76756 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

DEPARTMENT OF COMMERCE

United States Patent and Trademark

Office

37 CFR Part 1

RIN 0651–AB04

Rules to Implement Optional Inter

Partes Reexamination Proceedings

AGENCY: United States Patent and

Trademark Office, Commerce.

ACTION: Final rule.

SUMMARY: The U.S. Patent and

Trademark Office (the Office) is

amending its rules of practice in patent

cases to provide revised procedures for

the reexamination of patents and

thereby implement certain provisions of

the American Inventors Protection Act

of 1999. The American Inventors

Protection Act of 1999 included an

amendment to the Patent Act to

authorize the extension of

reexamination proceedings via an

optional inter partes (multiparty)

reexamination procedure in addition to

the present ex parte (single party)

reexamination procedure as a means for

improving the quality of United States

patents. The Office intends, through this

amendment of its rules, to provide

patent owners and the public with

guidance on the procedures that the

Office will follow in conducting

optional inter partes reexamination

proceedings in addition to the present

ex parte reexamination proceedings.

The American Inventors Protection

Act of 1999 also made other

miscellaneous changes to the Patent Act

which relate to reexamination, and it is

intended that this amendment of the

Office’s rules will implement those

changes relating to reexamination.

DATES: Effective Date: February 5, 2001.

FOR FURTHER INFORMATION CONTACT:

Kenneth M. Schor or Gerald A. Dost,

Senior Legal Advisors. Kenneth M.

Schor may be contacted (a) by telephone

at (703) 305–1616; (b) by mail addressed

to: U.S. Patent and Trademark Office,

Box Comments—Patents, Commissioner

for Patents, Washington, D.C. 20231,

marked to the attention of Kenneth M.

Schor; (c) by facsimile transmission to

(703) 872–9408, marked to the attention

of Kenneth M. Schor; or (d) by

electronic mail message over the

Internet addressed to

reexam.rules@uspto.gov and titled

‘‘Inter Partes Reexamination.’’ Gerald A.

Dost may be contacted (a) by telephone

at (703) 305–1616; (b) by mail addressed

to: U.S. Patent and Trademark Office,

Box Comments—Patents, Commissioner

for Patents, Washington, D.C. 20231,

marked to the attention of Gerald A.

Dost; (c) by facsimile transmission to

(703) 308–6916, marked to the attention

of Gerald A. Dost; or (d) by electronic

mail message over the Internet

addressed to reexam.rules@uspto.gov

and titled ‘‘Inter Partes Reexamination.’’

SUPPLEMENTARY INFORMATION:

Background

This final rule sets forth distinct

procedures directed toward determining

and improving the quality and

reliability of United States patents. The

procedures provide for the optional

inter partes reexamination procedures

in addition to the present ex parte

reexamination procedures for the

reexamination of patents as provided for

by the American Inventors Protection

Act of 1999 as part of the conference

report (H. Rep. 106–479) on H.R. 3194,

Consolidated Appropriations Act, Fiscal

Year 2000. The text of the American

Inventors Protection Act of 1999, is

contained in title IV of S. 1948, the

Intellectual Property and

Communications Omnibus Reform Act

of 1999 (Public Law 106–113), the Act

which is incorporated by reference in

Division B of the conference report. The

procedures also provide for

implementation of other miscellaneous

changes to the reexamination of patents

also provided for in Public Law 106–

113.

In August 1995, the Office published

proposed rules in anticipation of H.R.

1732, 104th Cong., 1st Sess. (1995), a

predecessor of the present inter partes

reexamination statute. H.R. 1732 did

not, however, mature into a statute. The

August 1995 Notice of Proposed

Rulemaking entitled ‘‘Rules of Practice

in Patent Cases; Reexamination

Proceedings,’’ was published in the

Federal Register at 60 FR 41035 (August

11, 1995) and in the Official Gazette at

1177 Off. Gaz. Pat. Office 130 (August

22, 1995). Sixteen sets of written

comments were received in response to

the August 1995 Notice of Proposed

Rulemaking. A public hearing was held

at 9:30 a.m. on September 20, 1995.

Eight individuals offered oral comments

at the hearing.

In response to the 1999 Public Law

106–113, a notice of proposed

rulemaking was published in the

Federal Register on April 6, 2000, at 65

FR 18154–18186, and in the Official

Gazette on May 23, 2000, at 1234 O.G.

93–123. The 2000 notice of proposed

rulemaking addressed, and took into

consideration, the comments received in

response to the 1995 proposed rules. A

public hearing was not held.

Discussion of General Issues Involved

This final rule is in response to Public

Law 106–113, the Act which resulted

from suggestions and comments to the

Administration by the public, bar

groups, and the August 1992 Advisory

Commission on Patent Law Reform

suggesting more participation in the

reexamination proceeding by third party

requesters. Under the inter partes

reexamination rules set forth in this

final rule notice, third party requesters

will have greater opportunity to

participate in reexamination

proceedings in keeping with the spirit

and intent of the new law. At the same

time, participation will be limited to

minimize the costs and other effects of

reexamination requests on patentees,

especially individuals and small

businesses.

Ex parte reexamination proceedings

filed under chapter 30 of 35 U.S.C. (both

before and after the effective date,

November 29, 1999, of the new law) will

continue to be governed by 37 CFR

1.510–1.570. The final rules for optional

inter partes reexamination proceedings

under chapter 31 of 35 U.S.C. have been

numbered 37 CFR 1.902–1.997.

The effective date of the statute with

respect to the optional inter partes

reexamination proceedings as well as to

the existing ex parte reexamination

proceedings is complex. With the

exception of the amendments to 35

U.S.C. 41(a)(7) directed to the revival of

terminated ex parte and inter partes

reexamination proceedings, the new

statute and the conforming amendments

to the present statute take effect on the

date of enactment, November 29, 1999.

The changes, however, only apply to a

reexamination of a patent that issues

from an original application which was

filed in the United States on or after

November 29, 1999. Thus, for inter

partes reexaminations, the effective date

language (in section 4608 of S. 1948)

limits the applicability of the new inter

partes reexamination chapter 31 of 35

U.S.C., and that of the conforming

amendments to 35 U.S.C. 134, 141, 143

and 145, to any patent that issues from

an original application filed in the

United States on or after November 29,

1999, the effective date of Public Law

106–113. For ex parte reexaminations

filed under chapter 30 of 35 U.S.C., the

conforming amendments to 35 U.S.C.

134, 141, 143 and 145, apply only to

those ex parte reexamination

proceedings filed under § 1.510 for

patents that issue from an original

application that is filed in the United

States on or after November 29, 1999.

The conforming amendments to 35

U.S.C. 134, 141, 143 and 145,

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76757

correspondingly, will not apply to ex

parte reexamination proceedings filed

under § 1.510 for patents that issue from

an original application filed in the

United States prior to November 29,

1999. An ‘‘original application’’ filed in

the United States prior to November 29,

1999, is defined in the notice entitled

‘‘Guidelines Concerning the

Implementation of Changes to 35 U.S.C.

102(g) and 103(c) and the Interpretation

of the Term ‘Original Application’ in the

American Inventors Protection Act of

1999’’ which notice was published in

the Official Gazette at 1233 Off. Gaz.

Pat. Office 54 (April 11, 2000). The

phrase ‘‘original application’’ is

interpreted to encompass utility, plant

and design applications, including first

filed applications, continuations,

divisionals, continuations-in-part,

continued prosecution applications and

the national stage phase of international

applications. Therefore, the optional

inter partes reexamination, and the

application of the conforming

amendments to 35 U.S.C. 134, 141, 143

and 145 for both inter partes and ex

parte reexamination proceedings is

applicable to patents which issue from

all applications (except for reissue

applications) filed on or after November

29, 1999. A patent which issues from an

application filed prior to November 29,

1999, with a request for continued

examination (defined in section 4403 of

the Act) made on or after May 29, 2000,

however, is not eligible for the optional

inter partes reexamination procedure

nor application of the conforming

amendments discussed above, because a

request for continued examination is not

a filing of an application.

The conforming amendments also

amend 35 U.S.C. 41(a)(7) to include the

words ‘‘any reexamination proceeding’’

under the ‘‘unintentional’’ revival

provisions of the statute to provide the

patent owner with a remedy for an

unintentionally delayed response in any

reexamination proceeding. These words

‘‘any reexamination proceeding’’ clearly

make this section applicable to both ex

parte reexaminations and inter partes

reexaminations. The effective date of

this amendment to 35 U.S.C. 41(a)(7) is

one year after the date of enactment of

the Act, or November 29, 2000. See

section 4608 of S. 1948. Thus, as of

November 29, 2000, any ex parte or

inter partes reexamination filed before,

on, or after November 29, 2000, is

subject to the ‘‘unintentional’’ revival

provisions of the statute.

Regarding the reexamination fee, 35

U.S.C. 41(d) requires the Commissioner

of the United States Patent and

Trademark Office (the Commissioner) to

set the fee for the new optional inter

partes reexamination at a level which

will recover the estimated average cost

of the reexamination proceeding to the

Office. The estimated average cost is

$8,800 for an inter partes reexamination

proceeding. The difference in the cost

between an ex parte reexamination

($2,520) and an inter partes

reexamination ($8,800) takes into

account that the Office will expend

substantially more resources for

examination, supervision, training, etc.,

where the third party requester

participates in an inter partes

reexamination proceeding, and takes

into account the additional processing

steps that are expected during an inter

partes reexamination proceeding.

Discussion of the Major Specific Issues

Involved (1999 Statute)

The rules relating to inter partes

reexamination proceedings are directed

to the provisions set forth in chapter 31

of title 35 of the United States Code (35

U.S.C. 311–318). This Chapter provides

for the filing of requests for inter partes

reexamination, decisions on such

requests, inter partes reexamination,

appeal from inter partes reexamination

decisions, and the issuance of a

certificate at the termination of the inter

partes reexamination proceedings.

This final rule contains a number of

changes to the text of the rules that were

proposed for comment. The significant

changes (as opposed to grammatical

corrections) are discussed below.

Familiarity with the Notice of Proposed

Rulemaking is assumed.

Section 4732 of the American

Inventors Protection Act of 1999

changed (among other things) the title

‘‘Commissioner’’ to ‘‘Director.’’ In the

Notice of Proposed Rulemaking the title

‘‘Commissioner’’ was revised to read

‘‘Director’’ in the current rules, or

portions of the current rules, that were

proposed to be amended; and in the

proposed new rules the new title

‘‘Director’’ was used in place of the

former title ‘‘Commissioner.’’ In this

final rule, however, the title

‘‘Commissioner’’ is not being changed to

‘‘Director’’ where it appears in the

current rules of practice involved in this

final rule, and the title ‘‘Commissioner’’

and not ‘‘Director’’ is used in the new

rules adopted in this final rule. This is

because legislation is pending before

Congress that (if enacted) would restore

the former title ‘‘Commissioner.’’ See

Intellectual Property Technical

Amendments Act of 2000, H.R. 4870,

106th Cong. (2000).

The USPTO received 10 sets of

written comments (from Intellectual

Property Organizations, Law Firms,

Businesses and Patent Practitioners) in

response to the Notice of Proposed

Rulemaking. The written comments

have been analyzed. General comments

are addressed as a group separately from

the specific rules. Comments directed to

specific rules and the response to each

comment are provided with the

discussion of the specific rule.

Comments in support of proposed rules

generally have not been reported in the

responses to comments section.

Discussion of General Comments

General Comment 1: Examiner

Assignment (selection of examiner)

Two comments were received

directed to the selection of the examiner

who will be assigned the inter partes

reexamination. One comment suggested

that the ‘‘rules’’ rather than policy

should provide that an inter partes

reexamination be handled by an

examiner other than the one who

originally examined the application.

The second comment expressed

support for the Office’s announced

intention to adopt a policy that a

different examiner, other than those

actually involved in the examination

and issuing of the patent, will be

assigned the inter partes reexamination.

Response to General Comment 1

The Office’s intention to adopt a

policy that a different examiner, other

than those actually involved in the

examination and issuing of the patent,

will be assigned the inter partes

reexamination was announced in the

proposed rules. See Notice of proposed

rulemaking, Rules to Implement

Optional Inter Partes Reexamination

Proceedings, 65 FR 18154, 18157–58

(April 6, 2000), 1234 OG 93, 96 (May 23,

2000), Response to Issue 4, first

paragraph. As noted therein, studies

conducted by the Office as to the

selection of the examiner have not

shown any examiner bias irrespective of

whether the same or a different

examiner handles the reexamination.

The same examiner should not be

biased toward confirming patentability,

because a reexamination is not a rehash

of old issues, but rather, the resolution

of a new question of patentability. In

spite of these findings, the Office is, for

the most part, adopting the comments

suggesting assignment of the

reexamination to an examiner other

than the one who originally examined

and issued the patent. The new policy

is being adopted in order to eliminate

any perception by the public of bias by

the original examiner who handled the

patent. The change in the manner of

examiner selection, however, will be

implemented as a matter of policy,

76758 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

rather than by rule change. Specific

guidance as to policies, practice and

procedure as they will apply to

examiner selection in inter partes

reexamination proceedings will be

forthcoming in a separate Official

Gazette notice to be published in

conjunction with the final rules on inter

partes reexamination.

General Comment 2: Panel Review of

Examiner Actions

Two comments were received

directed to the review of the examiner’s

actions during the examination process.

One comment expressed support for the

Office’s announced intention to adopt a

policy to hold a panel review of the

examiner’s proposed action at selected

times during the examination. The

comment suggested that such a review,

however, be conducted of each action

by the examiner that includes an action

on the merits of the claims rather than

the announced intention of holding

such a review just prior to the decision

to order reexamination and at the close

of prosecution.

The second comment expressed

support for the proposed policy for

better review of the (single) examiner’s

decision during the reexamination. The

comment, however, erroneously

identified the announced change in

policy as a rule proposal.

Response to General Comment 2

The Office’s intention to adopt a

policy to hold a patentability review

conference (panel review) during the

examination process was announced in

the proposed rules. See Notice of

proposed rulemaking, Rules to

Implement Optional Inter Partes

Reexamination Proceedings, 65 FR

18154, 18158 (April 6, 2000), 1234 OG

93, 96 (May 23, 2000), Response to Issue

4, last paragraph. It was noted therein

that, in order to provide a thorough

review by a team of examiners, a

practice was being considered to hold a

panel review just prior to when the

decision on the request for

reexamination (order/denial) is issued

and at the close of prosecution (i.e., just

prior to ‘‘allowance’’ of the

reexamination or just prior to issuing a

right of appeal notice and final

rejection). The panel review would be

similar to the appeal conference review

done in an application on appeal to the

Board of Patent Appeals and

Interferences. Upon reconsideration, it

has been decided that a panel review

will not be conducted just prior to the

decision on the request for

reexamination (order/denial) and just

prior to the ‘‘allowance’’ of the

reexamination, i.e., issuance of a Notice

of Intent to Issue a Reexamination

Certificate (NIRC). A panel review is not

necessary at the time of the initial

determination to order/deny the request

for inter partes reexamination. If

reexamination is ordered, prosecution

proceeds, and both the patent owner

and the third party requester will have

the opportunity to address the position

of the examiner set forth in the first

Office action. Further, patentability

panel reviews will be conducted later in

the examination of the case. If the

reexamination request is denied, the

third party requester has the

opportunity under § 1.927 to request a

de novo review by the TC Group

Director of the examiner’s decision

denying reexamination. A panel review

is not necessary at the time of the

‘‘allowance’’ of the reexamination

because the ‘‘allowance’’ of the

reexamination in an inter partes

reexamination proceeding is essentially

a ministerial act performed (a) after

patent owner fails to respond to an

Office action and no claims have been

found patentable, (b) after a ‘‘right of

appeal notice and final rejection’’ is

issued, where neither party timely

appeals (or the appeal is dismissed), or

(c) after a final decision by the Board of

Patent Appeals and Interferences or the

court where no further appeal is timely

taken. Accordingly, no panel review is

needed just prior to the decision on the

request for reexamination (order/denial)

and just prior to issuance of the NIRC.

Rather, the two panel reviews will be

held at the critical stages of the

proceeding or just prior to issuing an

action closing prosecution and just prior

to issuing a right of appeal notice and

final rejection. Specific guidance as to

policies, practice and procedure as they

will apply to panel review of examiner’s

actions in inter partes reexamination

proceedings will be forthcoming in a

separate Official Gazette Notice to be

published in conjunction with the final

rules on inter partes reexamination.

It should further be noted that appeal

conferences are already mandatory in ex

parte reexamination proceedings just

prior to issuance of an examiner’s

answer to an appeal to the Board of

Patent Appeals and Interferences. Such

appeal conferences will also be

mandatory in inter partes reexamination

proceedings. The two patentability

panel reviews coupled with the appeal

conference will provide three instances

of multi-examiner reviews available in

any inter partes reexamination

proceeding which is prosecuted to the

appeal stage.

As to the first comment’s suggestion

that a panel review be conducted of

‘‘each’’ action by the examiner that

includes an action on the merits of the

claims, the Office plans to provide

oversight by a legal advisor for each

such action (as discussed below in

general comment 3) in order to ensure

that the examiner addresses each issue

presented by parties to the proceeding.

This oversight, coupled with the three

multi-examiner reviews available in any

inter partes reexamination proceeding

which is prosecuted to the appeal stage,

should ensure a high-quality, multidimensional examination of the

proceeding.

As to the second comment supporting

the ‘‘rule proposal’’ for better review of

the examiner’s decisions, it should be

noted that a ‘‘rule’’ was not proposed for

implementation of this practice. The

Notice of Proposed Rulemaking stated

the practice would be implemented as a

matter of policy rather than by rule.

General Comment 3: Where

Reexamination is Conducted in Office

Three comments were directed to

where in the Office, and by whom, the

reexamination will be conducted. The

first comment suggested that the inter

partes reexamination proceeding should

be conducted by a council system

comprising experienced examiners.

The second comment suggested that a

special Reexamination Corps be

established for conducting the inter

partes reexamination proceeding. The

examiners in the special Reexamination

Corps would have an independent

status such as that of the members of the

Board of Patent Appeals and

Interferences.

The third comment expressed support

for the Office’s announced intention to

consider the creation of a special group

of legal advisors to assist the patent

examiner in an inter partes

reexamination proceeding.

