, wellinformed 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 


cprice-sewell on PROD1PC66 with RULES
Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 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 Directorordered 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 resubmission) 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. 


cprice-sewell on PROD1PC66 with RULES
18898 Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 

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 § 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 § 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 abovediscussed 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 § 1.945. Three comments 

addressed this proposal. 

1. The law firm comment expresses a 

belief that the proposed revision to 

§ 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 

§ 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 § 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 


cprice-sewell on PROD1PC66 with RULES
Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 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 http://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 

§ 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 

§§ 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 thirdparty 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. 


cprice-sewell on PROD1PC66 with RULES
18900 Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 

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. Paragraph 

(c)(1) of § 1.1(c) has been changed from 

its prior reading ‘‘Requests for ex parte 

reexamination (original request papers 

only) should be additionally marked 

‘Mail Stop Ex Parte Reexam’ ’’ to now 

read ‘‘Requests for ex parte 

reexamination (original request papers) 

and all subsequent ex parte 

reexamination correspondence filed in 

the Office, other than correspondence to 

the Office of the General Counsel 

pursuant to § 1.1(a)(3) and § 1.302(c), 

should be additionally marked ‘Mail 

Stop Ex Parte Reexam.’ ’’

Section 1.8: Section 1.8(b) is amended 

to recite ‘‘In the event that 

correspondence is considered timely 

filed by being mailed or transmitted in 

accordance with paragraph (a) of this 

section, but not received in the * * * 

Office after a reasonable amount of time 

has elapsed from the time of mailing or 

transmitting of the correspondence 

* * * or the prosecution of a 

reexamination proceeding is terminated 

pursuant to § 1.550(d) or § 1.957(b) or 

limited pursuant to § 1.957(c), or a 

requester paper is refused consideration 

pursuant to § 1.957(a), the 

correspondence will be considered 

timely if the party who forwarded such 

correspondence:’’. The language ‘‘the 

prosecution of a reexamination 

proceeding is terminated’’ (for § 1.550(d) 

and § 1.957(b)) clarifies that the 

reexamination proceeding is not 

concluded under § 1.550(d) or 

§ 1.957(b), but rather, the prosecution of 

the reexamination is terminated. The 

language ‘‘or the prosecution of a 

reexamination proceeding is * * * 

limited pursuant to § 1.957(c)’’ more 

appropriately sets forth that the § 1.8(b) 

remedy is applied to avoid the § 1.957(c) 

consequences of a patent owner’s failure 

to respond in an inter partes 

reexamination. The language ‘‘or a 

requester paper is refused consideration 

pursuant to § 1.957(a)’’ more 

appropriately sets forth that the § 1.8(b) 

remedy is applied to avoid the § 1.957(a) 

consequences of a failure to file a 

requester paper in an inter partes 

reexamination. 

Section 1.17: Sections 1.17(l) and (m) 

are revised to clarify that a 

reexamination proceeding is not 

concluded under § 1.550(d) or 

§ 1.957(b), but rather, the prosecution of 

a reexamination is terminated under 

§ 1.550(d) or § 1.957(b), or 

reexamination prosecution is limited 

under § 1.957(c). No change is made as 

to the fee amounts. 

Section 1.33: Section 1.33(c) is 

revised to replace the prior recitation of 

‘‘the attorney or agent of record (see 

§ 1.32(b)) in the patent file at the 

address listed on the register of patent 

attorneys and agents maintained 

pursuant to §§ 11.5 and 11.11 or, if no 

attorney or agent is of record, to the 

patent owner or owners at the address 

or addresses of record’’ with 

‘‘correspondence address.’’ As § 1.33(c) 

is now revised, all notices, official 


cprice-sewell on PROD1PC66 with RULES
Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 18901 

letters, and other communications for 

the patent owner or owners in a 

reexamination proceeding will be 

directed to the correspondence address 

for the patent. As previously discussed, 

a change to the correspondence address 

may be filed with the Office during the 

enforceable life of the patent. 

Section 1.137: Sections 1.137(a), (b), 

and (e) are amended to more 

appropriately set forth the § 1.550(d) 

and § 1.957(b) consequences of the 

patent owner’s failure to make a 

required response. To do so, the 

introductory text of § 1.137(a) and 

§ 1.137(b) is now revised to recite ‘‘a 

reexamination prosecution becoming 

terminated under §§ 1.550(d) or 

1.957(b)’’ (emphasis added), rather than 

the previous recitation of ‘‘a 

reexamination proceeding becoming 

terminated under §§ 1.550(d) or 

1.957(b)’’ (emphasis added). In 

§ 1.137(e), ‘‘a terminated ex parte 

reexamination prosecution’’ and ‘‘a 

terminated inter partes reexamination 

prosecution or an inter partes 

reexamination limited as to further 

prosecution’’ are inserted in place of the 

previous recitation of ‘‘a terminated ex 

parte reexamination proceeding’’ and ‘‘a 

terminated inter partes reexamination 

proceeding,’’ respectively. 

Sections 1.137(a), (b) and (e) are 

amended to clarify that the 

reexamination proceedings under 

§ 1.957(c) referred to in § 1.137 are 

limited as to further prosecution; the 

prosecution is not terminated. To make 

this clarification, the introductory text 

portions of § 1.137(a) and § 1.137(b) are 

revised to recite that the prosecution is 

‘‘limited under § 1.957(c),’’ rather than 

‘‘terminated.’’ Section 1.137(e) is 

revised to also refer to ‘‘revival’’ of ‘‘an 

inter partes reexamination limited as to 

further prosecution.’’ The heading of 

§ 1.137 is also revised to add ‘‘limited.’’

Section 1.502: Section 1.502 is 

amended to state that the 

‘‘reexamination proceeding’’ is 

‘‘concluded by the issuance and 

publication of a reexamination 

certificate.’’ That is the point at which 

citations (having an entry right in the 

patent) that were filed after the order of 

ex parte reexamination will be placed in 

the patent file. 

Section 1.510: Section 1.510(f) is 

revised to change § 1.34(a) to § 1.34. 

This change updates the section to 

conform to the revision of § 1.34 made 

in Revision of Power of Attorney and 

Assignment Practice, 69 FR 29865 (May 

26, 2004) (final rule). 