Response to General Comment 3

As to the first and second comments

suggesting a council system of multiple

examiners, or a special ‘‘Board’’ status

for the examiner, the comments are not

adopted in view of the Office’s intention

to provide oversight by legal advisors as

set forth below.

The third comment supports oversight

of the examiners by legal advisors

consistent with the Office’s intention as

announced in the proposed rules. See

Notice of Proposed Rulemaking, Rules

to Implement Optional Inter Partes

Reexamination Proceedings, 65 FR

18154, 18158 (April 6, 2000), 1234 OG

93, 96 (May 23, 2000), Response to Issue

4, second paragraph. As noted therein,

the Office is considering the creation of

a special group/unit having legal

advisors trained in inter partes

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76759

reexamination procedures to oversee the

examination of the inter partes

reexamination by the patent examiner in

the examining group. For technical

expertise, an examiner selected from the

examining group will be assigned the

reexamination. The advantage of

providing oversight to ensure timely,

full, and appropriate treatment of all

issues is that it will include (a) an

examiner familiar with the technology

to make the patentability decisions, and

(b) legal advisors to provide uniformity

of the reexamination practice and

procedure. Specific guidance as to

policies, practice and procedure as they

will apply to policy oversight of

examiner’s actions in inter partes

reexamination proceedings will be

forthcoming in a separate Official

Gazette notice to be published in

conjunction with the final rules on inter

partes reexamination.

General Comment 4: Definition of the

Statutory Term ‘‘Privies’’

One comment was received directed

to the statutory term ‘‘privies.’’ The term

is used in 35 U.S.C. 317 to dictate which

parties are prohibited from filing a

reexamination, based upon action by

other parties with whom they are in

privity. The comment states that this

important statutory term is not defined

in either the statute or the rules, and is

dangerously ambiguous without a

definition.

Response to General Comment 4

To the extent that the comment

proposed that ‘‘privies’’ be defined in

the rules package, it is not adopted. The

Office, as the sole agency that

administers the patent statute, properly

interprets statutory language in the first

instance, subject to review by the courts.

The question of whether a party is a

privy must be decided on a case-by-case

basis, evaluating all the facts and

circumstances of each individual

situation. It would not be appropriate at

this time to provide an ‘‘all

encompassing’’ definition, that might

not account for facts which could arise

in the future, which facts cannot be

anticipated.

It should be noted that the Office

generally will not have a need to resolve

the factual issue of whether or not one

party is a privy of another party. Section

1.915(b)(7) requires a third party

requester to certify that the estoppel

provisions of § 1.907 do not prohibit the

filing of the inter partes reexamination

request, and the Office does not intend

to look beyond this required

certification. It is only in the rare

instance where a challenge to the

accuracy of the certification is raised by

the patent owner, that the question

would then need to be addressed.

General Comment 5: Incorporation of

Certain Case Law Into the Rules

One comment asked whether the rules

would codify the case law relating to

claim construction, claim scope, the

burden of establishing facts and the

burden of persuasion (and their

standards) as they apply to

reexamination.

Response to General Comment 5

The comment is not adopted. The

rules will not state how the Office

should view claim construction, claim

scope, the burden of establishing facts

and the burden of persuasion (and their

standards) in reexamination. Rather, the

Office’s view of these issues and other

like issues will continue to track the

case law which is a continually evolving

body of law. Instructions to the

examiner on these issues will continue

to be provided in Official Gazette

Notices and in the Manual of Patent

Examining Procedure.

Discussion of Specific Rules and

Response to Comments

Section 1.4(a)(2) is being amended to

include inter partes reexamination

under §§ 1.902–1.997. No comment was

received on this section. It is adopted as

proposed.

Section 1.6(d)(5) is being amended to

include filing a request for inter partes

reexamination under § 1.913 as an

exception to the use of facsimile

transmission. No comment was received

on this section. It is adopted as

proposed.

The Notice of Proposed Rulemaking

included a proposed amendment to

§ 1.17 to implement § 4605(a) of the

American Inventors Protection Act of

1999. This proposed amendment has,

however, already been made in the final

rule to implement eighteen-month

publication of patent applications. See

Changes to Implement Eighteen-Month

Publication of Patent Applications,

Final Rule, 65 FR 57024 (September 20,

2000); 1239 Off. Gaz. Pat. Office 63

(October 10, 2000). Accordingly, it is no

longer necessary to make that

amendment of the rule in the present

inter partes reexamination rule package.

Section 1.17 was amended in the final

rule to implement eighteen-month

publication so that the title includes a

reference to reexamination to clearly

indicate that the enumerated fees may

apply to reexaminations as well as to

patent applications. Section 1.17(l) was

amended to reflect the fact that in the

case of reexaminations, petitions for

revival of a reexamination proceeding

terminated for an unavoidable failure of

the patent owner to timely respond will

require the fees of $55 for a small entity

and $110 for a large entity. Also,

§ 1.17(m) was amended to reflect the

fact that in the case of reexaminations,

petitions for revival of a reexamination

proceeding terminated for an

unintentional failure to timely respond

will require the fees of $605 for a small

entity and $1,210 for a large entity.

Note, however, that the unintentional

revival provisions of the statute are not

effective in any reexamination until

November 29, 2000. No comment was

received on this section. Sections 1.17(l)

and (m) as proposed in the Notice of

Proposed Rulemaking for the present

rule package were adopted in the final

rule to implement eighteen-month

publication of patent applications.

Section 1.20(c) is being amended to

reflect the fact that a request for an ex

parte reexamination under § 1.510(a)

will require a filing fee of $2,520; and

that a request for an inter partes

reexamination under § 1.915(a) will

require a filing fee of $8,800. For any

request for inter partes reexamination

filed prior to the effective date of this

final rule, the request must be

accompanied by the $2,520.00 fee for a

request for reexamination set forth in

§ 1.20(c) (as in effect prior to the

effective date of this final rule). The

$6,280.00 balance of the $8,800.00 fee

set forth in § 1.20(c)(2) will be due on

the effective date of this final rule in any

inter partes reexamination still pending

on the effective date of this final rule.

Three comments were received and

directed to this section.

Comments: The first comment noted

that the Office reduced the filing fee of

$11,000, proposed in the 1995 proposed

rules, to $8,800 in the 2000 Notice of

Proposed Rulemaking, but gave no

explanation for the reduction. The

comment opines that the reason for the

reduction was the many objections to

the high fee. The comment recommends

that the Office consider further reducing

the fee or at least make arrangements for

conducting a review of the actual costs

involved in inter partes reexaminations

after the procedure has been in effect for

a reasonable amount of time.

The second comment suggested that

considering the advantages and

disadvantages to the third party

requester involved in reexamination, the

inter partes reexamination is not

significantly more advantageous to the

third party requester than is ex parte

reexamination. The comment noted the

difference between the $2,520 fee for ex

parte reexamination and the $8,800 fee

for inter partes and opined that the high

fee will severely curtail the use of inter

76760 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

partes reexamination. The comment

suggested the third party requester

should not be burdened with the full

cost of inter partes reexamination, and

that an appropriate reexamination filing

fee would be less than $4,000.

The third comment suggested the

$8,800 inter partes reexamination filing

fee will be an effective barrier to an

intended aim of inter partes

reexamination, i.e., to provide a viable

alternative to the great cost and

uncertainty of patent litigation.

Response to Comment: The first

comment speculates as to why the filing

fee was reduced from $11,000 as

proposed in the 1995 Notice of

Proposed Rulemaking to $8,800 as

proposed in the 2000 Notice of

Proposed Rulemaking. The fee was

readjusted when, upon further analysis,

the Office realized that the proposed

$11,000 fee should not have included

projected costs incurred by the Board of

Patent Appeals and Interferences and

the Solicitor’s Office. Appeal fees are set

by statute under 35 U.S.C. 41(a)(6) and

thus are not cost recoverable as part of

the reexamination filing fee under 35

U.S.C. 41(d). Accordingly, the proposed

filing fee was adjusted downwardly.

As to the first comment suggesting reevaluating the filing fee after the

procedure has been in effect for a

reasonable amount of time, this is

required by statute. Section 4606 of S.

1948 requires the Commissioner, not

later than November 29, 2004, to submit

to the Congress a report evaluating

whether the inter partes reexamination

proceedings established by this

legislation is inequitable to any of the

parties. Such evaluation would include

an analysis of the filing fee, and its

burden on the third party requester.

The second comment suggests (1) that

the third party requester should not be

burdened with the full cost of the inter

partes reexamination, and (2) that a

reduced fee of less than $4,000 be set.

The statute, however, requires that the

third party requester pay the

reexamination filing fee established by

the Commissioner in accordance with

35 U.S.C. 41(d). Further, the

reexamination fees must under 35

U.S.C. 41(d) fully recover the cost of the

reexamination and the full amount of

the estimated fee must be charged.

As to the second and third comments

asserting that the high fee would

severely curtail the use of inter partes

reexamination, it is noted that the

overall costs of requesting and

participating in an inter partes

reexamination would include, in

addition to the $8,800 filing fee, the

attorney/agent fees throughout the

proceeding (including appeal costs) and

other prosecution-related costs (testing,

declarations, etc.). Inter partes

reexaminations will be hotly-contested,

adversarial proceedings. The estoppel

provisions of the statute will maximize

the third party requester’s incentives to

prevail in the reexamination. The

overall cost of such proceedings to the

third party requester could easily reach

$50,000 to $150,000, the amount

varying depending on variables such as

parties, number of claims, type of

evidence needed, etc. The $8,800 filing

fee is not perceived to be excessive in

light of the potential overall cost of an

inter partes reexamination proceeding,

and thus the filing fee would not in

itself be a deterrent to the filing of a

request for inter partes reexamination.

In those instances where a member of

the public deems the $8,800 cost of an

inter partes reexamination too high for

his or her needs or purposes, the filing

of an ex parte reexamination remains

available at a relatively low filing fee of

$2,520. The comments are not adopted,

and the section is adopted as proposed.

Section 1.25(b), which provides for

charging fees to deposit accounts, is

being amended to include a reference to

inter partes reexaminations under

§ 1.913. No comment was received on

this section. It is adopted as proposed.

Section 1.26 is being amended so as

to reflect the refund to the

reexamination requester where the

Commissioner decides not to institute a

reexamination proceeding. For ex parte

reexaminations filed under § 1.510, a

refund of $1,690 will be made to the

reexamination requester. For inter

partes reexaminations filed under

§ 1.913, a refund of $7,970 will be made

to the reexamination requester. In both

cases, $830 of the filing fee will be

retained, which amount reflects the

estimated average cost of the

reexamination proceeding through the

denial of the reexamination request. No

comment was received on this section.

It is adopted as proposed.

Section 1.112 is being amended to

also provide that after the patent owner

response under § 1.945 and the third

party requester comments under § 1.947,

the patent undergoing inter partes

reexamination will be reconsidered and

again examined. Section 1.112 is being

further amended so that the last

sentence reflects the fact that in the case

of inter partes reexaminations, the right

to reply may be limited by an action

closing prosecution under § 1.949 (prior

to the final action) or by a right of

appeal notice under § 1.953 (which is a

final action). No comment was received

on this section. It is adopted as

proposed.

Sections 1.113 and 1.116. Section

1.113, which provides for a final

rejection or action, is being amended to

limit its applicability to applications

and ex parte reexaminations filed under

§ 1.510. For final rejections or actions in

an inter partes reexamination filed

under § 1.913, new § 1.953 will control.

Section 1.116 is being amended so that

the title includes a reference to an

action closing prosecution and a right of

appeal notice in inter partes

reexaminations. Section 1.116(b), which

provides for amendments after final

action, is being amended to apply to

amendments filed by the patent owner

after an action closing prosecution in

inter partes reexaminations filed under

§ 1.913. Also, § 1.116(b) is being

amended to preclude amendments after

the right of appeal notice under § 1.953

except as provided for in § 1.116(d).

Section 1.116(d), which provides for

amendments after the decision on

appeal, is being amended to provide for

amendments after the decision on

appeal in an inter partes reexamination.

One comment was directed to these

sections.

Comment: The comment notes that

the proposed amendments to §§ 1.113

and 1.116 are based on a version of

those rules that is no longer in effect.

Sections 1.113 and 1.116 were amended

by virtue of the May 29, 2000 interim

rule published March 20, 2000, at 65 FR

14865 to refer, inter alia, to the new

§ 1.114 and requests for continued

examination. The comment suggests

that it is not the intent of the

reexamination rules to obviate the

changes made by the May 29, 2000,

interim rule and therefore the changes

made by the reexamination rules should

be based on the language of §§ 1.113 and

1.116 as amended by the interim rule of

May 29, 2000.

Response to Comment: The comment

is adopted. The final rules of this

package have been revised to amend the

most current version of the rules of

practice.

Section 1.121(i), which provides for

the manner of making amendments to

the description and claims in

reexamination proceedings, is being

amended to specify that such

amendments are made in accordance

with §§ 1.530(d)—(j) in both ex parte

reexaminations filed under § 1.510 and

inter partes reexaminations filed under

§ 1.913. No comment was received on

this section. It is adopted as proposed,

other than to change the subsection

designations for conformance with the

most current version of the rules of

practice as needed.

Sections 1.136(a)(2) and (b), which

provide for filing extensions of time in

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76761

applications, are being amended to

make it clear that § 1.956 is controlling

for extensions of time in inter partes

reexaminations. No comment was

received on this section. It is adopted as

proposed.

The notice of proposed rulemaking

included a proposed amendment to

§ 1.137 to implement § 4605(a) of the

American Inventors Protection Act of

1999. This proposed amendment has,

however, already been made in the final

rule to implement eighteen-month

publication of patent applications. See

Changes to Implement Eighteen-Month

Publication of Patent Applications,

Final Rule, 65 FR 57024 (September 20,

2000); 1239 Off. Gaz. Pat. Office 63

(October 10, 2000). Accordingly, it is no

longer necessary to make that

amendment of the rule in the present

inter partes reexamination rule package.

Section 1.137, which provides for

revival of abandoned applications or

lapsed patents, was amended in the

final rule to implement eighteen-month

publication to provide for revival of ex

parte reexamination proceedings

terminated under § 1.550(d), for revival

of inter partes reexamination

proceedings terminated under

§ 1.957(b), or for revival of rejected

claims terminated under § 1.957(c) in an

inter partes reexamination proceeding

where further prosecution has been

limited to claims found allowable at the

time of the failure to respond.

In the final rule to implement

eighteen-month publication, the title

was amended to include a terminated

reexamination proceeding. Section

1.137(a) was amended to include revival

of unavoidably terminated

reexamination proceedings. The

unavoidable delay provisions of 35

U.S.C. 133 are imported into, and are

applicable to, reexamination

proceedings by 35 U.S.C. 305 and 314.

See In re Katrapat, 6 USPQ2d 1863,

1865 (Comm’r Pat. 1988). Section

1.137(b) was amended to provide for

revival of unintentionally terminated

reexamination proceedings. The

unintentional delay fee provisions of 35

U.S.C. 41(a)(7) are imported into and are

applicable to all reexamination

proceedings by section 4605 of S. 1948.

Note that these changes pertain to all

reexaminations (i.e., both ex parte

reexaminations filed under § 1.510 and

inter partes reexaminations filed under

§ 1.913) and were stated by statute to

become effective on November 29, 2000

(one year after enactment of the statute).

Section 1.137(d) was amended to

provide that extensions of time for

requesting reconsideration of a decision

dismissing or denying a petition

requesting revival of a terminated

reexamination proceeding under

§§ 1.137(a) or (b) must be filed under

§ 1.550(c) for a terminated ex parte

reexamination proceeding, or under

§ 1.956 for a terminated inter partes

reexamination proceeding. No comment

was received on this section. Section

1.137 was adopted in the final rule to

implement eighteen-month publication

of patent applications in the manner as

proposed in the notice of proposed

rulemaking for the present rule package.

Sections 1.181(a) and (c) are being

amended to reflect the fact that a

petition thereunder may be filed in both

ex parte and inter partes reexamination

proceedings. No comment was received

on this section. It is adopted as

proposed.

Section 1.191, which provides for

appeal to the Board of Patent Appeals

and Interferences by the patent owner

from any decision adverse to

patentability, is being amended so as to

be applicable to applications and ex

parte reexaminations filed under § 1.510

but not to inter partes reexamination

proceedings filed under § 1.913.

Specifically, § 1.191 points out that

appeals to the Board of Patent Appeals

and Interferences in inter partes

reexamination proceedings filed under

§ 1.913 are controlled by §§ 1.959

through 1.981, and that §§ 1.191 through

1.198 are not applicable to appeals in

inter partes reexamination proceedings

filed under § 1.913. No comment was

received on this section. It is adopted as

proposed.

Section 1.191 is further being

amended to distinguish between (1) ex

parte reexamination proceedings filed

under § 1.510 for reexamination of

patents that issued from an original

application filed prior to November 29,

1999 (where an appeal is permitted

when claims have been twice or finally

rejected), and (2) ex parte reexamination

proceedings filed for reexamination of

patents that issued from an original

application filed on or after November

29, 1999 (where an appeal is only

possible when claims have been finally

rejected and is not possible where

claims have been twice rejected but not

finally rejected). This date distinction is

necessitated by the effective date of the

conforming amendments made to 35

U.S.C. 134 in S. 1948 being keyed to the

original filing date of the application

which issued as the patent under

reexamination. The effective date

language in section 4608 of S. 1948

limits the applicability of the

conforming amendments to 35 U.S.C.

134, 141, 143 and 145, to a

reexamination of a patent that issues

from an original application which is

filed on or after November 29, 1999.

Thus, the conforming amendments to 35

U.S.C. 134, 141, 143 and 145 apply only

to those ex parte reexamination

proceedings filed under § 1.510 for

patents that issue from an original

application which is filed on or after

November 29, 1999. The conforming

amendments do not apply to ex parte

reexamination proceedings filed under

§ 1.510 for patents that have issued or

will issue from an original application

which was filed prior to November 29,

1999. No comment was received on this

section. It is adopted as proposed.

Section 1.301, which provides for

appeal by the patent owner in a

reexamination proceeding to the U.S.

Court of Appeals for the Federal Circuit,

is being amended to be applicable to ex

parte reexamination proceedings filed

under § 1.510 and also to indicate, that

for inter partes reexamination

proceedings filed under § 1.913, § 1.983

is controlling. No comment was

received on this section. It is adopted as

proposed.

Section 1.303(a) and (b), which

provide for remedy by civil action under

35 U.S.C. 145 for the patent owner in a

reexamination proceeding, are being

amended so as to be applicable only to

ex parte reexaminations filed under

§ 1.510 for patents that issue from an

original application which is filed prior

to November 29, 1999. This date

distinction is necessitated for reasons

analogous to those set forth in the

discussion of § 1.191 above. Section

1.303 is further amended by adding a

new subsection (d) to clearly note that

no remedy by civil action under 35

U.S.C. 145 is available to the patent

owner for ex parte reexamination

proceedings filed under § 1.510 for

patents that issue from an original

application which is filed on or after

November 29, 1999, and for any inter

partes reexamination proceedings filed

under § 1.913. No comment was

received on this section. It is adopted as

proposed.

Section 1.304, which provides for the

time for appeal by the patent owner in

a reexamination proceeding to the U.S.

Court of Appeals for the Federal Circuit,

is being amended so as to make it

applicable to inter partes reexamination

proceedings filed under § 1.913. No

comment was received on this section.

It is adopted as proposed.

The section heading (title) to subpart

D and the undesignated center headings

for subpart D are being amended by

inserting ‘‘Ex Parte’’ before

‘‘Reexamination’’ to provide that the

reexamination rules in this subpart

generally apply to ex parte

reexamination proceedings. Where an

ex parte rule also applies to inter partes

76762 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

reexamination, it is explicitly

incorporated by reference into the inter

partes reexamination rules, e.g., § 1.933

(patent owner duty of disclosure)

incorporates § 1.555; and § 1.943

(requirement of responses, comments

and briefs) incorporates § 1.52. No

comment was received on these

changes. They are adopted as proposed.

Section 1.501(a), which provides for

citations of prior art in patent files, is

being amended to provide that a citation

shall be entered in the patent file except

as set forth in § 1.502 (newly created)

and § 1.902. Section 1.501(a) is further

amended by deleting the criteria for the

processing of a prior art citation filed

during an ex parte reexamination, and

moving that criteria to § 1.502 newly

created for that purpose. One comment

was received directed to § 1.501.

Comment: The comment suggests the

Office should re-address the prohibition

on a third party from submitting prior

art patents and printed publications for

entry into an ex parte reexamination

proceeding after the order to reexamine

has been mailed with the prohibition

applying, even where the prior art was

unavailable to a third party requester at

the time the ex parte request was filed,

or known only to another member of the

public. The comment argues that the

present system which requires the third

party to file another ex parte request for

reexamination (which includes the new

prior art) and that merger of the

reexamination proceedings is a

cumbersome, burdensome and timedelaying system as compared to, for

example, simply permitting the entry of

the new prior art and providing for one

more reexamination Office action and

response for new prior art found to be

relevant.

Response to Comment: When

promulgating the reexamination rules in

1981, it was the position of the Office

that an ex parte proceeding best served

the interests of all, and best complied

with the intent of the 1980 statute. To

preserve the ex parte nature of the

proceeding, it was decided that

consideration of citations of prior art

submitted after the reexamination order

will be delayed until the reexamination

proceeding has terminated, unless the

citation is submitted by the patent

owner or a third party requester in a

separate reexamination request or in a

reply to the patent owner’s statement.

While the filing of a separate request for

reexamination can add some delay to

the proceeding, this delay would not be

extensive. In contrast, permitting a third

party to file citations at any time for

consideration by the examiner could

seriously delay the reexamination

proceeding and militate against the

‘‘special dispatch’’ requirement of the

statute.

New § 1.502 provides for the

processing of prior art citations

submitted during an ex parte

reexamination proceeding. The

substance of § 1.502 was previously

contained in § 1.501(a), but was

separated out as a new section for

clarity. Once ex parte reexamination has

been ordered, only citations by the

patent owner under § 1.555 and by a

third party requester in a filing under

either § 1.510 or § 1.535 will be entered

during the pendency of the

reexamination proceeding. Citations by

other parties (who are not a party to the

reexamination) filed during the

pendency of the reexamination

proceeding will not be entered into the

patent file or the reexamination file

until the reexamination proceeding is

concluded unless made as a part of a

request for reexamination under § 1.510.

The titles of §§ 1.510–1.570 are being

amended by revising them to be limited

to ex parte reexamination where

applicable. No comment was received

on these changes. They are adopted as

proposed.

Section 1.510(a) is being amended to

limit the section to ex parte

reexamination proceedings. The notice

of proposed rulemaking included a

proposed amendment to § 1.510(b)(4)

which relates to the contents of the

reexamination request. This proposed

amendment has, however, already been

made in the final rule to implement the

Patent Business Goals. See Changes to

Implement the Patent Business Goals,

Final Rule, 65 FR 54604 (September 8,

2000); 1238 Off. Gaz. Pat. Office 77

(September 19, 2000). Section

1.510(b)(4) was amended to delete the

requirement of mounting the copy of the

patent to be reexamined in single

column format. Instead, a copy of the

entire patent including the front face,

drawings, and specification/claims (in

double column format) for which

reexamination is requested, and a copy

of any disclaimer, certificate of

correction, or reexamination certificate

issued in the patent will be required. All

copies must have each page plainly

written on only one side of a sheet of

paper. Section 1.510(b)(4) is now being

revised so that it applies to both ex

parte reexamination and inter partes

reexamination proceedings. No

comment was received on this section.

It is adopted as proposed.

Sections 1.515, 1.520, 1.525, 1.530,

1.535, and 1.540 are being amended to

recite the reexamination as ‘‘ex parte’’

reexamination where appropriate, to

eliminate any potential for confusion.

No comment was received on these

changes. They are adopted as proposed.

Section 1.530(d) is being revised so

that it (and §§ 1.530(e)–(k)) apply to

both ex parte reexamination and inter

partes reexamination proceedings. No

comment was received on this section.

It is adopted as proposed.

A new § 1.530(l), directed to

correction of inventorship of a patent,

was added in the final rules to

implement the Patent Business Goals.

See Changes to Implement the Patent

Business Goals, Final Rule, 65 FR 54604

(September 8, 2000); 1238 Off. Gaz. Pat.

Office 77 (September 19, 2000). Section

1.530(l) is now being revised so that it

applies to both ex parte reexamination

and inter partes reexamination

proceedings. Section 1.530(l) is also

being revised to state ‘‘on petition of all

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

rather than ‘‘on petition of all the

parties’’ to make it clear that all

‘‘parties’’ to the proceeding (e.g., an

inter partes reexamination third party

requester) need not, and should not, join

in the petition to correct inventorship.

Section 1.550, which provides for the

conduct of the reexamination

proceeding, is being amended to limit

the section to ex parte reexamination

proceedings filed under § 1.510. In

addition, § 1.550(d) is being amended to

clarify that the failure to file a written

statement of an interview as required

under § 1.560(b) shall be the basis for

terminating a reexamination proceeding.

Section 1.550(e)(1) specifically provides

for the revival of terminated ex parte

reexamination proceedings under the

unavoidable delay provisions of

§ 1.137(a). The unavoidable delay

provisions of 35 U.S.C. 133 are imported

into and are applicable to ex parte

reexamination proceedings by 35 U.S.C.

305. Section 1.550(e)(2) provides for the

revival of terminated ex parte

reexamination proceedings under the

‘‘unintentional’’ provisions of § 1.137(b).

The unintentional delay fee provisions

of 35 U.S.C. 41(a)(7) are imported into

and are applicable to ex parte and inter

partes reexamination proceedings by

section 4605 of S. 1948. Note, however,

that the unintentional delay provisions

of 35 U.S.C. 41(a)(7) only become

effective in reexamination proceedings

on November 29, 2000 (one year after

enactment of the statute). No comment

was received on this section. It is

adopted as proposed.

Section 1.552, which provides for the

scope of reexamination in ex parte

reexamination, is being amended to

limit the section to ex parte

reexamination proceedings filed under

§ 1.510. In addition, § 1.552(a) and (b)

are being amended to more clearly

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76763

specify that all of the claims (new

claims and amended patent claims) will

be examined on the basis of patents or

printed publications and, with respect

to subject matter added or deleted in the

reexamination proceeding, on the basis

of the requirements of 35 U.S.C. 112.

Sections 1.552 and 1.906 of the present

rule package were drafted to parallel the

text of § 1.906 as it was presented in the

August 1995 Notice of Proposed

Rulemaking entitled ‘‘Rules of Practice

in Patent Cases; Reexamination

Proceedings.’’ Section 1.552(c) is further

being amended to preclude the

examiner from independently

discovering and noting issues other than

those indicated in §§ 1.552(a) and (b). In

this regard, § 1.552(c) is being amended

by changing the phrase ‘‘If such

questions are discovered during a

reexamination proceeding,’’ to now read

‘‘If such issues are raised by the patent

owner or third party requester.’’ The

examiner should only note an issue

under § 1.552(c) after careful

consideration, and should only note the

raised issue once. Patent owners could

then file a reissue application if they

wish such issue to be resolved. It would

not be appropriate for the examiner sua

sponte to raise issues directed to the

patentability of a claim of a patent

which may not be resolved in the

reexamination. No comment was

received on this section. It is adopted as

proposed.

Section 1.555, which sets forth the

patent owner’s duty of disclosure in

reexamination, is being amended to

clearly apply to both ex parte and inter

partes reexaminations. In addition,

§ 1.552(c) is being amended to preclude

the examiner from independently

discovering and noting issues relating to

patent owner’s compliance with its duty

of disclosure. In this regard, § 1.552(c) is

being amended by changing the phrase

‘‘If questions of compliance with this

section are discovered during a

reexamination proceeding, * * *’’ to

now read ‘‘If questions of compliance

with this section are raised by the patent

owner or third party requester during a

reexamination proceeding, * * * .’’ It

would not be appropriate for the

examiner sua sponte to raise issues

directed to the issue of patent owner’s

compliance with its duty of disclosure

which may not be resolved in the

reexamination. No comment was

received on this section. It is adopted as

proposed.

Section 1.560, which provides for

interviews in reexamination

proceedings, is being amended to limit

the section to ex parte reexamination

proceedings filed under § 1.510. Note,

however, that there will be no

interviews which address the issues of

the proceeding permitted in inter partes

reexamination proceedings under

§ 1.913. See § 1.955. In addition,

§ 1.560(b) is being amended to clarify

that the patent owner must file a written

statement of an interview after an

interview is held. The written statement

may be filed either as a separate paper

within one month after the date of the

interview, or as a separate part of a

response to an outstanding Office

action, whichever is later. One comment

was received and directed to this

section.

Comment: The comment suggests that

when reexamination is requested by a

third party, there is usually litigation

directed to the patent for which

reexamination is requested involving

severely conflicting interests between

the patent owner and the third party

requester. The comment asserts that

during reexamination, the examiner is

required to maintain neutrality, and

therefore the scope of the interview

should be limited to that needed to

deepen the examiner’s understanding of

the technology and to clarify points of

contention and that the examiner

should be prohibited from discussing

amendment proposals during an

interview with the patent owner.

Response to Comment: The statute, 35

U.S.C. 305, provides that reexamination

will be conducted according to the

procedures established for initial

examination under the provisions of

sections 132 and 133 of this title. In a

very real sense, the intent of

reexamination is to start over and

reexamine the patent and examine new

and amended claims as they would have

been examined in the original

application of the patent. Section 132

permits the patent owner to propose

amendments to the claims which will be

reexamined by the examiner. The

procedures established for initial

examination under section 132 permit

the patent owner to propose

amendments either by written response

or during an interview with the

examiner. See section 713.01 of the

Manual of Patent Examining Procedure

which provides guidance as to the

submission of amendments in

conjunction with interviews, and the

rationale therefor. In both cases, the

examiner is obligated to consider such

amendment proposals when conducting

his or her examination of the claims in

light of the prior art. The comment is

not adopted, and the section is adopted

as proposed.

Section 1.565, which provides for

concurrent Office proceedings, is being

amended to limit the reexamination

proceedings of the section to ex parte

reexamination proceedings filed under

§ 1.510. In addition, § 1.565(e) is being

amended to change ‘‘examiner-in-chief’’

to ‘‘administrative patent judge’’ to

reflect the current title. Also, the

appropriate references for concurrent

proceedings which include an inter

partes reexamination proceeding have

been added. Section 1.565(c) is being

amended to make it clear that after

prosecution has been terminated in a

pending reexamination proceeding (e.g.,

by the issuance of a Notice of Intent to

Issue a Reexamination Certificate) there

is no right of merger of any

subsequently filed reexamination

request. No comment was received on

this section. It is adopted as proposed.

Section 1.570 is being amended to

recite the reexamination as ‘‘ex parte’’

reexamination where appropriate, to

eliminate any potential for confusion.

No comment was received on this

section. It is adopted as proposed.

A new title Subpart H—Inter Partes

Reexamination of Patents (Applicable to

any Patent that Issues from an Original

Application Filed in the United States

on or after November 29, 1999) has been

added which provides that the

reexamination rules in this subpart

generally apply to inter partes

reexamination proceedings on patents

having a filing date on or after

November 29, 1999. Some of the inter

partes reexamination rules specifically

incorporate ex parte reexamination

rules, e.g., § 1.943 (requirement of

responses, comments and briefs)

incorporates § 1.52, and § 1.933 (patent

owner duty of disclosure) incorporates

§ 1.555. One comment was received

directed to this section.

Comment: The comment suggested

that the heading ‘‘Subpart H

Reexamination of Patents’’ as proposed

in the Notice of Proposed Rulemaking

be amended to add ‘‘(Applicable to

Patents having an Original United States

Filing date On or After November 29,

1999).’’ The comment notes that the

effective date of the statute with respect

to optional inter partes reexamination is

complex, and it would be helpful to

practitioners and those considering inter

partes reexamination if they are clearly

advised of what patents are subject to

such proceedings.

Response to Comment: The comment

is adopted in part. The heading has been

amended to add ‘‘(Applicable to any

Patent that Issues from an Original

Application Filed in the United States

on or after November 29, 1999.)’’ This

language more closely tracks the

language of the statute than does the

language suggested in the comment.

New § 1.902 provides for the

processing of prior art citations during

76764 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

an inter partes reexamination

proceeding and is analogous to new

§ 1.502 which deals with prior art

citations during an ex parte

reexamination proceeding. No comment

was received on this section. It is

adopted as proposed.

New § 1.903 provides that the patent

owner and the third party requester

shall be sent copies of all Office actions,

and that the patent owner and the third

party requester must serve copies of all

papers on all other parties in the inter

partes reexamination proceeding or they

may be refused consideration by the

Office. This is analogous to the

provisions of § 1.550(e). No comment

was received on this section. It is

adopted as proposed.

New § 1.904 provides that a notice of

the filing of an inter partes

reexamination request will be published

in the Official Gazette under § 1.11(c)

and that such a notice will be

considered to be constructive notice to

the patent owner. No comment was

received on this section. It is adopted as

proposed.

New § 1.905 provides that, unless

otherwise provided for, a submission of

papers by the public other than third

party requesters in an inter partes

reexamination proceeding will not be

considered in the proceeding and will

be treated in accordance with the

requirements of a prior art submission

under § 1.902 if it complies with the

requirements of § 1.501. Submissions

not in accordance with § 1.501 will be

returned to the sender. No comment was

received on this section. It is adopted as

proposed.

New § 1.906 covers the scope of

reexamination in an inter partes

reexamination proceeding. While it is

not intended that examiners will

routinely complete a new search when

conducting an inter partes

reexamination, examiners may conduct

additional searches and cite and apply

additional prior patents and printed

publications when they consider it

appropriate and beneficial to do so.

Section 1.906(a) provides that the

examination is only on the basis of

patents or printed publications and,

with respect to subject matter added or

deleted during the inter partes

reexamination, on the basis of the

requirements of 35 U.S.C. 112. Section

1.906(b) provides that claims in a

reexamination proceeding must not

enlarge the scope of the claims of the

patent and must not introduce new

matter. Section 1.906(c) provides that

issues relating to matters other than

those indicated in §§ 1.906(a) and (b) of

this section (e.g., on sale, public use,

duty of disclosure, etc.) will not be

resolved in a reexamination proceeding,

but will be noted by the examiner as

being an open issue in the record if such

issues are raised by the patent owner or

the third party requester. The examiner

should only note an issue under

§ 1.906(c) after careful consideration,

and should only raise the noted issue

once. Patent owners could then file a

reissue application if they wish such

issue to be resolved. It would not be

appropriate for the examiner sua sponte

to raise issues directed to the

patentability of a claim of a patent

which may not be resolved in the

reexamination. No comment was

received on this section. It is adopted as

proposed.

New § 1.907 sets forth prohibitions on

the filing of an inter partes

reexamination request. The basis for this

section is 35 U.S.C. 317. Under

§ 1.907(a), once an order for an inter

partes reexamination has been issued,

neither the third party requester, nor

any of its privies, may file a subsequent

request for an inter partes

reexamination of the patent until an

inter partes reexamination certificate is

issued, unless such filing is authorized

by the Commissioner. Under § 1.907(b),

once a final decision has been entered

against a party in a civil action that the

party has not sustained its burden of

proving invalidity of any patent claim in

suit, then that party, and its privies, are

thereafter precluded from requesting an

inter partes reexamination of any such

patent claim on the basis of issues

which that party, or its privies, raised or

could have raised in such civil action;

and an inter partes reexamination

requested by that party, or its privies, on

the basis of such issues may not

thereafter be maintained by the Office.

Under § 1.907(c), if a final decision in

an inter partes reexamination

proceeding instituted by a third party

requester is favorable to patentability of

any patent claim, then that party, or its

privies, may not thereafter request an

inter partes reexamination of any such

patent claim on the basis of issues

which that party, or its privies, raised or

could have raised in such inter partes

reexamination proceeding. Two

comments were received directed to this

section.

Comments: The first comment,

directed to § 1.907(b), suggests that if

the Office intends to determine on a

case-by-case basis whether the third

party requester could have raised an

issue in a civil action, the phrase ‘‘or

could have raised’’ should be deleted

from § 1.907(b). The second comment

directed to §§ 1.907(b) and (c) suggests

that the words ‘‘could have raised’’

should be changed to ‘‘had become or

should have become known to that

party upon reasonable inquiry at the

time the inter partes reexamination was

ordered.’’ The comment argues the

‘‘could have raised’’ language would

theoretically bar a third party from

requesting a new reexamination based

on any existing patent or printed

publication, even those remotely located

in another file of the third party.