Section 1.530: Section 1.530(a) is 

amended to provide for the disposition 

of the unauthorized paper being 

explicitly set forth in the § 1.530(a), i.e., 

the paper will be returned or discarded 

at the Office’s option. This explicit 

recitation of the Office’s discretion was 

proposed at the last line of the 

discussion of § 1.530(a) in the Sectionby-Section analysis of the proposed rule 

making notice and was not commented 

on. If the unauthorized paper was 

scanned into the electronic Image File 

Wrapper (IFW) for the reexamination 

proceeding, and thus, the paper cannot 

be physically returned or discarded, 

then the unauthorized paper entry will 

be marked ‘‘closed’’ and ‘‘non-public,’’

and it 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, via PAIR, to the public, patent 

owners, and representatives of patent 

owners. 

Section 1.530(k) is amended to state 

that proposed amendments in ex parte 

or inter partes reexamination are not 

effective until the reexamination 

certificate is both ‘‘issued and 

published’’ to conform § 1.530(k) with 

the language of 35 U.S.C. 307. Sections 

1.530(l)(1) and (l)(2) are amended to 

delete the references to ‘‘1.977’’ and add 

instead ‘‘1.997.’’ This corrects the prior 

reference to non-existent § 1.977. In 

addition, § 1.530(l)(2) is revised to recite 

that the reexamination proceeding is 

‘‘concluded’’ by a reexamination 

certificate under § 1.570 or § 1.997, as 

opposed to ‘‘terminated,’’ which applies 

to a reexamination prosecution. 

Section 1.550: Section 1.550(d) is 

amended to recite that ‘‘[i]f the patent 

owner fails to file a timely and 

appropriate response to any Office 

action or any written statement of an 

interview required under § 1.560(b), the 

prosecution in the ex parte 

reexamination proceeding will be a 

terminated prosecution, and the 

Director will proceed to issue and 

publish a certificate concluding the 

reexamination proceeding under § 1.570 

* * *.’’ This makes it clear that the 

patent owner’s failure to timely file a 

required response (or interview 

statement) will result in the 

‘‘terminating of prosecution of the 

reexamination proceeding,’’ but will not 

‘‘conclude the reexamination 

proceeding.’’ It is to be noted that the 

prosecution will be a terminated 

prosecution as of the day after the 

response was due and not timely filed. 

In this instance, the Notice of Intent to 

Issue Reexamination Certificate (NIRC) 

will be subsequently issued; however, it 

will not be the instrument that operates 

to terminate the prosecution, since that 

will have already automatically 

occurred upon the failure to respond. 

Further, ‘‘issued and published’’ is used 

to conform § 1.550(d) to the language of 

35 U.S.C. 307. 

Section 1.565: Section 1.565(c) is 

amended to set forth that merged 

(consolidated) ex parte reexamination 

proceedings will result in the ‘‘issuance 

and publication’’ of a single certificate 

under § 1.570. As pointed out above, 

this tracks the statutory language. 

Section 1.565(d) is further amended to 

make it clear that the issuance of a 

reissue patent for a merged reissuereexamination proceeding effects the 

conclusion of the reexamination 

proceeding. This is distinguished from 

the termination of the reexamination 

prosecution, as pointed out above. As a 

further technical change, 

‘‘consolidated’’ in the prior version of 

§ 1.565(c) is revised to now recite 

‘‘merged,’’ for consistency with the 

terminology used in § 1.565(d). There is 

no difference in the meaning of the two 

terms, and the use of different terms in 

the two subsections was confusing. In 

addition, in § 1.565(d), the prior 

recitation of ‘‘normally’’ is replaced by 

‘‘usually’’ (‘‘normally’’ was an 

inadvertent inappropriate choice of 

terminology). The same term (‘‘usually’’) 

would be added to § 1.565(c). As was 

pointed out in the Notice of Proposed 

Rule Making, there are instances where 

the Office does not merge (consolidate) 

an ongoing ex parte reexamination 

proceeding with a subsequent 

reexamination or reissue proceeding, 

which are addressed on a case-by-case 

basis. The following examples are again 

set forth. If the prosecution in an 

ongoing ex parte reexamination 

proceeding has terminated (e.g., a 

Notice of Intent to Issue Reexamination 

Certificate has issued), the ex parte 

reexamination proceedings will 

generally not be merged (consolidated) 

with a subsequent reexamination 

proceeding or reissue application. If an 

ongoing ex parte reexamination 

proceeding is ready for decision by the 

Board of Patent Appeals and 

Interferences, or is on appeal to the U.S. 

Court of Appeals for the Federal Circuit, 

it would be inefficient (and contrary to 

the statutory mandate for special 

dispatch in reexamination) to ‘‘pull 

back’’ the ongoing ex parte 

reexamination proceeding for merger 

with a subsequent reexamination 

proceeding or reissue application. As a 

final example, an ongoing ex parte 

reexamination proceeding might be 

directed to one set of claims for which 

a first accused infringer (with respect to 

the first set) has filed the ongoing 

request for reexamination. A later 

reexamination request might then be 

directed to a different set of claims for 


cprice-sewell on PROD1PC66 with RULES
18902 Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 

which a second accused infringer (with 

respect to the second set) has filed the 

request. In this instance, where there are 

simply no issues in common, merger 

would serve only to delay the resolution 

of the first proceeding without 

providing any benefit to the public (this 

would run counter to the statutory 

mandate for ‘‘special dispatch’’ in 

reexamination proceedings). If 

reexamination is to act as an effective 

alternative to litigation, the ability to 

decide the question of whether to 

merge/consolidate based on the merits 

of a particular fact pattern must be, and 

is, reserved to the Office. 

Section 1.570: The heading of § 1.570 

and § 1.570(a) are amended to make it 

clear that the issuance and publication 

of the ex parte reexamination certificate 

‘‘concludes’’ the reexamination 

‘‘proceeding.’’ The failure to timely 

respond, or the issuance of the NIRC, 

terminate prosecution, but do not 

conclude the reexamination proceeding. 

For consistency with the language of 35 

U.S.C. 307, § 1.570, paragraphs (b) and 

(d), are amended to recite that the 

reexamination certificate is both ‘‘issued 

and published.’’