Response to Comments: As to the first

comment, under § 1.915(b)(7), a third

party requester is required to include a

certification that the estoppel provisions

of § 1.907 do not prohibit the filing of

the inter partes reexamination request.

The Office does not intend to look

beyond that certification. The Office

does not plan to make a case-by-case

determination. It is only in the rare

instance where a challenge to the

accuracy of the certification is raised by

the patent owner, that the question

would then need to be addressed.

As to the second comment addressing

§§ 1.907(b) and (c), the statute, 35 U.S.C.

317, recites ‘‘on the basis of issues

which that party or its privies raised or

could have raised in such civil action or

inter partes reexamination proceeding.’’

The rule merely tracks the statutory

language. Adoption of the suggested

language would appear to enlarge the

scope of the statutory estoppel. The

interpretation of the statutory language

is subject to statutory construction on a

case-by-case basis depending on the

particular facts of the individual case.

As noted above, the Office does not

intend to make such a determination in

each reexamination, but will rely upon

the certification by the third party

requester under § 1.915(b)(7). The

comments are not adopted, and the

section is adopted as proposed.

New § 1.913 provides for any person

(unless the estoppel provisions of

§ 1.907 apply) to file a request under 35

U.S.C. 311 for an inter partes

reexamination of a patent which issued

from an original application filed on or

after November 29, 1999. The time

period for filing such a request is

limited to the period of enforceability of

the patent for which the request is filed.

The language ‘‘other than the patent

owner or its privy’’ has been deleted

from § 1.913. One comment was

received addressed to this section.

Comment: Section 1.913, as proposed

in the Notice of Proposed Rulemaking,

excluded the patent owner or its privies

from those persons who may file an

inter partes request for reexamination.

The comment suggests the Office has

exceeded its authority in excluding the

patent owner or its privies. The

comment argues that Congress intended

that the patent owner could be

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76765

permitted to file an inter partes

reexamination because 35 U.S.C. 311(c),

which requires the Commissioner to

send a copy of the request to the patent

owner, explicitly relieves the

Commissioner of that obligation when

the inter partes requester is the patent

owner. The comment notes that a patent

owner may feel the chances of staying

a pending litigation are increased by

requesting an inter partes

reexamination, as compared to an ex

parte reexamination, because of the

provisions of 35 U.S.C. 318 (stay of

litigation).

Response to Comment: The Office

does not agree with the statutory

interpretation presented in the

comment. Portions of the language

contained in sections 311, 312, 314, and

317 of the 1999 statute which suggests

that the patent owner may file an inter

partes request for reexamination are

regarded as inadvertent legislative

drafting errors created through the

evolution of the final version of the

1999 statute. The language of the 1980

ex parte reexamination statute, which

was used as the basis for the 1999

statute, includes language which

permits either the patent owner or a

third party to file a request for ex parte

reexamination. The earlier versions of

the 1999 statute merely proposed to

amend the 1980 statute by making the

ex parte reexamination more inter

partes in nature. The final version of the

1999 statute was re-drafted at the last

moment and for the first time created

separate ex parte (chapter 30) and inter

partes (chapter 31) reexamination

statutes by modeling the inter partes

practice on the ex parte practice. The

drafters, however, inadvertently did not

remove the language of the 1980 statute

directed to patent owner filings of

reexamination requests, even though an

inter partes procedure is clearly

inappropriate for a reexamination

initiated by a patent owner. Note further

that legislation is pending before

Congress in which the noted language

has been deleted or changed. See the

Intellectual Property Technical

Amendments Act of 2000, H.R. 4870,

106th Cong. (2000), which clearly limits

the parties who may file an inter partes

request for reexamination to be third

parties other than the patent owner.

Accordingly, the Office does not agree

with the comment that the statute

permits a patent owner to file an inter

partes reexamination request.

In the interest of being consistent with

the statute, the phrase ‘‘other than the

patent owner or its privies’’ has been

deleted from the section. The change is

being made solely for the purpose of

more closely following the language of

the statute.

New § 1.915(a) requires payment of

the fee for requesting an inter partes

reexamination which is set forth in

§ 1.20(c)(2). Section 1.915(b) indicates

what each request for inter partes

reexamination must include. The

requirements are analogous to the

requirements of § 1.510(b) for filing an

ex parte reexamination request with the

most notable difference being that the

third party requester must be identified

in an inter partes reexamination request.

Section 1.915(c) indicates that requests

for an inter partes reexamination may be

filed by attorneys or agents on behalf of

a third party requester, but it is noted

that the real party in interest must be

identified. Section 1.915(d) provides

that if the request for inter partes

reexamination does not meet all the

requirements of § 1.915(b), the third

party requester may be given an

opportunity to complete the inter partes

reexamination request to avoid having

the proceeding vacated. One comment

was received directed to this section.

Comment: The comment noted that

§ 1.915(b)(8) requires any person

requesting inter partes reexamination to

specify the ‘‘real party in interest’’ in a

statement. The comment asks whether

this language coupled with the

requirement of § 1.915(c) prohibits an

attorney filing the request from being

the real party in interest.

Response to Comment: Section

1.915(c) requires an attorney or agent

who files a request for inter partes

reexamination on behalf of another

party to have a power of attorney or to

be acting in a representative capacity

under § 1.34(a). Section 1.915(c) does

not preclude an attorney from filing a

request for inter partes reexamination

on behalf of himself or herself as the

real party in interest. The section is

adopted as proposed.

New § 1.919 indicates that the date on

which the entire fee for a request for

inter partes reexamination is received

will be considered to be the filing date

of the request for inter partes

reexamination. No comment was

received on this section. It is adopted as

proposed.

New § 1.923 provides for a

determination by the examiner as to

whether the request has presented a

substantial new question of

patentability under 35 U.S.C. 312 and

requires that the determination be made

within three months of the filing date of

the request. One comment was received

directed to this section.

Comment: The comment notes that

section 4607 of S. 1948 provides that a

third party who requests inter partes

reexamination is estopped from

challenging at a later time, in any civil

action, any fact determined ‘‘during the

process of’’ such reexamination. Section

1.923 provides that if the examiner

determines no substantial new question

of patentability is present, the examiner

will deny the request and not order

reexamination. The comment argues

that facts determined in the decision

ordering or denying reexamination are

not facts determined ‘‘during the

process of’’ such reexamination because

a decision denying reexamination is not

a decision made after full submission of

all of the evidence and arguments. The

comment suggests that the following

sentence should be added at the end of

the section in order to clearly point this

out: ‘‘Such determination does not

constitute a finding of fact under the

estoppel provisions of Section 4607.’’

Response to Comment: Whether or

not facts determined in deciding to deny

or order reexamination are facts

‘‘determined during the process of such

reexamination’’ is a question to be

answered by the Federal courts. By

statute, the estoppel arises in a civil

action, not in an Office proceeding. The

comment is not adopted, and the section

is adopted as proposed.

New § 1.925 provides for a refund

under § 1.26(c) of a portion of the filing

fee if inter partes reexamination is not

ordered. See the discussion of § 1.26(c)

above as to the amount of the refund. No

comment was received on this section.

It is adopted as proposed.

New § 1.927 provides for review by

petition to the Commissioner of a

decision denying inter partes

reexamination. No comment was

received on this section. It is adopted as

proposed.

New § 1.931 provides for ordering

inter partes reexamination where a

substantial new question of

patentability has been found pursuant to

§ 1.923. Section 1.931(b) places a

limitation on the selection of the

examiner by the Office in that the same

examiner whose decision denying inter

partes reexamination was reversed on

petition filed under § 1.927 ordinarily

will not conduct the inter partes

reexamination ordered in the decision

granting the petition. No comment was

received on this section. It is adopted as

proposed.

New § 1.933 covers the duty of

disclosure by a patent owner in an inter

partes reexamination proceeding. The

rule provides that the patent owner’s

duty in an inter partes reexamination

proceeding is the same as the duty in an

ex parte reexamination proceeding set

forth in § 1.555(a) and (b), and is

satisfied by filing a paper in compliance

76766 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

with § 1.555(a) and (b). In addition,

§ 1.933(b) is being amended to preclude

the examiner from independently

raising and noting issues relating to

patent owner’s compliance with its duty

of disclosure. In this regard, § 1.933(b) is

being amended by changing the phrase

‘‘If questions of compliance with this

section are discovered during a

reexamination proceeding, * * *’’ to

now read ‘‘If questions of compliance

with this section are raised by the patent

owner or third party requester during a

reexamination proceeding, * * *’’ It

would not be appropriate for the

examiner sua sponte to raise issues

directed to the issue of patent owner’s

compliance with its duty of disclosure

which may not be resolved in the

reexamination. No comment was

received on this section. It is adopted as

amended.

New § 1.935 provides that the initial

Office action on the merits will usually

accompany the inter partes

reexamination order. When

reexamination is ordered, the initial

paper from the examiner will normally

comprise two parts. The first part will

address the issue as to whether the cited

art raises a substantial new question of

patentability (SNQ). If the examiner

determines that the prior art does raise

an SNQ, reexamination will be ordered.

In this situation, a second part of the

initial Office action would usually be

issued, which would address the

patentability issues and will constitute

the first Office action on the merits. If

the examiner determines that the cited

art does not raise an SNQ,

reexamination is denied. No

patentability question would be

addressed by the examiner. One

comment was received directed to this

section. (This comment was also

addressed to § 1.945 relating to patent

owner’s response to Office actions. The

discussion below relates to both

§§ 1.935 and 1.945.)

Comment: The comment notes that if

the examiner refuses to adopt a ground

of rejection proposed by the third party,

the patent owner is not required to

address this issue prior to the appeal

stage. Consequently, if the refusal to

adopt the ground of rejection is reversed

on appeal to the Board of Patent

Appeals and Interferences (Board), at

that time the patent owner is given an

opportunity to amend the claim. The

comment suggests that, prior to the

appeal stage, the patent owner should

be required to respond to all of the

issues raised by the requester. The

comment points out that if this

suggestion is implemented, the

opportunity for amendment after the

Board decision and the need for remand

would then become unnecessary, even if

the Board adopts any ground proposed

by the third party requester.

Response to Comment: The patent

owner has no legal compulsion to

amend a claim based solely on a ground

of rejection raised by the third party

requester. Only after the ground of

rejection is adopted by the examiner or

the Board of Patent Appeals and

Interferences must the patent owner

consider amending the claim. The

comment is not adopted, and § 1.935 is

adopted as proposed. (See discussion of

§ 1.945.) New § 1.937 covers the basic

items relating to the conduct of inter

partes reexamination proceedings.

Section 1.937(a) provides that, in

accordance with 35 U.S.C. 314(c),

unless otherwise provided by the

Commissioner for good cause, all inter

partes reexamination proceedings will

be conducted with special dispatch.

Section 1.937(b) provides that all inter

partes reexamination proceedings will

be conducted according to the

procedures established for initial

examination under §§ 1.104–1.116.

These proceedings will generally follow

the procedures for examining patent

applications. Section 1.937(c) provides

that all communications between the

Office and the parties to the inter partes

reexamination which are directed to the

merits of the proceeding must be in

writing and filed with the Office for

entry into the record of the proceeding.

No comment was received on this

section. It is adopted as proposed.

New § 1.939 provides for the return of

unauthorized papers filed in an inter

partes reexamination, and provides that,

unless otherwise authorized, no paper

shall be filed, by any party, in an inter

partes reexamination before the initial

Office action on the merits. No comment

was received on this section. It is

adopted as proposed.

New § 1.941 provides that

amendments made by the patent owner

in an inter partes reexamination must be

made in accordance with the

requirements of §§ 1.530(d)–(k) and

1.943. No comment was received on this

section. It is adopted as proposed.

New § 1.943(a) provides that the form

of responses, briefs, appendices, and

other papers must be in accordance with

§ 1.52. Section 1.943(b) establishes page

limits for responses by the patent owner

and written comments by the third party

requester (other than briefs).

Amendments, appendices of claims, and

reference materials such as prior art

references would not be included in the

page count. Section 1.943(c) provides

for page limits and total word limits for

briefs. No comment was received on this

section. It is adopted as proposed.

New § 1.945 provides that a patent

owner will be given at least 30 days to

respond to any Office action on the

merits. While the Office ordinarily

intends to set a two-month period for

the patent owner to respond to an Office

action on the merits, the minimum

period set will always be at least 30

days. One comment was received

directed to this section. This comment

was also addressed to § 1.935 relating to

the patent owner’s response to the

initial Office action. The comment is not

adopted, and § 1.945 is adopted as

proposed.

New § 1.947 provides that each time

a patent owner files a response to any

Office action on the merits, the third

party requester may once file written

comments if those comments are

received in the Office within a period of

30 days from the date of service of the

patent owner’s response. Since 35

U.S.C. 314(b)(3) statutorily imposes this

period for third party requester

comments, this time period cannot be

extended. Thus, any third party

comments received in the Office after

expiration of 30 days from the date of

service of the patent owner’s response

shall be considered to be untimely and

unauthorized, and thus will be returned

to the third party in accordance with

§ 1.939. Three comments were received

directed to this section.

Comments: The first and second

comments suggest that it will be

difficult for a foreign third party

requester to timely comment within a

period of 30 days from the date of

service of the patent owner’s response.

The first comment suggests that a third

party comment period of 60 days should

be set. The second comment suggests

that some way should be devised for

receiving a substantial extension to the

30-day period.

The third comment suggests that it is

unfair for the patent owner to not be

able to respond to the third party

comments and thereby have the last

word. The comment suggests that the

patent owner should have the right of

last comment.

Response to Comments: As to the first

comment, the statute (35 U.S.C.

314(b)(3)) specifically requires that the

third party requester comments be

received by the Office within 30 days

after the date of service of the patent

owner’s response to an Office action.

The rules cannot provide a period for

comments that would give the third

party more time to comment than that

explicitly stated in the statute.

As to the second comment, because

the statute specifically requires that

third party requester comments be

received by the Office within 30 days

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76767

after the date of service of a patent

owner’s response to the Office action,

the rules cannot extend the period for

comments in order to give the third

party more time in which to file the

written comments. The Office

recognizes the shortness of this time

period. While no relief can be granted

by enlarging or extending the statutory

30-day period, a measure of relief has

been granted to the third party requester

in that the rule is being amended to

provide that the date of Office ‘‘receipt’’

of third party requester comments will

be construed to be the date of mailing

if the provisions of § 1.8 are complied

with when submitting the written

comments.

As to the third comment, providing

the patent owner with an opportunity to

reply to third party comments would

unduly prolong the pendency of the

proceeding, contrary to the ‘‘special

dispatch’’ required by 35 U.S.C. 314(c).

It should also be noted that an owner

response to the third party comments

could be considered a (supplemental)

patent owner response to the Office

action which would trigger a further

right to third party comment under 35

U.S.C. 316(b)(3) and thus create an

endless cycle. The comments are not

adopted. The rule is adopted as

proposed, but amended as indicated

above.

New § 1.948 provides that third party

requester prior art submissions as

defined under § 1.501 may be filed after

the inter partes reexamination order

only if they are submitted as part of a

comments submission under §§ 1.947 or

1.951(b), and are limited to: (1) Prior art

necessary to rebut a finding of fact made

by the examiner; (2) prior art necessary

to rebut a position taken by the patent

owner in a response; or (3) prior art

which for the first time became known

or available to the third party requester

after the filing of the inter partes request

for reexamination where a discussion of

the pertinency of each reference to the

patentability of at least one claim is

included. Limiting later filed prior art

submissions to newly discovered or

newly available prior art (except when

used for rebuttal purposes) will

encourage the third party requester to

submit all known pertinent prior art

along with the initial request for inter

partes reexamination. Later submission

of previously known or available prior

art would only be permissible to rebut

a position taken by the examiner or the

patent owner, or through the filing of an

ex parte reexamination request which, if

ordered, would be merged with the inter

partes reexamination proceeding.

Permitting the third party requester to

timely submit newly discovered or

previously unavailable prior art during

the inter partes reexamination

proceeding will obviate the need for the

third party requester to file an ex parte

request for reexamination. To prevent

harassment of the patent owner due to

frequent submissions of prior art

citations during a reexamination

proceeding, such submissions may only

be filed together with written comments

by the third party requester in response

to a patent owner response to an Office

action on the merits, or after an action

closing prosecution. No comment was

received on this section. The

conjunction ‘‘and’’ has been replaced by

‘‘or’’ in the recitation ‘‘§§ 1.947,

1.951(a), or 1.951(d)’’ for grammatical

clarity. The reference to § 1.951(a) has

been deleted and § 1.951(d) has been

changed to § 1.951(b) to reflect the

changes made to § 1.951 pursuant to the

comments. The section is adopted as

amended.

New § 1.949 provides for the close of

prosecution on the second or

subsequent Office action which

precedes a final action, a final rejection

and/or a final decision favorable to

patentability. The distinction between a

final action and an action closing

prosecution is important, since appeal

rights to the Board of Patent Appeals

and Interferences under 35 U.S.C. 134

(b) and (c) mature only with a final

action. One comment was received

directed to this section.

Comment: The comment suggests that

the examiner should be precluded from

closing prosecution whenever a new

ground of rejection is made, irrespective

of whether a prior amendment made the

new ground necessary. The comment

argues that a reexamination is different

from an application where the applicant

is permitted to refile the application and

introduce new claims, evidence and

argument, because the patent owner in

a reexamination cannot abandon the

reexamination and file a continuing

proceeding.

Response to Comment: The third

party request for reexamination sets

forth the grounds of rejections raised by

the third party requester. The initial

Office action on the merits addresses the

grounds and arguments raised in the

request, and sets forth the examiner’s

grounds of rejection including those

raised by the third party requester and

those raised by the examiner. The Office

action also includes the examiner’s

reasons for not adopting other grounds

of rejection proposed by the third party

requester. Patent owner may consider

and respond to the initial Office action,

and provide amended claims ranging

from the broadest claim patent owner

considers to be patentable over the prior

art to the narrowest claim patent owner

is willing to accept. Thus, prior to the

close of prosecution, the issues are well

developed, patent owner is aware of the

issues and positions of the third party

requester and the examiner, and patent

owner has the right to present evidence

and argument in light of the third party

arguments and the examiner’s rejections

and to present amended claims. While

patent owner may not refile a

reexamination after the close of

prosecution and ‘‘start over’’ as can be

done in a regular application after a

final rejection, the reexamination rules

do not leave the patent owner without

any relief at this stage of the proceeding.

In this regard, after the close of

prosecution the patent owner may file

comments and/or amendments under

§ 1.951 which will be governed by the

standards of § 1.116. Under § 1.116(c),

amendments may be admitted upon a

showing of good and sufficient reasons

why they are necessary and were not

earlier presented. This strikes a balance

between timely presenting amendments

and providing relief when warranted. It

also provides for an orderly and timely

proceeding under the special dispatch

requirement of the statute. In addition,

the statute does not preclude the patent

owner from filing an ex parte request for

reexamination with amended claims

and/or new evidence. Once ordered, the

reexamination proceedings would be

merged, and the newly submitted

material would be addressed in the

merged proceeding. The comment is not

adopted, and the section is adopted as

proposed.

New § 1.951 sets forth the options

available to the parties after an Office

action closing prosecution. Under

§ 1.951(a), the patent owner may once

file comments limited to issues raised in

the action closing prosecution, which

comments may also include proposed

amendments (subject to the criteria of

§ 1.116 as to whether or not the

amendments shall be admitted). Under

§ 1.951(b), when the patent owner does

file comments, the third party requester

may once file comments in response to

the patent owner’s comments. One

comment was received directed to this

section.

Comment: Section 1.951 as proposed

in the Notice of Proposed Rulemaking

included subsections (a)–(d). Proposed

subsection (a) permitted the third party

requester to once file comments limited

to issues raised in the action closing

prosecution. Proposed subsection (b)

permitted the patent owner to once file

comments in response to the third party

requester’s comments. Simultaneously

to the filing of these submissions,

proposed subsection (c) permitted the

76768 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

patent owner to once file comments

limited to issues raised in the action

closing prosecution, and proposed

subsection (d) permitted the third party

requester to once file comments in

response to the patent owner’s

comments. The comment suggests that

the comments filed by the third party

requester under proposed § 1.951(a)

after the close of prosecution do not

comply with the statute because they

are not filed in reply to a patent owner’s

response to an Office action on the

merits. The comment asserts that such

‘‘direct’’ requester comments are not

consistent with the statute as the statute

makes it clear that the third party

requester’s right to comment only

matures with the filing of a patent

owner response to an Office action on

the merits, and nowhere in the statute

does it permit third party requester

comments without there first being a

patent owner response.

Response to Comment: The comment

has been adopted. Proposed subsection

(a) which permitted the third party

requester to once file comments limited

to issues raised in the action closing

prosecution, and proposed subsection

(b) which permitted the patent owner to

once file comments in response to the

third party requester comments have

been deleted. Proposed subsections (c)

and (d) have been re-named (a) and (b),

respectively. The purpose of proposed

subsections (a) and (b) was to provide

the third party requester an opportunity

to better focus the issues prior to filing

an appeal. Such issues may now be

addressed by the requester after appeal

in the appellant brief which, if

persuasive, will result in the examiner

adopting requester’s arguments and

reopening prosecution, if appropriate.

While waiting until after appeal to

permit ‘‘direct’’ third party requester

arguments may result in protracting the

proceeding, such direct third party

input is consistent with the statute

which permits the third party requester

to appeal any final decision favorable to

patentability, and be a party to any

appeal taken by the patent owner to the

Board of Patent Appeals and

Interferences. 35 U.S.C. 315(a) and (b).

The comment is adopted as amended.

New § 1.953 provides for issuance of

a right of appeal notice. Section 1.953(a)

provides that, following the responses

or expiration of the time for response in

§ 1.951, the examiner may issue a right

of appeal notice which shall include a

final rejection and/or final decision

favorable to patentability in accordance

with 35 U.S.C. 134. The intent of

limiting the appeal rights until after the

examiner issues a right of appeal notice

is to specifically preclude the possibility

of one party attempting to appeal

prematurely while prosecution before

the examiner is being continued by the

other party. Section 1.953(b) provides

that any time after 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 decision

favorable to patentability, and may

request the issuance of a right of appeal

notice. 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.

The request for an expedited notice will

enable the parties to accelerate the inter

partes reexamination proceeding.

Section 1.953(c) provides that the right

of appeal notice shall be a final action,

which would include a final rejection

and/or a final decision favorable to

patentability, and prohibits

amendments under § 1.116 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 appeal is filed, the reexamination

proceeding will be terminated, and the

Commissioner will proceed to issue a

certificate under § 1.997 in accordance

with the right of appeal notice. No

comment was received on this section.

It is adopted as proposed.

New § 1.955 provides that interviews

which discuss the merits of the

proceeding will not be permitted in

inter partes reexamination proceedings.

Thus, in an inter partes reexamination

proceeding, no separate ex parte

interviews will be permitted, and no

inter partes interviews will be

permitted; nor will an informal

amendment be accepted as that would

be tantamount to an ex parte interview.

All communications between the Office

and the patent owner which are directed

to the merits of the proceeding must be

in writing and filed with the Office for

entry into the record of the proceeding.

The Office has reconsidered its initial

position, taken in the August 11, 1995,

Notice of Proposed Rulemaking, to

permit owner-initiated interviews in

which the patent owner and the third

party requester would participate.

Accordingly, neither the patent owner

nor the third party requester in an inter

partes reexamination is permitted to

initiate, or participate in, an ex parte

interview or an inter partes interview

which discusses the merits of the

proceeding. Four comments were

received directed to this section.

Comments: The first comment asserts

that because the inter partes

reexamination may result in the

cancellation of patent claims or the

estoppel of one or more third party

defenses in a civil action, the examiner

should have access to all matters that

may be necessary to reach a decision,

including the testimony of experts,

particularly in the face of crossexamination. Further, the comment

suggests that the patent owner is forced

into an inter partes reexamination and

should not be deprived of patent rights

without due process of law. The

comment suggests that interviews

should be provided during which each

party should be permitted to present its

case orally to the examiner, to present

its experts and to question the other

party and the other party’s experts in

front of the examiner, and that the

examiner, in turn, should have the

opportunity to question both parties and

their experts.

The second comment recognizes the

concerns of the Office but concludes

that since the rule could be waived in

appropriate circumstances, the rule does

not amount to an absolute prohibition.

The comment suggests interviews be

permitted, particularly if they could be

handled through the assistance of a

special group of legal advisors trained in

conducting inter partes hearings. The

comment further suggests a rule be

imposed that any oral or electronic

contact with Office officials responsible

for an inter partes proceeding be

handled through a conference call with

all relevant parties represented.

The third comment suggests that it is

unnecessary to ban interviews across

the board because an interview can be

useful to help the examiner understand

the points of contention, particularly so

when the art is complex. If the presence

of a third party requester would

complicate the interview, the examiner

could simply interview the parties

separately. The comment suggests that

since there are usually severely

conflicting interests between the patent

owner and the third party requester, the

interview should be limited to

deepening the examiner’s

understanding of the technology and to

clarifying points of contention; the

examiner should be prohibited from

discussing amendment proposals.

The fourth comment suggests that

while the prohibition against interviews

would seem to be quite beneficial to the

third party requester, a countervailing

problem for the examiner and the patent

owner will be an inability of the

examiner to resolve complex

technological issues by direct questions

and answers (in an interview). The

comment suggests that guidelines to the

examiner on how to address such issues

in the form of written questions should

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76769

be provided in the Manual of Patent

Examining Procedure (MPEP).

Response to Comments: The

comments suggest various formats for

providing an interview including: a

formal hearing format, interview

oversight by trained legal advisors,

conference calls, separate interviews for

both parties, and limitations on the

examiner from discussing amendments

during an interview. While the

suggested formats would tend to ease

the problems associated with inter

partes interviews, the remaining

problems would still outweigh the

benefits of an interview on the merits.

No matter what the structure of the

interview, the presence of a third party

requester (or a separate interview with

the requester) will complicate the

reexamination proceeding and

significantly delay it. Past history has

shown inter partes interviews to be both

resource intensive and unwieldy. Inter

partes interviews are difficult to

arrange, conduct, and control. Inevitable

interaction between the patent owner’s

representative and its experts, the third

party’s representative and its experts,

the examiner, and the ‘‘senior level

official’’ would be difficult to regulate

and control. Recording the substance of

the interview would be difficult, and

providing cross-transcripts would result

in delay and complications. In addition,

the time to arrange and conduct the

interview would greatly extend the inter

partes proceeding time line, which

would be clearly contrary to the

‘‘special dispatch’’ required by 35 U.S.C.

314(c) for the inter partes reexamination

proceeding. The suggestion as to

providing guidelines on instructing the

examiner on how to draft written

questions is a matter to be addressed in

a future MPEP revision. The comments

are not adopted, and the section is

adopted as proposed.

New § 1.956 relates to patent owner

extensions of time for responding to a

requirement of the Office in inter partes

reexamination proceedings. As in ex

parte reexamination practice, a patent

owner may only obtain an extension of

time for sufficient cause, and the request

for such extension must be filed on or

before the end of the period for

response. Note that the time for the

third party requester to file comments to

patent owner responses may not be

extended, as set forth in § 1.947. No

comment was received on this section.

It is adopted as proposed.

New § 1.957(a) provides that a third

party requester’s submission in inter

partes reexamination may be refused

consideration if it is untimely or is

inappropriate. Sections 1.957(b) and (c)

relate to the patent owner’s failure to

timely or appropriately respond in inter

partes reexamination proceedings. In

this event, if no claims are found

patentable, the proceeding shall be

terminated and a reexamination

certificate shall be issued. If claims are

found patentable, further prosecution

shall be limited to the patentable claims,

and any additional claims that do not

expand the scope of the patentable

claims. New § 1.957(d) provides that

when the action by the patent owner is

a bona fide attempt to respond and to

advance the case, and is substantially a

complete response to the Office action,

but consideration of some matter or

compliance with some requirement has

been inadvertently omitted, an

opportunity to explain and supply the

omission may be given. No comment

was received on this section. It is

adopted as proposed.

New § 1.958(a) provides for the

revival of terminated inter partes

reexamination proceedings under the

unavoidable delay provisions of

§ 1.137(a). The unavoidable delay

provisions of 35 U.S.C. 133 are imported

into and are applicable to inter partes

reexamination proceedings under 35

U.S.C. 314. New § 1.958(b) provides for

the revival of terminated inter partes

reexamination proceedings under the

unintentional provisions of § 1.137(b).

The unintentional delay fee provisions

of 35 U.S.C. 41(a)(7) are imported into

and are applicable to inter partes

reexamination proceedings under

section 4605 of S. 1948. Note, however,

the unintentional delay fee provisions of

35 U.S.C. 41(a)(7) only become effective

in reexamination proceedings on

November 29, 2000 (one year after

enactment of statute). No comment was

received on this section. It is adopted as

proposed.

New § 1.959 relates to appeals and

cross appeals to the Board of Patent

Appeals and Interferences in inter

partes reexamination proceedings. Both

patent owners and third party requesters

are given appeal rights in accordance

with 35 U.S.C. 315. No comment was

received on this section. It is adopted as

proposed.

New § 1.961 relates to time of transfer

of the jurisdiction of the appeal over to

the Board of Patent Appeals and

Interferences in inter partes

reexamination proceedings. No

comment was received on this section.

It is adopted as proposed.

New § 1.962 relates to the definition

of appellant and respondent in inter

partes reexamination proceedings. No

comment was received on this section.

It is adopted as proposed.

New § 1.963 relates to the time

periods for filing briefs in inter partes

reexamination proceedings. No

comment was received on this section.

It is adopted as proposed.

New § 1.965 relates to the

requirements of the appellant brief in

inter partes reexamination proceedings.

No comment was received on this

section. It is adopted as proposed.

New § 1.967 relates to the

requirements of the respondent brief in

inter partes reexamination proceedings.

No comment was received on this

section. It is adopted as proposed.

New § 1.969 relates to the examiner’s

answer. An examiner’s answer may not

include a new ground of rejection nor a

new decision favorable to patentability.

In either case (if there is to be a new

ground of rejection or a new decision

favorable to patentability), prosecution

should be reopened. One comment was

received directed to this section.

Comment: The comment questioned

whether the examiner’s answer should

be optional especially when the appeal

is by the patent owner.

Response to Comment: Although

§ 1.969(a) indicates that an examiner’s

answer ‘‘may’’ be furnished, common

practice as set out in the procedure of

the Manual of Patent Examining

Procedure, is to furnish an examiner’s

answer. When an appeal goes forward,

an examiner’s answer will be

mandatory. If the examiner, however,

changes his or her position to issue a

new ground of rejection or (when the

third party participates in the appeal) to

make a new finding of patentability, an

examiner’s answer would not be issued

and prosecution would be reopened.

The word ‘‘may’’ is used to cover those

situations where prosecution is

reopened and an examiner’s answer is

not issued. The word ‘‘may’’ does not

authorize an examiner to send a

proceeding to the Board of Patent

Appeals and Interferences without

issuing an examiner’s answer. Section

1.969(c) is being modified by deleting

‘‘Where a third party requester is a party

to the appeal’’ and a new § 1.969(d) is

being added which provides

clarification that any new ground of

rejection or new determination not to

make a proposed rejection must be

made in an action reopening

prosecution in accordance with the

discussion of proposed § 1.969 in the

notice of proposed rulemaking. The

comment is not adopted and the section

is adopted as modified in new

§ 1.969(d).

New § 1.971 gives any appellant one

opportunity to file a rebuttal brief

following the examiner’s answer. The

rebuttal brief filed by an appellant who

is the patent owner is limited to the

issues raised in the examiner’s answer

76770 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

and/or in any respondent brief. The

rebuttal brief filed by an appellant who

is a third party requester is limited to

the issues raised in the examiner’s

answer and/or in the patent owner’s

respondent brief. The rebuttal brief of a

third party requester may not be

directed to the respondent brief of any

other third party requester. No new

ground of rejection can be proposed by

a third party requester appellant. One

comment was received directed to this

section.

Comment: The comment, notes that

the time for filing the rebuttal brief is

within one month of the examiner’s

answer and suggests that since the

examiner’s answer is not required by the

rules, tying one deadline date to another

date for an event that may never occur

may create a problem.

Response to Comment: Although

§ 1.969(a) indicates that an examiner’s

answer ‘‘may’’ be furnished, common

practice as set out in the procedure of

the Manual of Patent Examining

Procedure, is to furnish an examiner’s

answer. When an appeal goes forward,

an examiner’s answer will be

mandatory. See the discussion set forth

in response to the comment on § 1.969

above. The comment is not adopted and

the section is adopted as proposed.

New § 1.973 relates to the oral hearing

in inter partes reexamination

proceedings. One comment was

received directed to this section.

Comment: The comment points out

that the request for oral hearing may be

filed ‘‘within one month of the

examiner’s answer,’’ and that the rules

provide that the examiner ‘‘may’’ issue

an examiner’s answer under 1.969(a).

The comment questions what happens if

the examiner does not issue an

examiner’s answer? The comment

suggests the rule should be modified to

provide that a request for oral hearing be

due ‘‘within two months after the date

of the examiner’s answer or the period

within which the examiner’s answer

must be furnished.’’

Response to Comment: Although

§ 1.969(a) indicates that an examiner’s

answer ‘‘may’’ be furnished, common

practice as set out in the procedure of

the Manual of Patent Examining

Procedure, is to furnish an examiner’s

answer. When an appeal goes forward,

an examiner’s answer will be

mandatory. See the discussion set forth

in response to the comment on § 1.969

above. The comment is not adopted and

the section is adopted as proposed.

New § 1.975 relates to affidavits or

declarations after appeal in inter partes

reexamination proceedings. No

comment was received on this section.

It is adopted as proposed.

New § 1.977 relates to the decision by

the Board of Patent Appeals and

Interferences (Board) in inter partes

reexamination proceedings. This section

generally tracks § 1.196 which governs

the Board’s decision in an appeal in an

application. Section 1.977(a) provides

that a reversal of an examiner’s decision

favorable to patentability (i.e., the

reversal of the examiner’s decision not

to make a rejection proposed by the

third party requester) constitutes a

decision adverse to patentability which

will be set forth as a new ground of

rejection under § 1.977(b). Section

§ 1.977 as set forth in the notice of

proposed rulemaking included a

§ 1.977(c) which permitted the Board to

include a statement that a claim may be

allowable in amended form if newly

revised as proposed by the Board.

Proposed § 1.977(c), however, has been

deleted in light of the comment and

discussion that follows.

Comment: The comment notes that

under 1.977(c), as proposed, the Board

of Patent Appeals and Interferences

(Board) may suggest an amendment for

allowing a claim. The comment suggests

that procedures would be too

complicated to implement in the inter

partes proceeding.

Response to Comment: The comment

is adopted. Providing for patent owner

and third party comment on a Board

determination of the patentability of a

hypothetical amended claim appears to

be unduly complicated so late in the

proceedings. Section 1.977(c) as

proposed in the notice of proposed

rulemaking has been deleted. Sections

1.977(d)–(h) as proposed in the notice of

proposed rulemaking have been

redesignated §§ 1.977(c)–(g),

respectively, and references to these

subsections in other sections have been

revised to reflect these changes.

New § 1.979 relates to the procedure

following the decision or dismissal by

the Board of Patent Appeals and

Interferences in inter partes

reexamination proceedings. No

comment was received on this section.

It is adopted as proposed.

New § 1.981 relates to the procedure

for the reopening of prosecution

following the decision by the Board of

Patent Appeals and Interferences in

inter partes reexamination proceedings.

No comment was received on this

section. It is adopted as proposed.

New § 1.983 relates to the patent

owner’s right to appeal to the United

States Court of Appeals for the Federal

Circuit in inter partes reexamination

proceedings. Under 35 U.S.C. 141, the

patent owner in inter partes

reexamination proceedings may appeal

the decision of the Board of Patent

Appeals and Interferences only to the

United States Court of Appeals for the

Federal Circuit. Under 35 U.S.C. 134(c),

the third party requester in inter partes

reexamination proceedings may not

appeal the decision of the Board of

Patent Appeals and Interferences. No

comment was received on this section.

It is adopted as proposed.

New § 1.985 relates to notification of

prior or concurrent proceedings in inter

partes reexamination proceedings.

Section 1.985(a) requires the patent

owner to notify the Office of any prior

or concurrent proceeding involving the

patent under inter partes reexamination.

Section 1.985(b) permits any member of

the public to notify the Office of any

prior or concurrent proceeding

involving the patent under inter partes

reexamination. Such notice, however,

must be limited to merely providing

notice without discussion of the issues

in the inter partes reexamination. Any

notice that includes a discussion of the

issues will be returned to the sender. No

comment was received on this section.