Section 1.902: Section 1.902 is 

amended to state that the 

‘‘reexamination proceeding’’ is 

‘‘concluded by the issuance and 

publication of a reexamination 

certificate.’’ That is the point at which 

citations (having a right to entry in the 

patent) that were filed after the order of 

inter partes reexamination will be 

placed in the patent file. 

Section 1.915: Section 1.915(c) is 

revised to change the prior recitation of 

‘‘§ 1.34(a)’’ to § 1.34. This change 

updates the section to conform to the 

revision of § 1.34 made in Revision of 

Power of Attorney and Assignment 

Practice, 69 FR 29865 (May 26, 2004) 

(final rule). 

Section 1.923: In the first sentence of 

§ 1.923, the prior recitation of ‘‘§ 1.919’’

is changed to ‘‘§ 1.915,’’ since it is 

§ 1.915 that provides for the request; 

§ 1.919 provides for the filing date of the 

request. 

Section 1.945: Prior to the present 

revision, § 1.945 provided that ‘‘[t]he 

patent owner will be given at least thirty 

days to file a response to any Office 

action on the merits of the inter partes 

reexamination.’’ Section 1.945 is now 

revised to address the filing of a 

supplemental response to an Office 

action. Any supplemental response to 

an Office action will be entered only 

where the supplemental response is 

accompanied by a showing of sufficient 

cause why the supplemental response 

should be entered. The showing of 

sufficient cause must provide: (1) A 

detailed explanation of how the 

requirements of § 1.111(a)(2)(i) are 

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. 

Where the patent owner files a 

supplemental response to an Office 

action, the requester may file its 

comments under § 1.947 within 30 days 

after the date of service of the patent 

owner’s supplemental response, in 

order to preserve requester’s statutory 

comment right, in the event the Office 

exercises its discretion to enter the 

supplemental response. (The comments 

may address the merits of the 

proceeding and/or the adequacy of the 

showing of sufficient cause why the 

supplemental response should be 

entered.) If the requester fails to file 

comments, and the Office enters the 

supplemental response after 30 days 

from its filing, the requester will be 

statutorily barred from commenting at 

this stage, because, pursuant to 35 

U.S.C. 314(b)(2), 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.’’

If the requester files comments and 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 the 

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, via PAIR, to the public, patent 

owners, and representatives of patent 

owners. 

The decision on the sufficiency of the 

showing will not be issued until after 

receipt of requester comments under 

§ 1.947 on the supplemental response, 

or the expiration of the 30-day period 

for requester comments (whichever 

comes first). The decision will be 

communicated to the parties either prior 

to, or with, the next Office action on the 

merits, as is deemed appropriate for the 

handling of the case. 

A showing of sufficient cause will not 

be established by an explanation that 

the supplemental response is needed to 

address the requester’s comments (on 

patent owner’s response), and could not 

have been presented together with the 

original response because it was not 

known that requester would raise a 

particular point. The inter partes 

reexamination statute (35 U.S.C. 314) 

provides for the patent owner to 

respond to an Office action, and the 

requester to comment on that response. 

There is no intent in the statute to 

provide the patent owner with a chance 

to file a supplemental response to 

address the requester’s comments. 

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 pointed out above, no 

corresponding rule revision is needed in 

ex parte reexamination, since there is no 

third party requester comment on a 

patent owner response (that a patent 

owner will wish to address), and 

§ 1.111(a)(2) adequately deals with 

patent owner supplemental responses. 

Section 1.953: The prior version of 

§ 1.953(b) stated: ‘‘Any appeal by the 

parties shall be conducted in 

accordance with §§ 1.959–1.983.’’ This 

reference to §§ 1.959 through 1.983 is 

not correct, as some of the referenced 

rules had been deleted and others 

added. Instead of revising the incorrect 

reference, the entire sentence has been 

deleted as being out of place in § 1.953, 

which is not directed to the appeal 

process, but is rather directed to an 

Office action notifying parties of the 

right to appeal. Section 1.953(c) is 

amended to state that if a notice of 

appeal is not timely filed after a Right 

of Appeal Notice (RAN), then 

‘‘prosecution in the inter partes 

reexamination proceeding will be 

terminated.’’ This will not, however, 

conclude the reexamination proceeding. 

Section 1.956: The subheading 

preceding § 1.956 is amended to refer to 

termination of the prosecution of the 

reexamination, rather than the 

termination or conclusion of the 

reexamination proceeding, since 

termination of the prosecution of the 

reexamination is what the sections that 

follow address. It is § 1.997 (Issuance of 

Inter Partes Reexamination Certificate) 

that deals with conclusion of the 

reexamination proceeding. 

Section 1.957: Section 1.957(b) is 

amended to recite that ‘‘[i]f no claims 

are found patentable, and the patent 

owner fails to file a timely and 


cprice-sewell on PROD1PC66 with RULES
Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 18903 

appropriate response * * *, the 

prosecution in the reexamination 

proceeding will be a terminated 

prosecution, and the Director will 

proceed to issue and publish a 

certificate concluding the reexamination 

proceeding under § 1.997 * * *.’’

(Emphasis added). This makes it clear 

that the patent owner’s failure to timely 

file a required response, where no claim 

has been found patentable, will result in 

the terminating of prosecution of the 

reexamination proceeding, but will not 

conclude the reexamination proceeding. 

As previously discussed for ex parte 

reexamination, the prosecution will be a 

terminated prosecution as of the day 

after the response was due and not 

timely filed. In this instance, the NIRC 

will be subsequently issued; however, it 

will not be the instrument that operates 

to terminate the prosecution, since that 

will have already automatically 

occurred upon the failure to respond. 

Also, ‘‘issued and published’’ is used to 

conform § 1.550(d) to the language of 35 

U.S.C. 316. 

Section 1.958: The heading of § 1.958 

is amended to refer to the termination 

of prosecution of the reexamination, 

rather than the termination or 

conclusion of the reexamination 

proceeding, since that is what the rule 

addresses. 