It is adopted as proposed.

New § 1.987 provides that when a

patent involved in an inter partes

reexamination is concurrently involved

in litigation, the Commissioner shall

determine whether or not to suspend

the inter partes reexamination

proceeding. No comment was received

on this section. It is adopted as

proposed.

New § 1.989 relates to the merger of

concurrent reexamination proceedings.

One comment was received directed to

this section.

Comment: The comment suggests that

if a third party requester in an inter

partes reexamination files a subsequent

ex parte reexamination request, the

proceedings should not be merged, but

rather the ex parte reexamination

should be stayed. The comment argues

that a third party requester in an inter

partes reexamination should not be

permitted to end-run the prohibition of

35 U.S.C. 317(a) (which prohibits a

subsequent inter partes reexamination

during the pendency of an ongoing inter

partes reexamination) by filing a

subsequent ex parte reexamination

request.

Response to Comment: As to the

suggestion that the subsequent ex parte

reexamination be stayed, this would be

in direct violation of the special

dispatch requirement of the ex parte

reexamination statute. Ethicon v. Quigg,

849 F.2d 1422, 7 USPQ2d 1152 (Fed.

Cir. 1988). Moreover, the filing of an ex

parte reexamination request by an inter

partes third party requester is not an

‘‘end-run’’ of the prohibition of 35

U.S.C. 317(a), because the two

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76771

proceedings are of a different nature,

and thus, the filing of the ex parte

reexamination is not the same as the

filing of a second inter partes

reexamination. The comment is not

adopted and the section is adopted as

proposed.

New § 1.991 relates to the merger of

a concurrent reissue application and an

inter partes reexamination proceeding.

Two comments were received directed

to this section.

Comments: The first comment

suggests that if the patent owner is

permitted to request an interview in a

merged reissue and inter partes

reexamination, then the third party

requester should be permitted to do so

equally as well.

The second comment notes that the

third party requester is permitted by

rule in a merged reexamination and

reissue to participate to the extent

permitted by the reexamination rules

and be limited to issues within the

scope of inter partes reexamination. The

comment questions whether this is

realistic and asks (1) whether this

limitation precludes a third party from

acting as a protestor in the merged

reissue application regarding the full

scope of issues raised in the merged

proceeding; and (2) since the patent

owner filed the reissue, why should the

third party be precluded from

participating as a protestor? The

comment suggests a better approach

would be to permit the third party to

comment on any issue, so long as it was

in accord with the procedures adopted

for the conduct of the merged

proceeding for third parties or

protestors.

Response to Comments: The first

comment suggests that if the patent

owner is permitted to request an

interview in a merged reissue and inter

partes reexamination, the Office should

also permit the third party requester to

initiate an interview in the merged

proceeding. The suggestion is moot,

since the patent owner will not be

permitted to request an interview in a

merged reissue and inter partes

reexamination for the reasons set forth

in the discussion of § 1.955 above.

As to the second comment, the rule

does not preclude the third party

requester from filing a protest under

§ 1.291 in the reissue application in the

merged proceeding directed to any

issue, including issues other than those

relating to patent and printed

publications. Such protests would be

governed by the procedures adopted for

protestors set forth in Chapter 1900 of

the Manual of Patent Examining

Procedure (MPEP). Participation in

issues raised under § 1.291 will be

governed by § 1.291 and the procedures

adopted for protestors in MPEP 1901

through 1907. To the extent that the

second comment would permit the third

party requester to ‘‘comment’’ (as

opposed to filing a protest) on any issue,

so long as it was in accord with the

procedures adopted for the conduct of

the merged proceeding for third parties

or protestors, the comment will not be

adopted. The right to file a protest is

limited as stated in MPEP chapter 1900.

Thus, the permitted challenge to the

patent on ‘‘any issue’’ is limited. To

permit third party requester

‘‘comments’’ on ‘‘any issue’’ would

increase the pendency of the proceeding

contrary to special dispatch required by

the statute, and would permit

harassment of the patent owner on ‘‘any

issue’’ in ways that the Chapter 1900

limitations on protest submissions are

designed to prevent (i.e., multiple

submissions on the same issue). The

comments are not adopted.

New § 1.993 relates to the suspension

of a concurrent interference or an inter

partes reexamination proceeding. No

comment was received on this section.

It is adopted as proposed.

New § 1.995 relates to the third party

requester’s participation rights being

preserved in a merged proceeding. No

comment was received on this section.

It is adopted as proposed.

New § 1.997 provides for the issuance

of the reexamination certificate under

35 U.S.C. 316 after conclusion of an

inter partes reexamination proceeding.

The certificate will cancel any patent

claims determined to be unpatentable,

confirm any patent claims determined

to be patentable, and incorporate into

the patent any amended or new claims

determined to be patentable. Once all of

the claims have been canceled from the

patent, the patent ceases to be

enforceable for any purpose.

Accordingly, any pending reissue

proceeding or other Office proceeding

relating to a patent for which a

certificate that canceled all of the patent

claims has been issued will be

terminated. This provides a degree of

assurance to the public that patents with

all the claims canceled via inter partes

reexamination proceedings will not

again be asserted. No comment was

received on this section. It is adopted as

proposed.

Classification

Regulatory Flexibility Act

The Chief Counsel for Regulation of

the Department of Commerce certified

to the Chief Counsel for Advocacy,

Small Business Administration, that the

changes in this notice will not have a

significant impact on a substantial

number of small entities (Regulatory

Flexibility Act, 5 U.S.C. 605(b)). This

rulemaking implements the provisions

of title IV, subtitle F (§§ 4601 through

4608) of the American Inventors

Protection Act of 1999, which permits a

third party requester to participate more

extensively during the reexamination

proceeding as well as giving them

appeal rights. The changes in this notice

will provide procedures for a third party

to request optional inter partes

reexamination of a patent. The new

inter partes proceedings are similar to

the ex parte proceedings, although they

are more complicated procedurally to

accommodate the presence of the third

party.

Taking into account the overall

similarities and additional complexity,

it is reasonable to assume that a similar

proportion of small entities will request

inter partes reexamination as have

requested ex parte reexamination.

Furthermore, it is anticipated that inter

partes reexamination requests will be

filed by third party requesters, while

patent owners will continue to file ex

parte reexamination requests.

Approximately 400 ex parte

reexamination filings have been

received each year since 1992, of which

55 percent or 220 have been filed by

third party requesters. Since the

beginning of the reexamination

procedure, about 22.5 percent of the ex

parte reexamination requesters have

been small entities. If all 220 of the third

party-filed reexamination requests were

filed as requests for inter partes

reexaminations, approximately 50

requests (22.5%) would come from

small entities. The higher cost of the

inter partes reexamination fee ($8,800)

compared to the ex parte reexamination

fee ($2,520) reflects the greatly

expanded participation available to the

third party requester. In the inter partes

proceeding, the third party requester has

the right to comment on every response

by the patent owner to the USPTO, to

be a party to any appeal by the patent

owner to the Board of Patent Appeals

and Interferences, and to appeal any

determination of patentability to the

Board of Patent Appeals and

Interferences. In the ex parte

proceeding, the third party requester’s

role is limited to the request for

reexamination and a single reply to the

patent owner’s response. The third party

requester also has no appeal rights in an

ex parte reexamination. Therefore, the

number of small businesses affected by

these proposed optional inter parte

reexamination rules is not significant,

and the impact on each business,

76772 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

considering the benefits of greater

participation throughout the inter partes

proceeding, is not significant.

Executive Order 13132

This rulemaking does not contain

policies with federalism implications

sufficient to warrant preparation of a

Federalism Assessment under Executive

Order 13132 (August 4, 1999).

Executive Order 12866

This rulemaking has been determined

to be not significant for purposes of

Executive Order 12866 (September 30,

1993).

Paperwork Reduction Act

This notice of rulemaking involves

information collection requirements

which are subject to review by the

Office of Management and Budget

(OMB) under the Paperwork Reduction

Act of 1995 (44 U.S.C. 3501 et seq.). The

collection of information involved in

this notice of rulemaking has been

reviewed and previously approved by

OMB under OMB control number 0651–

0033.

As required by the Paperwork

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

3507(d)), the U.S. Patent and Trademark

Office has submitted an information

collection package to OMB for its review

and approval of the proposed

information collections under OMB

control number 0651–0033. The U.S.

Patent and Trademark Office is

submitting this information collection to

OMB for its review and approval

because this notice of rulemaking will

add the request for optional inter partes

reexamination of a patent to that

collection.

The title, description, and respondent

description of the information collection

is shown below with an estimate of the

annual reporting burdens. Included in

this estimate is the time for reviewing

instructions, gathering and maintaining

the data needed, and completing and

reviewing the collection of information.

The principal impact of the changes in

this notice of rulemaking is to

implement the changes to Office

practice necessitated by title IV, subtitle

F (§§ 4601 through 4608) of the

American Inventors Protection Act of

1999 (enacted into law by § 1000(a)(9),

division B, of Public Law 106–113).

OMB Number: 0651–0033.

Title: Post Allowance and Refiling.

Form Numbers: PTO/SB/13/14/44/

50–57; PTOL–85b.

Type of Review: Approved through

September of 2000.

Affected Public: Individuals or

Households, Business or Other ForProfit Institutions, Not-for-Profit

Institutions and Federal Government.

Estimated Number of Respondents:

172,475.

Estimated Time Per Response: 0.3

hour.

Estimated Total Annual Burden

Hours: 51,593.5 hours.

Needs and Uses: This collection of

information is required to administer

the patent laws pursuant to title 35,

U.S.C., concerning the issuance of

patents and related actions including

correcting errors in printed patents,

refiling of patent applications,

requesting reexamination of a patent,

and requesting a reissue patent to

correct an error in a patent. The affected

public includes any individual or

institution whose application for a

patent has been allowed or who takes

action as covered by the applicable

rules.

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 regarding these

information collections, including

suggestions for reducing this burden, to

Robert J. Spar, Director, Office of Patent

Legal Administration, U.S. Patent and

Trademark Office, Washington, D.C.

20231, or to the Office of Information

and Regulatory Affairs of OMB, New

Executive Office Building, 725 17th St.

NW, Room 10235, Washington, DC

20503, Attention: Desk Officer for the

U.S. Patent and Trademark Office.

Notwithstanding any other provision

of law, no person is required to respond

to or shall a person be subject to a

penalty for failure to comply with a

collection of information subject to the

requirements of the Paperwork

Reduction Act unless that collection of

information displays a currently valid

OMB control number.

List of Subjects in 37 CFR Part 1

Administrative practice and

procedure, Courts, Freedom of

information, Inventions and patents,

Reporting and recordkeeping

requirements, Small businesses.

For the reasons set out in the

preamble and under the authority given

to the Commissioner of Patents and

Trademarks by 35 U.S.C. 2(b)(2), part 1

of title 37 CFR is amended as set forth

below.

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 1.4(a)(2) is revised to read

as follows:

§ 1.4 Nature of correspondence and

signature requirements.

(a) * * *

(2) Correspondence in and relating to

a particular application or other

proceeding in the Office. See

particularly the rules relating to the

filing, processing, or other proceedings

of national applications in subpart B,

§§ 1.31 to 1.378; of international

applications in subpart C, §§ 1.401 to

1.499; of ex parte reexaminations of

patents in subpart D, §§ 1.501 to 1.570;

of interferences in subpart E, §§ 1.601 to

1.690; of extension of patent term in

subpart F, §§ 1.710 to 1.785; of inter

partes reexaminations of patents in

subpart H, §§ 1.902 to 1.997; and of

trademark applications §§ 2.11 to 2.189.

* * * * *

3. Section 1.6(d)(5) is revised to read

as follows:

§ 1.6 Receipt of Correspondence.

* * * * *

(d) * * *

(5) A request for reexamination under

§ 1.510 or § 1.913;

* * * * *

4. Section 1.20(c) is revised to read as

follows:

§ 1.20 Post-issuance and reexamination

fees.

* * * * *

(c) In reexamination proceedings

(1) For filing a request for ex parte

reexamination (§ 1.510(a))—$2,520.00

(2) For filing a request for inter partes

reexamination (§ 1.915(a))—$8,800.00

* * * * *

5. Section 1.25(b) is revised to read as

follows:

§ 1.25 Deposit accounts.

* * * * *

(b) Filing, issue, appeal, internationaltype search report, international

application processing, petition, and

post-issuance fees may be charged

against these accounts if sufficient funds

are on deposit to cover such fees. A

general authorization to charge all fees,

or only certain fees, set forth in §§ 1.16

to 1.18 to a deposit account containing

sufficient funds may be filed in an

individual application, either for the

entire pendency of the application or

with a particular paper filed. An

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76773

authorization to charge a fee to a deposit

account will not be considered payment

of the fee on the date the authorization

to charge the fee is effective as to the

particular fee to be charged unless

sufficient funds are present in the

account to cover the fee. An

authorization to charge fees under § 1.16

in an application submitted under

§ 1.494 or § 1.495 will be treated as an

authorization to charge fees under

§ 1.492. An authorization to charge fees

set forth in § 1.18 to a deposit account

is subject to the provisions of § 1.311(b).

An authorization to charge to a deposit

account the fee for a request for

reexamination pursuant to § 1.510 or

§ 1.913 and any other fees required in a

reexamination proceeding in a patent

may also be filed with the request for

reexamination.

6. Section 1.26(c) is revised to read as

follows:

§ 1.26 Refunds.

* * * * *

(c) If the Commissioner decides not to

institute a reexamination proceeding,

for ex parte reexaminations filed under

§ 1.510, a refund of $1,690 will be made

to the reexamination requester. For inter

partes reexaminations filed under

§ 1.913, a refund of $7,970 will be made

to the reexamination requester. The

reexamination requester should indicate

the form in which any refund should be

made (e.g., by check, electronic funds

transfer, credit to a deposit account,

etc.). Generally, reexamination refunds

will be issued in the form that the

original payment was provided.

7. Section 1.112 is revised to read as

follows:

§ 1.112 Reconsideration before final

action.

After reply by applicant or patent

owner (§ 1.111 or § 1.945) to a non-final

action and any comments by an inter

partes reexamination requester (§ 1.947),

the application or the patent under

reexamination will be reconsidered and

again examined. The applicant, or in the

case of a reexamination proceeding the

patent owner and any third party

requester, will be notified if claims are

rejected, objections or requirements

made, or decisions favorable to

patentability are made, in the same

manner as after the first examination

(§ 1.104). Applicant or patent owner

may reply to such Office action in the

same manner provided in § 1.111 or

§ 1.945, with or without amendment,

unless such Office action indicates that

it is made final (§ 1.113) or an appeal

(§ 1.191) has been taken (§ 1.116), or in

an inter partes reexamination, that it is

an action closing prosecution (§ 1.949)

or a right of appeal notice (§ 1.953).

8. Section 1.113(a) is revised to read

as follows:

§ 1.113 Final rejection or action.

(a) On the second or any subsequent

examination or consideration by the

examiner the rejection or other action

may be made final, whereupon

applicant’s, or for ex parte

reexaminations filed under § 1.510,

patent owner’s reply is limited to appeal

in the case of rejection of any claim

(§ 1.191), or to amendment as specified

in § 1.114 or § 1.116. Petition may be

taken to the Commissioner in the case

of objections or requirements not

involved in the rejection of any claim

(§ 1.181). Reply to a final rejection or

action must comply with § 1.114 or

paragraph (c) of this section. For final

actions in an inter partes reexamination

filed under § 1.913, see § 1.953.

* * * * *

9. Sections 1.116(b) and (d) are

revised to read as follows:

§ 1.116 Amendments after final action,

action closing prosecution, right of appeal

notice, or appeal.

* * * * *

(b) After a final rejection or other final

action (§ 1.113) in an application or in

an ex parte reexamination filed under

§ 1.510, or an action closing prosecution

(§ 1.949) in an inter partes

reexamination filed under § 1.913,

amendments may be made canceling

claims or complying with any

requirement of form expressly set forth

in a previous Office action.

Amendments presenting rejected claims

in better form for consideration on

appeal may be admitted. The 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 application or patent under

reexamination from its condition as

subject to appeal or to save the

application from abandonment under

§ 1.135, or the reexamination from

termination. No amendment can be

made in an inter partes reexamination

proceeding after the right of appeal

notice under § 1.953 except as provided

for in paragraph (d) of this section.

* * * * *

(d) No amendment can be made as a

matter of right in appealed cases. After

decision on appeal, amendments can

only be made as provided in §§ 1.198

and 1.981, or to carry into effect a

recommendation under § 1.196 or

§ 1.977.

10. Section 1.121(i) is revised to read

as follows:

§ 1.121 Manner of making amendments.

* * * * *

(i) Amendments in reexamination

proceedings: Any proposed amendment

to the description and claims in patents

involved in reexamination proceedings

in both ex parte reexaminations filed

under § 1.510 and inter partes

reexaminations filed under § 1.913 must

be made in accordance with § 1.530(d)–

(j).

11. Sections 1.136(a)(2) and (b) are

revised to read as follows:

§ 1.136 Extensions of time.

(a) * * *

(2) The date on which the petition

and the fee have been filed is the date

for purposes of determining the period

of extension and the corresponding

amount of the fee. The expiration of the

time period is determined by the

amount of the fee paid. A reply must be

filed prior to the expiration of the

period of extension to avoid

abandonment of the application

(§ 1.135), but in no situation may an

applicant reply later than the maximum

time period set by statute, or be granted

an extension of time under paragraph

(b) of this section when the provisions

of this paragraph are available. See

§ 1.136(b) for extensions of time relating

to proceedings pursuant to §§ 1.193(b),

1.194, 1.196 or 1.197; § 1.304 for

extensions of time to appeal to the U.S.

Court of Appeals for the Federal Circuit

or to commence a civil action; § 1.550(c)

for extensions of time in ex parte

reexamination proceedings; § 1.956 for

extensions of time in inter partes

reexamination proceedings; and § 1.645

for extensions of time in interference

proceedings.

* * * * *

(b) When a reply cannot be filed

within the time period set for such reply

and the provisions of paragraph (a) of

this section are not available, the period

for reply will be extended only for

sufficient cause and for a reasonable

time specified. Any request for an

extension of time under this paragraph

must be filed on or before the day on

which such reply is due, but the mere

filing of such a request will not affect

any extension under this paragraph. In

no situation can any extension carry the

date on which reply is due beyond the

maximum time period set by statute.