Section 1.979: Section 1.979(b) is 

amended to recite that ‘‘[u]pon 

judgment in the appeal before the Board 

of Patent Appeals and Interferences, if 

no further appeal has been taken 

(§ 1.983), the prosecution in the inter 

partes reexamination proceeding will be 

terminated and the Director will issue 

and publish a certificate under § 1.997 

concluding the proceeding.’’ This makes 

it clear that the termination of an appeal 

for an inter partes reexamination 

proceeding will result in a terminating 

of prosecution of the reexamination 

proceeding if no other appeal is present, 

but will not conclude the reexamination 

proceeding. Rather, it is the 

reexamination certificate under § 1.997 

that concludes the reexamination 

proceeding. 

In addition, the title of § 1.979 is 

amended to add ‘‘appeal’’ before 

proceedings, and thus recite ‘‘Return of 

Jurisdiction from the Board of Patent 

Appeals and Interferences; termination 

of appeal proceedings.’’ This makes it 

clear that it is the appeal proceedings 

that are terminated; the reexamination 

proceeding is not terminated or 

concluded. 

Section 1.983: In § 1.983(a), the prior 

incorrect reference to § 1.979(e) is 

changed to recite the correct reference: 

§ 41.81. 

Section 1.989: Section 1.989(a) is 

amended to set forth that consolidated 

(merged) reexamination proceedings 

containing an inter partes 

reexamination proceeding will result in 

the issuance and publication of a single 

certificate under § 1.570. As pointed out 

above, this tracks the statutory language. 

Section 1.991: In § 1.991, ‘‘and 41.60–

41.81’’ is added to the previously 

recited ‘‘§§ 1.902 through 1.997,’’ since 

§§ 41.60–41.81 provide the requester 

with participation rights. Further, 

§ 1.991 is amended to make it clear that 

the issuance of a reissue patent for a 

merged reissue-reexamination 

proceeding effects the conclusion of the 

reexamination proceeding. This is 

distinguished from the termination of 

the reexamination prosecution, as 

pointed out above. 

Section 1.997: Both the heading of 

§ 1.997 and § 1.997(a) are amended to 

make it clear that the issuance and 

publication of the inter partes 

reexamination certificate effects the 

conclusion of the reexamination 

proceeding. The failure to timely 

respond, or the issuance of the NIRC, 

does not conclude the reexamination 

proceeding. Section 1.997(a) is also 

revised to make its language consistent 

with that of § 1.570(a). For consistency 

with the language of 35 U.S.C. 316, 

Section 1.997, paragraphs (b) and (d), 

are amended to recite that the 

reexamination certificate is both issued 

and published. 

Section 41.4: Paragraph (b) of § 41.4 is 

amended to (1) recite to ‘‘a 

reexamination prosecution becoming 

terminated under §§ 1.550(d) or 

1.957(b)’’ rather than the prior recitation 

of ‘‘a reexamination proceeding 

becoming terminated under §§ 1.550(d) 

or 1.957(b),’’ and (2) refer to the 

prosecution as being ‘‘limited’’ under 

§ 1.957(c) rather than ‘‘terminated’’

under § 1.957(c). These changes track 

those made in § 1.137; see the 

discussion of § 1.137. 

Rule Making Considerations 

Regulatory Flexibility Act: For the 

reasons set forth herein, the Deputy 

General Counsel for General Law of the 

United States Patent and Trademark 

Office has certified to the Chief Counsel 

for Advocacy of the Small Business 

Administration that the changes 

implemented in this notice will not 

have a significant economic impact on 

a substantial number of small entities. 

See 5 U.S.C. 605(b). The Office has 

issued between about 150,000 and 

190,000 patents each year during the 

last five fiscal years. The Office receives 

fewer than 100 requests for inter partes 

reexamination each year. The principal 

impact of the changes in this final rule 

is to prohibit supplemental patent 

owner responses to an Office action in 

an inter partes reexamination without a 

showing of sufficient cause. 

The change in this final rule to 

prohibit supplemental patent owner 

responses to an Office action in an inter 

partes reexamination without a showing 

of sufficient cause will not have a 

significant economic impact on a 

substantial number of small entities for 

two reasons. First, assuming that all 

patentees in an inter partes 

reexamination are small entities and 

that all would have submitted a 

supplemental response without 

sufficient cause, the change would 

impact fewer than 100 small entity 

patentees each year. Second, there is no 

petition or other fee for the showing of 

sufficient cause that would be necessary 

under the implemented change for a 

supplemental patent owner’s response 

to an Office action in an inter partes 

reexamination. 

Therefore, the changes implemented 

in this notice will not have a significant 

economic impact on a substantial 

number of small entities. 

Executive Order 13132: This rule 

making does not contain policies with 

federalism implications sufficient to 

warrant preparation of a Federalism 

Assessment under Executive Order 

13132 (Aug. 4, 1999). 

Executive Order 12866: This rule 

making has been determined to be not 

significant for purposes of Executive 

Order 12866 (Sept. 30, 1993). 

Paperwork Reduction Act: This notice 

involves information collection 

requirements which are subject to 

review by the Office of Management and 

Budget (OMB) under the Paperwork 

Reduction Act of 1995 (44 U.S.C. 3501 

et seq.). The collections of information 

involved in this notice have been 

reviewed and previously approved by 

OMB under OMB control numbers: 

0651–0027, 0651–0031, 0651–0033, and 

0651–0035. The United States Patent 

and Trademark Office is not 

resubmitting the other information 

collections listed above to OMB for its 

review and approval because the 

changes in this notice do not affect the 

information collection requirements 

associated with the information 

collections under these OMB control 

numbers. The principal impacts of the 

changes in this final rule are to: (1) 

Prohibit supplemental patent owner 

responses to an Office action in an inter 

partes reexamination without a showing 

of sufficient cause, (2) designate the 

correspondence address for the patent 

as the correspondence address for all 

communications for patent owners in ex 


cprice-sewell on PROD1PC66 with RULES
18904 Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 

parte and inter partes reexaminations, 

and (3) provide for the use of a single 

‘‘mail stop’’ address for the filing of 

substantially all ex parte reexamination 

papers (as is already the case for inter 

partes reexamination papers). 

Comments are invited on: (1) Whether 

the collection of information is 

necessary for proper performance of the 

functions of the agency; (2) the accuracy 

of the agency’s estimate of the burden; 

(3) ways to enhance the quality, utility, 

and clarity of the information to be 

collected; and (4) ways to minimize the 

burden of the collection of information 

to respondents. 

Interested persons are requested to 

send comments 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; and (2) 

Robert A. Clarke, Acting Director, Office 

of Patent Legal Administration, 

Commissioner for Patents, P.O. Box 

1450, Alexandria, VA 22313–1450. 

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 

37 CFR Part 1 

Administrative practice and 

procedure, Courts, Freedom of 

information, Inventions and patents, 

Reporting and recordkeeping 

requirements, Small businesses, and 

Biologics. 

37 CFR Part 41 

Administrative practice and 

procedure, Inventions and patents, 

Lawyers. 

■ For the reasons set forth in the 

preamble, 37 CFR parts 1 and 41 are 

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. Section 1.1 is amended by revising 

paragraph (c)(1) to read as follows: 

§ 1.1 Addresses for non-trademark 

correspondence with the United States 

Patent and Trademark Office. 

* * * * * 

(c) * * * 

(1) Requests for ex parte 

reexamination (original request papers) 

and all subsequent ex parte 

reexamination correspondence filed in 

the Office, other than correspondence to 

the Office of the General Counsel 

pursuant to § 1.1(a)(3) and § 1.302(c), 

should be additionally marked ‘‘Mail 

Stop Ex Parte Reexam.’’

* * * * * 

■ 3. Section 1.8 is amended by revising 

the introductory text of paragraph (b) to 

read as follows: 

§ 1.8 Certificate of mailing or 

transmission. 

* * * * * 

(b) In the event that correspondence is 

considered timely filed by being mailed 

or transmitted in accordance with 

paragraph (a) of this section, but not 

received in the U.S. Patent and 

Trademark Office after a reasonable 

amount of time has elapsed from the 

time of mailing or transmitting of the 

correspondence, or after the application 

is held to be abandoned, or after the 

proceeding is dismissed or decided with 

prejudice, or the prosecution of a 

reexamination proceeding is terminated 

pursuant to § 1.550(d) or § 1.957(b) or 

limited pursuant to § 1.957(c), or a 

requester paper is refused consideration 

pursuant to § 1.957(a), the 

correspondence will be considered 

timely if the party who forwarded such 

correspondence: 

* * * * * 

■ 4. Section 1.17 is amended by revising 

paragraphs (l) and (m) to read as 

follows: 

§ 1.17 Patent application and 

reexamination processing fees. 

* * * * * 

(l) For filing a petition for the revival 

of an unavoidably abandoned 

application under 35 U.S.C. 111, 133, 

364, or 371, for the unavoidably delayed 

payment of the issue fee under 35 U.S.C. 

151, or for the revival of an unavoidably 

terminated or limited reexamination 

prosecution under 35 U.S.C. 133 

(§ 1.137(a)): 

By a small entity (§ 1.27(a))—$250.00. 

By other than a small entity—$500.00. 

(m) For filing a petition for the revival 

of an unintentionally abandoned 

application, for the unintentionally 

delayed payment of the fee for issuing 

a patent, or for the revival of an 

unintentionally terminated or limited 

reexamination prosecution under 35 

U.S.C. 41(a)(7) (§ 1.137(b)): 

By a small entity (§ 1.27(a))—$750.00. 

By other than a small entity—

$1,500.00. 

* * * * * 

■ 5. Section 1.33 is amended by revising 

paragraph (c) to read as follows: 

§ 1.33 Correspondence respecting patent 

applications, reexamination proceedings, 

and other proceedings. 

* * * * * 

(c) All notices, official letters, and 

other communications for the patent 

owner or owners in a reexamination 

proceeding will be directed to the 

correspondence address. Amendments 

and other papers filed in a 

reexamination proceeding on behalf of 

the patent owner must be signed by the 

patent owner, or if there is more than 

one owner by all the owners, or by an 

attorney or agent of record in the patent 

file, or by a registered attorney or agent 

not of record who acts in a 

representative capacity under the 

provisions of § 1.34. Double 

correspondence with the patent owner 

or owners and the patent owner’s 

attorney or agent, or with more than one 

attorney or agent, will not be 

undertaken. 

* * * * * 

■ 6. Section 1.137 is amended by 

revising its heading, the introductory 

text of paragraph (a), the introductory 

text of paragraph (b), and paragraph (e) 

to read as follows: 

§ 1.137 Revival of abandoned application, 

terminated or limited reexamination 

prosecution, or lapsed patent. 

(a) Unavoidable. If the delay in reply 

by applicant or patent owner was 

unavoidable, a petition may be filed 

pursuant to this paragraph to revive an 

abandoned application, a reexamination 

prosecution terminated under 

§§ 1.550(d) or 1.957(b) or limited under 

§ 1.957(c), or a lapsed patent. A 

grantable petition pursuant to this 

paragraph must be accompanied by: 

* * * * * 

(b) Unintentional. If the delay in reply 

by applicant or patent owner was 

unintentional, a petition may be filed 

pursuant to this paragraph to revive an 

abandoned application, a reexamination 

prosecution terminated under 

§§ 1.550(d) or 1.957(b) or limited under 

§ 1.957(c), or a lapsed patent. A 

grantable petition pursuant to this 

paragraph must be accompanied by: 

* * * * * 

(e) Request for reconsideration. Any 

request for reconsideration or review of 

a decision refusing to revive an 

abandoned application, a terminated or 

limited reexamination prosecution, or 


cprice-sewell on PROD1PC66 with RULES
Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 18905 

lapsed patent upon petition filed 

pursuant to this section, to be 

considered timely, must be filed within 

two months of the decision refusing to 

revive or within such time as set in the 

decision. Unless a decision indicates 

otherwise, this time period may be 

extended under: 

(1) The provisions of § 1.136 for an 

abandoned application or lapsed patent; 

(2) The provisions of § 1.550(c) for a 

terminated ex parte reexamination 

prosecution, where the ex parte 

reexamination was filed under § 1.510; 

or 

(3) The provisions of § 1.956 for a 

terminated inter partes reexamination 

prosecution or an inter partes 

reexamination limited as to further 

prosecution, where the inter partes 

reexamination was filed under § 1.913. 