See § 1.304 for extensions of time to

appeal to the U.S. Court of Appeals for

the Federal Circuit or to commence a

civil action; § 1.645 for extensions of

time in interference proceedings;

§ 1.550(c) for extensions of time in ex

parte reexamination proceedings; and

76774 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

§ 1.956 for extensions of time in inter

partes reexamination proceedings.

* * * * *

12. Sections 1.181(a) and (c) are

revised to read as follows:

§ 1.181 Petition to the Commissioner.

(a) Petition may be taken to the

Commissioner:

(1) From any action or requirement of

any examiner in the ex parte

prosecution of an application, or in the

ex parte or inter partes prosecution of a

reexamination proceeding which is not

subject to appeal to the Board of Patent

Appeals and Interferences or to the

court;

(2) In cases in which a statute or the

rules specify that the matter is to be

determined directly by or reviewed by

the Commissioner; and

(3) To invoke the supervisory

authority of the Commissioner in

appropriate circumstances. For petitions

in interferences, see § 1.644.

* * * * *

(c) When a petition is taken from an

action or requirement of an examiner in

the ex parte prosecution of an

application, or in the ex parte or inter

partes prosecution of a reexamination

proceeding, it may be required that

there have been a proper request for

reconsideration (§ 1.111) and a repeated

action by the examiner. The examiner

may be directed by the Commissioner to

furnish a written statement, within a

specified time, setting forth the reasons

for his or her decision upon the matters

averred in the petition, supplying a

copy to the petitioner.

* * * * *

13. Section 1.191(a) is revised to read

as follows:

§ 1.191 Appeal to Board of Patent Appeals

and Interferences.

(a) Every applicant for a patent or for

reissue of a patent, and every owner of

a patent under ex parte reexamination

filed under § 1.510 for a patent that

issued from an original application filed

in the United States before November

29, 1999, any of whose claims has been

twice or finally (§ 1.113) rejected, may

appeal from the decision of the

examiner to the Board of Patent Appeals

and Interferences by filing a notice of

appeal and the fee set forth in § 1.17(b)

within the time period provided under

§§ 1.134 and 1.136 for reply.

Notwithstanding the above, for an ex

parte reexamination proceeding filed

under § 1.510 for a patent that issued

from an original application filed in the

United States on or after November 29,

1999, no appeal may be filed until the

claims have been finally rejected

(§ 1.113). Appeals to the Board of Patent

Appeals and Interferences in inter

partes reexamination proceedings filed

under § 1.913 are controlled by §§ 1.959

through 1.981. Sections 1.191 through

1.198 are not applicable to appeals in

inter partes reexamination proceedings

filed under § 1.913.

* * * * *

14. Section 1.301 is revised to read as

follows:

§ 1.301 Appeal to U.S. Court of Appeals for

the Federal Circuit.

Any applicant or any owner of a

patent involved in any ex parte

reexamination proceeding filed under

§ 1.510, dissatisfied with the decision of

the Board of Patent Appeals and

Interferences, and any party to an

interference dissatisfied with the

decision of the Board of Patent Appeals

and Interferences, may appeal to the

U.S. Court of Appeals for the Federal

Circuit. The appellant must take the

following steps in such an appeal: In the

U. S. Patent and Trademark Office, file

a written notice of appeal directed to the

Commissioner (see §§ 1.302 and 1.304);

and in the Court, file a copy of the

notice of appeal and pay the fee for

appeal as provided by the rules of the

Court. For inter partes reexamination

proceedings filed under § 1.913, § 1.983

is controlling.

15. Section 1.303 is amended by

revising paragraphs (a) and (b) and by

adding a new paragraph (d) to read as

follows:

§ 1.303 Civil action under 35 U.S.C. 145,

146, 306.

(a) Any applicant or any owner of a

patent involved in an ex parte

reexamination proceeding filed under

§ 1.510 for a patent that issues from an

original application filed in the United

States before November 29, 1999,

dissatisfied with the decision of the

Board of Patent Appeals and

Interferences, and any party to an

interference dissatisfied with the

decision of the Board of Patent Appeals

and Interferences may, instead of

appealing to the U.S. Court of Appeals

for the Federal Circuit (§ 1.301), have

remedy by civil action under 35 U.S.C.

145 or 146, as appropriate. Such civil

action must be commenced within the

time specified in § 1.304.

(b) If an applicant in an ex parte case

or an owner of a patent involved in an

ex parte reexamination proceeding filed

under § 1.510 for a patent that issues

from an original application filed in the

United States before November 29,

1999, has taken an appeal to the U.S.

Court of Appeals for the Federal Circuit,

he or she thereby waives his or her right

to proceed under 35 U.S.C. 145.

* * * * *

(d) For an ex parte reexamination

proceeding filed under § 1.510 for a

patent that issues from an original

application filed in the United States on

or after November 29, 1999, and for an

inter partes reexamination proceeding

filed under § 1.913, no remedy by civil

action under 35 U.S.C. 145 is available.

16. Sections 1.304(a)(1) and (a)(2) are

revised to read as follows:

§ 1.304 Time for appeal or civil action.

(a)(1) The time for filing the notice of

appeal to the U.S. Court of Appeals for

the Federal Circuit (§ 1.302) or for

commencing a civil action (§ 1.303) is

two months from the date of the

decision of the Board of Patent Appeals

and Interferences. If a request for

rehearing or reconsideration of the

decision is filed within the time period

provided under § 1.197(b), § 1.658(b), or

§ 1.979(a), the time for filing an appeal

or commencing a civil action shall

expire two months after action on the

request. In interferences the time for

filing a cross-appeal or cross-action

expires:

(i) Fourteen days after service of the

notice of appeal or the summons and

complaint; or

(ii) Two months after the date of

decision of the Board of Patent Appeals

and Interferences, whichever is later.

(2) The time periods set forth in this

section are not subject to the provisions

of § 1.136, § 1.550(c), § 1.956, or

§ 1.645(a) or (b).

* * * * *

17. The section heading for subpart D

is revised to read as follows:

Subpart D—Ex Parte Reexamination of

Patents

* * * * *

18. Section 1.501 is amended by

revising paragraph (a) to read as follows:

§ 1.501 Citation of prior art in patent files.

(a) At any time during the period of

enforceability of a patent, any person

may cite, to the Office in writing, prior

art consisting of patents or printed

publications which that person states to

be pertinent and applicable to the patent

and believes to have a bearing on the

patentability of any claim of the patent.

If the citation is made by the patent

owner, the explanation of pertinency

and applicability may include an

explanation of how the claims differ

from the prior art. Such citations shall

be entered in the patent file except as

set forth in §§ 1.502 and 1.902.

* * * * *

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76775

19. New § 1.502 is added 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

terminated. See § 1.902 for processing of

prior art citations in patent and

reexamination files during an inter

partes reexamination proceeding filed

under § 1.913.

20. The undesignated center heading

immediately preceding § 1.510 is

revised as follows:

Request for Ex Parte Reexamination

21. Section 1.510 is amended by

revising its heading and paragraph (a) to

read as follows:

§ 1.510 Request for ex parte

reexamination.

(a) Any person may, at any time

during the period of enforceability of a

patent, file a request for an ex parte

reexamination by the Office of any

claim of the patent on the basis of prior

art patents or printed publications cited

under § 1.501. The request must be

accompanied by the fee for requesting

reexamination set in § 1.20(c)(1).

* * * * *

22. Section 1.515 is amended by

revising its heading and the text to read

as follows:

§ 1.515 Determination of the request for ex

parte reexamination.

(a) Within three months following the

filing date of a request for an ex parte

reexamination, an examiner will

consider the request and determine

whether or not a substantial new

question of patentability affecting any

claim of the patent is raised by the

request and the prior art cited therein,

with or without consideration of other

patents or printed publications. 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 person requesting reexamination.

(b) Where no substantial new question

of patentability has been found, a refund

of a portion of the fee for requesting ex

parte reexamination will be made to the

requester in accordance with § 1.26(c).

(c) The requester may seek review by

a petition to the Commissioner under

§ 1.181 within one month of the mailing

date of the examiner’s determination

refusing ex parte reexamination. Any

such petition must comply with

§ 1.181(b). If no petition is timely filed

or if the decision on petition affirms that

no substantial new question of

patentability has been raised, the

determination shall be final and

nonappealable.

23. Section 1.520 is amended by

revising its heading and the text to read

as follows:

§ 1.520 Ex parte reexamination at the

initiative of the Commissioner.

The Commissioner, at any time during

the period of enforceability of a patent,

may determine whether or not a

substantial new question of

patentability is raised by patents or

printed publications which have been

discovered by the Commissioner or

which have been brought to the

Commissioner’s attention, even though

no request for reexamination has been

filed in accordance with § 1.510 or

§ 1.913. The Commissioner may initiate

ex parte reexamination without a

request for reexamination pursuant to

§ 1.510 or § 1.913. Normally requests

from outside the Office that the

Commissioner undertake reexamination

on his own initiative will not be

considered. Any determination to

initiate ex parte reexamination under

this section 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).

24. The undesignated center heading

following § 1.520 is revised to read as

follows:

Ex Parte Reexamination

25. Section 1.525 is amended by

revising its heading and the text of

paragraphs (a) and (b) to read as follows:

§ 1.525 Order for ex parte reexamination.

(a) If a substantial new question of

patentability is found pursuant to

§ 1.515 or § 1.520, the determination

will include an order for ex parte

reexamination of the patent for

resolution of the question. If the order

for ex parte reexamination resulted from

a petition pursuant to § 1.515(c), the ex

parte reexamination will ordinarily be

conducted by an examiner other than

the examiner responsible for the initial

determination under § 1.515(a).

(b) The notice published in the

Official Gazette under § 1.11(c) will be

considered to be constructive notice and

ex parte reexamination will proceed.

26. Section 1.530 is amended by

revising its heading and paragraphs (a),

(b), (c), (d) introductory text, 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.

(b) The order for ex parte

reexamination will set a period of not

less than two months from the date of

the order within which the patent

owner may file a statement on the new

question of patentability, including any

proposed amendments the patent owner

wishes to make.

(c) Any statement filed by the patent

owner shall clearly point out why the

subject matter as claimed is not

anticipated or rendered obvious by the

prior art patents or printed publications,

either alone or in any reasonable

combinations. Where the reexamination

request was filed by a third party

requester, any statement filed by the

patent owner must be served upon the

ex parte reexamination requester in

accordance with § 1.248.

(d) Making amendments in a

reexamination proceeding. A proposed

amendment in an ex parte or an inter

partes reexamination proceeding is

made by filing a paper directing that

proposed specified changes be made to

the patent specification, including the

claims, or to the drawings. An

amendment paper directing that

proposed specified changes be made in

a reexamination proceeding may be

submitted as an accompaniment to a

request filed by the patent owner in

accordance with § 1.510(e), as part of a

patent owner statement in accordance

with paragraph (b) of this section, or,

where permitted, during the prosecution

of the reexamination proceeding

pursuant to § 1.550(a) or § 1.937.

* * * * *

(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

76776 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

of the actual inventor or inventors, the

Commissioner 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 § 1.977 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 the preceding

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

terminated other than by a

reexamination certificate under § 1.570

or § 1.977, a certificate of correction

indicating the change of inventorship

stated in the petition will be issued

upon request by the patentee.

27. Section 1.535 is revised to read as

follows:

§ 1.535 Reply by third party requester in ex

parte reexamination.

A reply to the patent owner’s

statement under § 1.530 may be filed by

the ex parte reexamination requester

within two months from the date of

service of the patent owner’s statement.

Any reply by the ex parte requester

must be served upon the patent owner

in accordance with § 1.248. If the patent

owner does not file a statement under

§ 1.530, no reply or other submission

from the ex parte reexamination

requester will be considered.

28. Section 1.540 is revised to read as

follows:

§ 1.540 Consideration of responses in ex

parte reexamination.

The failure to timely file or serve the

documents set forth in § 1.530 or in

§ 1.535 may result in their being refused

consideration. No submissions other

than the statement pursuant to § 1.530

and the reply by the ex parte

reexamination requester pursuant to

§ 1.535 will be considered prior to

examination.

29. Section 1.550 is revised to read as

follows:

§ 1.550 Conduct of ex parte reexamination

proceedings.

(a) All ex parte reexamination

proceedings, including any appeals to

the Board of Patent Appeals and

Interferences, will be conducted with

special dispatch within the Office. After

issuance of the ex parte reexamination

order and expiration of the time for

submitting any responses, the

examination will be conducted in

accordance with §§ 1.104 through 1.116

and will result in the issuance of an ex

parte reexamination certificate under

§ 1.570.

(b) The patent owner in an ex parte

reexamination proceeding will be given

at least thirty days to respond to any

Office action. In response to any

rejection, such response may include

further statements and/or proposed

amendments or new claims to place the

patent in a condition where all claims,

if amended as proposed, would be

patentable.

(c) The time for taking any action by

a patent owner in an ex parte

reexamination proceeding will be

extended only for sufficient cause and

for a reasonable time specified. Any

request for such extension must be filed

on or before the day on which action by

the patent owner is due, but in no case

will the mere filing of a request effect

any extension. See § 1.304(a) for

extensions of time for filing a notice of

appeal to the U. S. Court of Appeals for

the Federal Circuit or for commencing a

civil action.

(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 ex parte reexamination proceeding

will be terminated, and the

Commissioner will proceed to issue a

certificate under § 1.570 in accordance

with the last action of the Office.

(e) If a response by the patent owner

is not timely filed in the Office,

(1) The delay in filing such response

may be excused if it is shown to the

satisfaction of the Commissioner that

the delay was unavoidable; a petition to

accept an unavoidably delayed response

must be filed in compliance with

§ 1.137(a); or

(2) The response may nevertheless be

accepted if the delay was unintentional;

a petition to accept an unintentionally

delayed response must be filed in

compliance with § 1.137(b).

(f) The reexamination requester will

be sent copies of Office actions issued

during the ex parte reexamination

proceeding. After filing of a request for

ex parte reexamination by a third party

requester, any document filed by either

the patent owner or the third party

requester must be served on the other

party in the reexamination proceeding

in the manner provided by § 1.248. The

document must reflect service or the

document may be refused consideration

by the Office.

(g) The active participation of the ex

parte reexamination requester ends with

the reply pursuant to § 1.535, and no

further submissions on behalf of the

reexamination requester will be

acknowledged or considered. Further,

no submissions on behalf of any third

parties will be acknowledged or

considered unless such submissions are:

(1) in accordance with § 1.510 or

§ 1.535; or

(2) entered in the patent file prior to

the date of the order for ex parte

reexamination pursuant to § 1.525.

(h) Submissions by third parties, filed

after the date of the order for ex parte

reexamination pursuant to § 1.525, must

meet the requirements of and will be

treated in accordance with § 1.501(a).

30. Section 1.552 is revised to read as

follows:

§ 1.552 Scope of reexamination in ex parte

reexamination proceedings.

(a) Claims in an ex parte

reexamination proceeding will be

examined on the basis of patents or

printed publications and, with respect

to subject matter added or deleted in the

reexamination proceeding, on the basis

of the requirements of 35 U.S.C. 112.

(b) Claims in an ex parte

reexamination proceeding will not be

permitted to enlarge the scope of the

claims of the patent.

(c) Issues other than those indicated

in paragraphs (a) and (b) of this section

will not be resolved in a reexamination

proceeding. If such issues are raised by

the patent owner or third party

requester during a reexamination

proceeding, the existence of such issues

will be noted by the examiner in the

next Office action, in which case the

patent owner may consider the

advisability of filing a reissue

application to have such issues

considered and resolved.

31. Section 1.555 is amended by

revising its heading and paragraph (c) to

read as follows:

§ 1.555 Information material to

patentability in ex parte reexamination and

inter partes reexamination proceedings.

* * * * *

(c) The responsibility for compliance

with this section rests upon the

individuals designated in paragraph (a)

of this section and no evaluation will be

made by the Office in the reexamination

proceeding as to compliance with this

section. If questions of compliance with

this section are raised by the patent

owner or the third party requester

during a reexamination proceeding, they

will be noted as unresolved questions in

accordance with § 1.552(c).

32. Section 1.560 is revised to read as

follows:

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76777

§ 1.560 Interviews in ex parte

reexamination proceedings.

(a) Interviews in ex parte

reexamination proceedings pending

before the Office between examiners

and the owners of such patents or their

attorneys or agents of record must be

conducted in the Office at such times,

within Office hours, as the respective

examiners may designate. Interviews

will not be permitted at any other time

or place without the authority of the

Commissioner. Interviews for the

discussion of the patentability of claims

in patents involved in ex parte

reexamination proceedings will not be

conducted prior to the first official

action. Interviews should be arranged in

advance. Requests that reexamination

requesters participate in interviews with

examiners will not be granted.

(b) In every instance of an interview

with an examiner in an ex parte

reexamination proceeding, a complete

written statement of the reasons

presented at the interview as warranting

favorable action must be filed by the

patent owner. An interview does not

remove the necessity for response to

Office actions as specified in § 1.111.

Patent owner’s response to an

outstanding Office action after the

interview does not remove the necessity

for filing the written statement. The

written statement must be filed as a

separate part of a response to an Office

action outstanding at the time of the

interview, or as a separate paper within

one month from the date of the

interview, whichever is later.

33. Section 1.565 is revised to read as

follows:

§ 1.565 Concurrent office proceedings

which include an ex parte reexamination

proceeding.

(a) In an ex parte reexamination

proceeding before the Office, the patent

owner must inform the Office of any

prior or concurrent proceedings in

which the patent is or was involved

such as interferences, reissues, ex parte

reexaminations, inter partes

reexaminations, or litigation and the

results of such proceedings. See § 1.985

for notification of prior or concurrent

proceedings in an inter partes

reexamination proceeding.

(b) If a patent in the process of ex

parte reexamination is or becomes

involved in litigation, the Commissioner

shall determine whether or not to

suspend the reexamination. See § 1.987

for inter partes reexamination

proceedings.

(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 be consolidated and

result in the issuance 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 normally 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 be

physically entered into both files. Any

ex parte reexamination proceeding

merged with a reissue application shall

be terminated by the grant of the

reissued patent. For merger of a reissue

application and an inter partes

reexamination, see § 1.991.