* * * * * 

■ 7. Section 1.502 is revised to read as 

follows: 

§ 1.502 Processing of prior art citations 

during an ex parte reexamination 

proceeding. 

Citations by the patent owner under 

§ 1.555 and by an ex parte 

reexamination requester under either 

§ 1.510 or § 1.535 will be entered in the 

reexamination file during a 

reexamination proceeding. The entry in 

the patent file of citations submitted 

after the date of an order to reexamine 

pursuant to § 1.525 by persons other 

than the patent owner, or an ex parte 

reexamination requester under either 

§ 1.510 or § 1.535, will be delayed until 

the reexamination proceeding has been 

concluded by the issuance and 

publication of a reexamination 

certificate. See § 1.902 for processing of 

prior art citations in patent and 

reexamination files during an inter 

partes reexamination proceeding filed 

under § 1.913. 

■ 8. Section 1.510 is amended by 

revising paragraph (f) to read as follows: 

§ 1.510 Request for ex parte 

reexamination. 

* * * * * 

(f) If a request is filed by an attorney 

or agent identifying another party on 

whose behalf the request is being filed, 

the attorney or agent must have a power 

of attorney from that party or be acting 

in a representative capacity pursuant to 

§ 1.34. 

■ 9. Section 1.530 is amended by 

revising paragraphs (a), (k) and (l) to 

read as follows: 

§ 1.530 Statement by patent owner in ex 

parte reexamination; amendment by patent 

owner in ex parte or inter partes 

reexamination; inventorship change in ex 

parte or inter partes reexamination. 

(a) Except as provided in § 1.510(e), 

no statement or other response by the 

patent owner in an ex parte 

reexamination proceeding shall be filed 

prior to the determinations made in 

accordance with § 1.515 or § 1.520. If a 

premature statement or other response 

is filed by the patent owner, it will not 

be acknowledged or considered in 

making the determination, and it will be 

returned or discarded (at the Office’s 

option). 

* * * * * 

(k) Amendments not effective until 

certificate. Although the Office actions 

will treat proposed amendments as 

though they have been entered, the 

proposed amendments will not be 

effective until the reexamination 

certificate is issued and published. 

(l) Correction of inventorship in an ex 

parte or inter partes reexamination 

proceeding. 

(1) When it appears in a patent being 

reexamined that the correct inventor or 

inventors were not named through error 

without deceptive intention on the part 

of the actual inventor or inventors, the 

Director may, on petition of all the 

parties set forth in § 1.324(b)(1)–(3), 

including the assignees, and satisfactory 

proof of the facts and payment of the fee 

set forth in § 1.20(b), or on order of a 

court before which such matter is called 

in question, include in the 

reexamination certificate to be issued 

under § 1.570 or § 1.997 an amendment 

naming only the actual inventor or 

inventors. The petition must be 

submitted as part of the reexamination 

proceeding and must satisfy the 

requirements of § 1.324. 

(2) Notwithstanding paragraph (1)(1) 

of this section, if a petition to correct 

inventorship satisfying the requirements 

of § 1.324 is filed in a reexamination 

proceeding, and the reexamination 

proceeding is concluded other than by 

a reexamination certificate under 

§ 1.570 or § 1.997, a certificate of 

correction indicating the change of 

inventorship stated in the petition will 

be issued upon request by the patentee. 

■ 10. Section 1.550 is amended by 

revising paragraph (d) to read as 

follows: 

§ 1.550 Conduct of ex parte reexamination 

proceedings. 

* * * * * 

(d) If the patent owner fails to file a 

timely and appropriate response to any 

Office action or any written statement of 

an interview required under § 1.560(b), 

the prosecution in the ex parte 

reexamination proceeding will be a 

terminated prosecution, and the 

Director will proceed to issue and 

publish a certificate concluding the 

reexamination proceeding under § 1.570 

in accordance with the last action of the 

Office. 

* * * * * 

■ 11. Section 1.565 is amended by 

revising paragraphs (c) and (d) to read 

as follows: 

§ 1.565 Concurrent office proceedings 

which include an ex parte reexamination 

proceeding. 

* * * * * 

(c) If ex parte reexamination is 

ordered while a prior ex parte 

reexamination proceeding is pending 

and prosecution in the prior ex parte 

reexamination proceeding has not been 

terminated, the ex parte reexamination 

proceedings will usually be merged and 

result in the issuance and publication of 

a single certificate under § 1.570. For 

merger of inter partes reexamination 

proceedings, see § 1.989(a). For merger 

of ex parte reexamination and inter 

partes reexamination proceedings, see 

§ 1.989(b). 

(d) If a reissue application and an ex 

parte reexamination proceeding on 

which an order pursuant to § 1.525 has 

been mailed are pending concurrently 

on a patent, a decision will usually be 

made to merge the two proceedings or 

to suspend one of the two proceedings. 

Where merger of a reissue application 

and an ex parte reexamination 

proceeding is ordered, the merged 

examination will be conducted in 

accordance with §§ 1.171 through 1.179, 

and the patent owner will be required 

to place and maintain the same claims 

in the reissue application and the ex 

parte reexamination proceeding during 

the pendency of the merged proceeding. 

The examiner’s actions and responses 

by the patent owner in a merged 

proceeding will apply to both the 

reissue application and the ex parte 

reexamination proceeding and will be 

physically entered into both files. Any 

ex parte reexamination proceeding 

merged with a reissue application shall 

be concluded by the grant of the 

reissued patent. For merger of a reissue 

application and an inter partes 

reexamination, see § 1.991. 

* * * * * 

■ 12. Section 1.570 is amended by 

revising its heading and paragraphs (a), 

(b) and (d), to read as follows: 


cprice-sewell on PROD1PC66 with RULES
18906 Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 

§ 1.570 Issuance and publication of ex 

parte reexamination certificate concludes 

ex parte reexamination proceeding. 

(a) To conclude an ex parte 

reexamination proceeding, the Director 

will issue and publish an ex parte 

reexamination certificate in accordance 

with 35 U.S.C. 307 setting forth the 

results of the ex parte reexamination 

proceeding and the content of the patent 

following the ex parte reexamination 

proceeding. 

(b) An ex parte reexamination 

certificate will be issued and published 

in each patent in which an ex parte 

reexamination proceeding has been 

ordered under § 1.525 and has not been 

merged with any inter partes 

reexamination proceeding pursuant to 

§ 1.989(a). Any statutory disclaimer 

filed by the patent owner will be made 

part of the ex parte reexamination 

certificate. 

* * * * * 

(d) If an ex parte reexamination 

certificate has been issued and 

published which cancels all of the 

claims of the patent, no further Office 

proceedings will be conducted with that 

patent or any reissue applications or any 

reexamination requests relating thereto. 

* * * * * 

■ 13. Section 1.902 is revised to read as 

follows: 

§ 1.902 Processing of prior art citations 

during an inter partes reexamination 

proceeding. 

Citations by the patent owner in 

accordance with § 1.933 and by an inter 

partes reexamination third party 

requester under § 1.915 or § 1.948 will 

be entered in the inter partes 

reexamination file. The entry in the 

patent file of other citations submitted 

after the date of an order for 

reexamination pursuant to § 1.931 by 

persons other than the patent owner, or 

the third party requester under either 

§ 1.913 or § 1.948, will be delayed until 

the inter partes reexamination 

proceeding has been concluded by the 

issuance and publication of a 

reexamination certificate. See § 1.502 for 

processing of prior art citations in 

patent and reexamination files during 

an ex parte reexamination proceeding 

filed under § 1.510. 

■ 14. Section 1.915 is amended by 

revising paragraph (c) to read as follows: 

§ 1.915 Content of request for inter partes 

reexamination. 

* * * * * 

(c) If an inter partes request is filed by 

an attorney or agent identifying another 

party on whose behalf the request is 

being filed, the attorney or agent must 

have a power of attorney from that party 

or be acting in a representative capacity 

pursuant to § 1.34. 

* * * * * 

■ 15. Section 1.923 is revised to read as 

follows: 

§ 1.923 Examiner’s determination on the 

request for inter partes reexamination. 

Within three months following the 

filing date of a request for inter partes 

reexamination under § 1.915, the 

examiner will consider the request and 

determine whether or not a substantial 

new question of patentability affecting 

any claim of the patent is raised by the 

request and the prior art citation. The 

examiner’s determination will be based 

on the claims in effect at the time of the 

determination, will become a part of the 

official file of the patent, and will be 

mailed to the patent owner at the 

address as provided for in § 1.33(c) and 

to the third party requester. If the 

examiner determines that no substantial 

new question of patentability is present, 

the examiner shall refuse the request 

and shall not order inter partes 

reexamination. 

■ 16. Section 1.945 is revised to read as 

follows: 

§ 1.945 Response to Office action by 

patent owner in inter partes reexamination. 

(a) The patent owner will be given at 

least thirty days to file a response to any 

Office action on the merits of the inter 

partes reexamination. 

(b) Any supplemental response to the 

Office action will be entered only where 

the supplemental response is 

accompanied by a showing of sufficient 

cause why the supplemental response 

should be entered. The showing of 

sufficient cause must include: 

(1) An explanation of how the 

requirements of § 1.111(a)(2)(i) are 

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. 

■ 17. Section 1.953 is amended by 

revising paragraphs (b) and (c) to read 

as follows: 

§ 1.953 Examiner’s Right of Appeal Notice 

in inter partes reexamination. 

* * * * * 

(b) Expedited Right of Appeal Notice: 

At any time after the patent owner’s 

response to the initial Office action on 

the merits in an inter partes 

reexamination, the patent owner and all 

third party requesters may stipulate that 

the issues are appropriate for a final 

action, which would include a final 

rejection and/or a final determination 

favorable to patentability, and may 

request the issuance of a Right of 

Appeal Notice. The request must have 

the concurrence of the patent owner and 

all third party requesters present in the 

proceeding and must identify all of the 

appealable issues and the positions of 

the patent owner and all third party 

requesters on those issues. If the 

examiner determines that no other 

issues are present or should be raised, 

a Right of Appeal Notice limited to the 

identified issues shall be issued. 

(c) The Right of Appeal Notice shall 

be a final action, which comprises a 

final rejection setting forth each ground 

of rejection and/or final decision 

favorable to patentability including each 

determination not to make a proposed 

rejection, an identification of the status 

of each claim, and the reasons for 

decisions favorable to patentability and/ 

or the grounds of rejection for each 

claim. No amendment can be made in 

response to the Right of Appeal Notice. 

The Right of Appeal Notice shall set a 

one-month time period for either party 

to appeal. If no notice of appeal is filed, 

prosecution in the inter partes 

reexamination proceeding will be 

terminated, and the Director will 

proceed to issue and publish a 

certificate under § 1.997 in accordance 

with the Right of Appeal Notice. 

■ 18. The undesignated center heading 

immediately preceding § 1.956 is 

revised to read as follows: 

Extensions of Time, Terminating of 

Reexamination Prosecution, and 

Petitions To Revive in Inter Partes 

Reexamination 

■ 19. Section 1.957 is amended by 

revising paragraph (b) to read as follows: 

§ 1.957 Failure to file a timely, appropriate 

or complete response or comment in inter 

partes reexamination. 

* * * * * 

(b) If no claims are found patentable, 

and the patent owner fails to file a 

timely and appropriate response in an 

inter partes reexamination proceeding, 

the prosecution in the reexamination 

proceeding will be a terminated 

prosecution and the Director will 

proceed to issue and publish a 

certificate concluding the reexamination 

proceeding under § 1.997 in accordance 

with the last action of the Office. 

* * * * * 

■ 20. Section 1.958 is amended by 

revising its heading to read as follows: 

§ 1.958 Petition to revive inter partes 

reexamination prosecution terminated for 

lack of patent owner response. 

* * * * * 


cprice-sewell on PROD1PC66 with RULES
Federal Register / Vol. 72, No. 72 / Monday, April 16, 2007 / Rules and Regulations 18907 

■ 21. Section 1.979 is amended by 

revising its heading and paragraph (b) to 

read as follows: 

§ 1.979 Return of Jurisdiction from the 

Board of Patent Appeals and Interferences; 

termination of appeal proceedings. 

* * * * * 

(b) Upon judgment in the appeal 

before the Board of Patent Appeals and 

Interferences, if no further appeal has 

been taken (§ 1.983), the prosecution in 

the inter partes reexamination 

proceeding will be terminated and the 

Director will issue and publish a 

certificate under § 1.997 concluding the 

proceeding. If an appeal to the U.S. 

Court of Appeals for the Federal Circuit 

has been filed, that appeal is considered 

terminated when the mandate is issued 

by the Court. 

■ 22. Section 1.983 is amended by 

revising paragraph (a) to read as follows: 

§ 1.983 Appeal to the United States Court 

of Appeals for the Federal Circuit in inter 

partes reexamination. 

(a) The patent owner or third party 

requester in an inter partes 

reexamination proceeding who is a 

party to an appeal to the Board of Patent 

Appeals and Interferences and who is 

dissatisfied with the decision of the 

Board of Patent Appeals and 

Interferences may, subject to § 41.81, 

appeal to the U.S. Court of Appeals for 

the Federal Circuit and may be a party 

to any appeal thereto taken from a 

reexamination decision of the Board of 

Patent Appeals and Interferences. 

* * * * * 

■ 23. Section 1.989 is amended by 

revising paragraph (a) to read as follows: 

§ 1.989 Merger of concurrent 

reexamination proceedings. 

(a) If any reexamination is ordered 

while a prior inter partes reexamination 

proceeding is pending for the same 

patent and prosecution in the prior inter 

partes reexamination proceeding has 

not been terminated, a decision may be 

made to merge the two proceedings or 

to suspend one of the two proceedings. 

Where merger is ordered, the merged 

examination will normally result in the 

issuance and publication of a single 

reexamination certificate under § 1.997. 

* * * * * 

■ 24. Section 1.991 is revised to read as 

follows: 

§ 1.991 Merger of concurrent reissue 

application and inter partes reexamination 

proceeding. 

If a reissue application and an inter 

partes reexamination proceeding on 

which an order pursuant to § 1.931 has 

been mailed are pending concurrently 

on a patent, a decision may be made to 

merge the two proceedings or to 

suspend one of the two proceedings. 

Where merger of a reissue application 

and an inter partes reexamination 

proceeding is ordered, the merged 

proceeding will be conducted in 

accordance with §§ 1.171 through 1.179, 

and the patent owner will be required 

to place and maintain the same claims 

in the reissue application and the inter 

partes reexamination proceeding during 

the pendency of the merged proceeding. 

In a merged proceeding the third party 

requester may participate to the extent 

provided under §§ 1.902 through 1.997 

and 41.60 through 41.81, except that 

such participation shall be limited to 

issues within the scope of inter partes 

reexamination. The examiner’s actions 

and any responses by the patent owner 

or third party requester in a merged 

proceeding will apply to both the 

reissue application and the inter partes 

reexamination proceeding and be 

physically entered into both files. Any 

inter partes reexamination proceeding 

merged with a reissue application shall 

be concluded by the grant of the 

reissued patent. 

■ 25. Section 1.997 is amended by 

revising its heading and paragraphs (a), 

(b), and (d) to read as follows: 

§ 1.997 Issuance and publication of inter 

partes reexamination certificate concludes 

inter partes reexamination proceeding. 

(a) To conclude an inter partes 

reexamination proceeding, the Director 

will issue and publish an inter partes 

reexamination certificate in accordance 

with 35 U.S.C. 316 setting forth the 

results of the inter partes reexamination 

proceeding and the content of the patent 

following the inter partes reexamination 

proceeding. 

(b) A certificate will be issued and 

published in each patent in which an 

inter partes reexamination proceeding 

has been ordered under § 1.931. Any 

statutory disclaimer filed by the patent 

owner will be made part of the 

certificate. 

* * * * * 

(d) If a certificate has been issued and 

published which cancels all of the 

claims of the patent, no further Office 

proceedings will be conducted with that 

patent or any reissue applications or any 

reexamination requests relating thereto. 

* * * * * 

PART 41—PRACTICE BEFORE THE 

BOARD OF PATENT APPEALS AND 

INTERFERENCES 

■ 26. The authority citation for 37 CFR 

part 41 continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 

23, 32, 41, 134, 135. 

■ 27. Section 41.4 is amended by 

revising paragraph (b) to read as follows: 

§ 41.4 Timeliness. 

* * * * * 

(b) Late filings. (1) A late filing that 

results in either an application 

becoming abandoned or a reexamination 

prosecution becoming terminated under 

§§ 1.550(d) or 1.957(b) of this title or 

limited under § 1.957(c) of this title may 

be revived as set forth in § 1.137 of this 

title. 

(2) A late filing that does not result in 

either an application becoming 

abandoned or a reexamination 

prosecution becoming terminated under 

§§ 1.550(d) or 1.957(b) of this title or 

limited under § 1.957(c) of this title will 

be excused upon a showing of excusable 

neglect or a Board determination that 

consideration on the merits would be in 

the interest of justice. 

* * * * * 

Dated: April 9, 2007. 

Jon W. Dudas, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. E7–7202 Filed 4–13–07; 8:45 am] 

BILLING CODE 3510–16–P 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Parts 2 and 7 

[Docket No.: PTO–T–2007–0005] 

RIN 0651–AC11 

Correspondence With the Madrid 

Processing Unit of the United States 

Patent and Trademark Office 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Final rule. 

SUMMARY: The United States Patent and 

Trademark Office (Office) revises the 

rules of practice to change the address 

for correspondence with the Madrid 

Processing Unit of the Office. The Office 

relocated to Alexandria, Virginia, in 

2004, and hereby changes the address 

for correspondence with the Office 

relating to filings pursuant to the 

Protocol Relating to the Madrid 

Agreement Concerning the International 

Registration of Marks to an Alexandria, 

Virginia address. 

DATES: Effective Date: The changes in 

this final rule are effective April 16, 

2007. 


cprice-sewell on PROD1PC66 with RULES