(e) If a patent in the process of ex

parte reexamination is or becomes

involved in an interference, the

Commissioner may suspend the

reexamination or the interference. The

Commissioner will not consider a

request to suspend an interference

unless a motion (§ 1.635) to suspend the

interference has been presented to, and

denied by, an administrative patent

judge, and the request is filed within ten

(10) days of a decision by an

administrative patent judge denying the

motion for suspension or such other

time as the administrative patent judge

may set. For concurrent inter partes

reexamination and interference of a

patent, see § 1.993.

34. The undesignated center heading

following § 1.565 is revised to read as

follows:

Ex Parte Reexamination Certificate

35. Section 1.570 is revised to read as

follows:

§ 1.570 Issuance of ex parte reexamination

certificate after ex parte reexamination

proceedings.

(a) Upon the conclusion of ex parte

reexamination proceedings, the

Commissioner will issue 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 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.

(c) The ex parte reexamination

certificate will be mailed on the day of

its date to the patent owner at the

address as provided for in § 1.33(c). A

copy of the ex parte reexamination

certificate will also be mailed to the

requester of the ex parte reexamination

proceeding.

(d) If an ex parte reexamination

certificate has been issued 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.

(e) If the ex parte reexamination

proceeding is terminated by the grant of

a reissued patent as provided in

§ 1.565(d), the reissued patent will

constitute the ex parte reexamination

certificate required by this section and

35 U.S.C. 307.

(f) A notice of the issuance of each ex

parte reexamination certificate under

this section will be published in the

Official Gazette on its date of issuance.

36. A new subpart H is added to read

as follows:

Subpart H—Inter Partes Reexamination of

Patents That Issued From an Original

Application Filed in the United States on or

After November 29, 1999

Sec.

Prior Art Citations

1.902 Processing of prior art citations

during an inter partes reexamination

proceeding.

Requirements for Inter Partes Reexamination

Proceedings

1.903 Service of papers on parties in inter

partes reexamination.

1.904 Notice of inter partes reexamination

in Official Gazette.

1.905 Submission of papers by the public in

inter partes reexamination.

1.906 Scope of reexamination in inter

partes reexamination proceeding.

76778 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

1.907 Inter partes reexamination

prohibited.

1.913 Persons eligible to file request for

inter partes reexamination.

1.915 Content of request for inter partes

reexamination.

1.919 Filing date of request for inter partes

reexamination.

1.923 Examiner’s determination on the

request for inter partes reexamination.

1.925 Partial refund if request for inter

partes reexamination is not ordered.

1.927 Petition to review refusal to order

inter partes reexamination.

Inter Partes Reexamination of Patents

1.931 Order for inter partes reexamination.

Information Disclosure in Inter Partes

Reexamination

1.933 Patent owner duty of disclosure in

inter partes reexamination proceedings.

Office Actions and Responses (Before the

Examiner) in Inter Partes Reexamination

1.935 Initial Office action usually

accompanies order for inter partes

reexamination.

1.937 Conduct of inter partes

reexamination.

1.939 Unauthorized papers in inter partes

reexamination.

1.941 Amendments by patent owner in

inter partes reexamination.

1.943 Requirements of responses, written

comments, and briefs in inter partes

reexamination.

1.945 Response to Office action by patent

owner in inter partes reexamination.

1.947 Comments by third party requester to

patent owner’s response in inter partes

reexamination.

1.948 Limitations on submission of prior art

by third party requester following the

order for inter partes reexamination.

1.949 Examiner’s Office action closing

prosecution in inter partes

reexamination.

1.951 Options after Office action closing

prosecution in inter partes

reexamination.

1.953 Examiner’s Right of Appeal Notice in

inter partes reexamination.

Interviews Prohibited in Inter Partes

Reexamination

1.955 Interviews prohibited in inter partes

reexamination proceedings.

Extensions of Time, Termination of

Proceedings, and Petitions To Revive in Inter

Partes Reexamination

1.956 Patent owner extensions of time in

inter partes reexamination.

1.957 Failure to file a timely, appropriate or

complete response or comment in inter

partes reexamination.

1.958 Petition to revive terminated inter

partes reexamination or claims

terminated for lack of patent owner

response.

Appeal to the Board of Patent Appeals and

Interferences in Inter Partes Reexamination

1.959 Notice of appeal and cross appeal to

Board of Patent Appeals and

Interferences in inter partes

reexamination.

1.961 Jurisdiction over appeal in inter

partes reexamination.

1.962 Appellant and respondent in inter

partes reexamination defined.

1.963 Time for filing briefs in inter partes

reexamination.

1.965 Appellant’s brief in inter partes

reexamination.

1.967 Respondent’s brief in inter partes

reexamination.

1.969 Examiner’s answer in inter partes

reexamination.

1.971 Rebuttal brief in inter partes

reexamination.

1.973 Oral hearing in inter partes

reexamination.

1.975 Affidavits or declarations after appeal

in inter partes reexamination.

1.977 Decision by the Board of Patent

Appeals and Interferences; remand to

examiner in inter partes reexamination.

1.979 Action following decision by the

Board of Patent Appeals and

Interferences or dismissal of appeal in

inter partes reexamination.

1.981 Reopening after decision by the Board

of Patent Appeals and Interferences in

inter partes reexamination.

Patent Owner Appeal to the United States

Court of Appeals for the Federal Circuit in

Inter Partes Reexamination

1.983 Patent owner appeal to the United

States Court of Appeals for the Federal

Circuit in inter partes reexamination.

Concurrent Proceedings Involving Same

Patent in InterPartes Reexamination

1.985 Notification of prior or concurrent

proceedings in inter partes

reexamination.

1.987 Suspension of inter partes

reexamination proceeding due to

litigation.

1.989 Merger of concurrent reexamination

proceedings.

1.991 Merger of concurrent reissue

application and inter partes

reexamination proceeding.

1.993 Suspension of concurrent

interference and inter partes

reexamination proceeding.

1.995 Third party requester’s participation

rights preserved in merged proceeding.

Reexamination Certificate in Inter Partes

Reexamination

1.997 Issuance of inter partes reexamination

certificate.

Subpart H—Inter Partes Reexamination

of Patents That Issued From an

Original Application Filed in the United

States on or After November 29, 1999

Prior Art Citations

§ 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

§ 1.915 or § 1.948, will be delayed until

the inter partes reexamination

proceeding has been terminated. See

§ 1.502 for processing of prior art

citations in patent and reexamination

files during an ex parte reexamination

proceeding filed under § 1.510.

Requirements for Inter Partes

Reexamination Proceedings

§ 1.903 Service of papers on parties in

inter partes reexamination.

The patent owner and the third party

requester will be sent copies of Office

actions issued during the inter partes

reexamination proceeding. After filing

of a request for inter partes

reexamination by a third party

requester, any document filed by either

the patent owner or the third party

requester must be served on every other

party in the reexamination proceeding

in the manner provided in § 1.248. Any

document must reflect service or the

document may be refused consideration

by the Office. The failure of the patent

owner or the third party requester to

serve documents may result in their

being refused consideration.

§ 1.904 Notice of inter partes

reexamination in Official Gazette.

A notice of the filing of an inter partes

reexamination request will be published

in the Official Gazette. The notice

published in the Official Gazette under

§ 1.11(c) will be considered to be

constructive notice of the inter partes

reexamination proceeding and inter

partes reexamination will proceed.

§ 1.905 Submission of papers by the

public in inter partes reexamination.

Unless specifically provided for, no

submissions on behalf of any third

parties other than third party requesters

as defined in 35 U.S.C. 100(e) will be

considered unless such submissions are

in accordance with § 1.915 or entered in

the patent file prior to the date of the

order for reexamination pursuant to

§ 1.931. Submissions by third parties,

other than third party requesters, filed

after the date of the order for

reexamination pursuant to § 1.931, must

meet the requirements of § 1.501 and

will be treated in accordance with

§ 1.902. Submissions which do not meet

the requirements of § 1.501 will be

returned.

§ 1.906 Scope of reexamination in inter

partes reexamination proceeding.

(a) Claims in an inter partes

reexamination proceeding will be

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76779

examined on the basis of patents or

printed publications and, with respect

to subject matter added or deleted in the

reexamination proceeding, on the basis

of the requirements of 35 U.S.C. 112.

(b) Claims in an inter partes

reexamination proceeding will not be

permitted to enlarge the scope of the

claims of the patent.

(c) Issues other than those indicated

in paragraphs (a) and (b) of this section

will not be resolved in an inter partes

reexamination proceeding. If such

issues are raised by the patent owner or

the third party requester during a

reexamination proceeding, the existence

of such issues will be noted by the

examiner in the next Office action, in

which case the patent owner may desire

to consider the advisability of filing a

reissue application to have such issues

considered and resolved.

§ 1.907 Inter partes reexamination

prohibited.

(a) Once an order to reexamine has

been issued under § 1.931, neither the

third party requester, nor its privies,

may file a subsequent request for inter

partes reexamination of the patent until

an inter partes reexamination certificate

is issued under § 1.997, unless

authorized by the Commissioner.

(b) Once a final decision has been

entered against a party in a civil action

arising in whole or in part under 28

U.S.C. 1338 that the party has not

sustained its burden of proving

invalidity of any patent claim-in-suit,

then neither that party nor its privies

may thereafter request inter partes

reexamination of any such patent claim

on the basis of issues which that party,

or its privies, raised or could have

raised in such civil action, and an inter

partes reexamination requested by that

party, or its privies, on the basis of such

issues may not thereafter be maintained

by the Office.

(c) If a final decision in an inter partes

reexamination proceeding instituted by

a third party requester is favorable to

patentability of any original, proposed

amended, or new claims of the patent,

then neither that party nor its privies

may thereafter request inter partes

reexamination of any such patent claims

on the basis of issues which that party,

or its privies, raised or could have

raised in such inter partes

reexamination proceeding.

§ 1.913 Persons eligible to file request for

inter partes reexamination.

Except as provided for in § 1.907, any

person may, at any time during the

period of enforceability of a patent

which issued from an original

application filed in the United States on

or after November 29, 1999, file a

request for inter partes reexamination

by the Office of any claim of the patent

on the basis of prior art patents or

printed publications cited under

§ 1.501.

§ 1.915 Content of request for inter partes

reexamination.

(a) The request must be accompanied

by the fee for requesting inter partes

reexamination set forth in § 1.20(c)(2).

(b) A request for inter partes

reexamination must include the

following parts:

(1) An identification of the patent by

patent number and every claim for

which reexamination is requested.

(2) A citation of the patents and

printed publications which are

presented to provide a substantial new

question of patentability.

(3) A statement pointing out each

substantial new question of

patentability based on the cited patents

and printed publications, and a detailed

explanation of the pertinency and

manner of applying the patents and

printed publications to every claim for

which reexamination is requested.

(4) A copy of every patent or printed

publication relied upon or referred to in

paragraphs (b)(1) through (3) of this

section, accompanied by an English

language translation of all the necessary

and pertinent parts of any non-English

language document.

(5) A copy of the entire patent

including the front face, drawings, and

specification/claims (in double column

format) for which reexamination is

requested, and a copy of any disclaimer,

certificate of correction, or

reexamination certificate issued in the

patent. All copies must have each page

plainly written on only one side of a

sheet of paper.

(6) A certification by the third party

requester that a copy of the request has

been served in its entirety on the patent

owner at the address provided for in

§ 1.33(c). The name and address of the

party served must be indicated. If

service was not possible, a duplicate

copy of the request must be supplied to

the Office.

(7) A certification by the third party

requester that the estoppel provisions of

§ 1.907 do not prohibit the inter partes

reexamination.

(8) A statement identifying the real

party in interest to the extent necessary

for a subsequent person filing an inter

partes reexamination request to

determine whether that person is a

privy.

(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(a).

(d) If the inter partes request does not

meet all the requirements of subsection

1.915(b), the person identified as

requesting inter partes reexamination

may be so notified and given an

opportunity to complete the formal

requirements of the request within a

specified time. Failure to comply with

the notice may result in the inter partes

reexamination proceeding being

vacated.

§ 1.919 Filing date of request for inter

partes reexamination.

(a) The filing date of a request for inter

partes reexamination is the date on

which the request satisfies the fee

requirement of § 1.915(a).

(b) If the request is not granted a filing

date, the request will be placed in the

patent file as a citation of prior art if it

complies with the requirements of

§ 1.501.

§ 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 § 1.919, 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.

§ 1.925 Partial refund if request for inter

partes reexamination is not ordered.

Where inter partes reexamination is

not ordered, a refund of a portion of the

fee for requesting inter partes

reexamination will be made to the

requester in accordance with § 1.26(c).

§ 1.927 Petition to review refusal to order

inter partes reexamination.

The third party requester may seek

review by a petition to the

Commissioner under§ 1.181 within one

month of the mailing date of the

examiner’s determination refusing to

order inter partes reexamination. Any

such petition must comply with

§ 1.181(b). If no petition is timely filed

or if the decision on petition affirms that

76780 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

no substantial new question of

patentability has been raised, the

determination shall be final and

nonappealable.

Inter Partes Reexamination of Patents

§ 1.931 Order for inter partes

reexamination.

(a) If a substantial new question of

patentability is found, the determination

will include an order for inter partes

reexamination of the patent for

resolution of the question.

(b) If the order for inter partes

reexamination resulted from a petition

pursuant to § 1.927, the inter partes

reexamination will ordinarily be

conducted by an examiner other than

the examiner responsible for the initial

determination under § 1.923.

Information Disclosure in Inter Partes

Reexamination

§ 1.933 Patent owner duty of disclosure in

inter partes reexamination proceedings.

(a) Each individual associated with

the patent owner in an inter partes

reexamination proceeding has a duty of

candor and good faith in dealing with

the Office, which includes a duty to

disclose to the Office all information

known to that individual to be material

to patentability in a reexamination

proceeding as set forth in § 1.555(a) and

(b). The duty to disclose all information

known to be material to patentability in

an inter partes reexamination

proceeding is deemed to be satisfied by

filing a paper in compliance with the

requirements set forth in § 1.555(a) and

(b).

(b) The responsibility for compliance

with this section rests upon the

individuals designated in paragraph (a)

of this section, and no evaluation will

be made by the Office in the

reexamination proceeding as to

compliance with this section. If

questions of compliance with this

section are raised by the patent owner

or the third party requester during a

reexamination proceeding, they will be

noted as unresolved questions in

accordance with § 1.906(c).

Office Actions and Responses (Before

the Examiner) in Inter Partes

Reexamination

§ 1.935 Initial Office action usually

accompanies order for inter partes

reexamination.

The order for inter partes

reexamination will usually be

accompanied by the initial Office action

on the merits of the reexamination.

§ 1.937 Conduct of inter partes

reexamination.

(a) All inter partes reexamination

proceedings, including any appeals to

the Board of Patent Appeals and

Interferences, will be conducted with

special dispatch within the Office,

unless the Commissioner makes a

determination that there is good cause

for suspending the reexamination

proceeding.

(b) The inter partes reexamination

proceeding will be conducted in

accordance with §§ 1.104 through 1.116,

the sections governing the application

examination process, and will result in

the issuance of an inter partes

reexamination certificate under § 1.997,

except as otherwise provided.

(c) All communications between the

Office and the parties to the inter partes

reexamination which are directed to the

merits of the proceeding must be in

writing and filed with the Office for

entry into the record of the proceeding.

§ 1.939 Unauthorized papers in inter

partes reexamination.

(a) If an unauthorized paper is filed by

any party at any time during the inter

partes reexamination proceeding it will

not be considered and may be returned.

(b) Unless otherwise authorized, no

paper shall be filed prior to the initial

Office action on the merits of the inter

partes reexamination.

§ 1.941 Amendments by patent owner in

inter partes reexamination.

Amendments by patent owner in inter

partes reexamination proceedings are

made by filing a paper in compliance

with §§ 1.530(d)–(k) and 1.943.

§ 1.943 Requirements of responses,

written comments, and briefs in inter partes

reexamination.

(a) The form of responses, written

comments, briefs, appendices, and other

papers must be in accordance with the

requirements of § 1.52.

(b) Responses by the patent owner

and written comments by the third party

requester shall not exceed 50 pages in

length, excluding amendments,

appendices of claims, and reference

materials such as prior art references.

(c) Appellant’s briefs filed by the

patent owner and the third party

requester shall not exceed thirty pages

or 14,000 words in length, excluding

appendices of claims and reference

materials such as prior art references.

All other briefs filed by any party shall

not exceed fifteen pages in length or

7,000 words. If the page limit for any

brief is exceeded, a certificate is

required stating the number of words

contained in the brief.

§ 1.945 Response to Office action by

patent owner in inter partes reexamination.

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.

§ 1.947 Comments by third party requester

to patent owner’s response in inter partes

reexamination.

Each time the patent owner files a

response to an Office action on the

merits pursuant to § 1.945, a third party

requester may once file written

comments within a period of 30 days

from the date of service of the patent

owner’s response. These comments

shall be limited to issues raised by the

Office action or the patent owner’s

response. The time for submitting

comments by the third party requester

may not be extended. For the purpose

of filing the written comments by the

third party requester, the comments will

be considered as having been received

in the Office as of the date of deposit

specified in the certificate under § 1.8.

§ 1.948 Limitations on submission of prior

art by third party requester following the

order for inter partes reexamination.

(a) After the inter partes

reexamination order, the third party

requester may only cite additional prior

art as defined under § 1.501 if it is filed

as part of a comments submission under

§ 1.947 or § 1.951(b) and is limited to

prior art:

(1) which is necessary to rebut a

finding of fact by the examiner;

(2) which is necessary to rebut a

response of the patent owner; or

(3) which for the first time became

known or available to the third party

requester after the filing of the request

for inter partes reexamination

proceeding. Prior art submitted under

paragraph (a)(3) of this section must be

accompanied by a statement as to when

the prior art first became known or

available to the third party requester

and must include a discussion of the

pertinency of each reference to the

patentability of at least one claim.

(b) [Reserved].

§ 1.949 Examiner’s Office action closing

prosecution in inter partes reexamination.

Upon consideration of the issues a

second or subsequent time, or upon a

determination of patentability of all

claims, the examiner shall issue an

Office action treating all claims present

in the inter partes reexamination, which

may be an action closing prosecution.

The Office action shall set forth all

rejections and determinations not to

make a proposed rejection, and the

grounds therefor. An Office action will

not usually close prosecution if it

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76781

includes a new ground of rejection

which was not previously addressed by

the patent owner, unless the new

ground was necessitated by an

amendment.

§ 1.951 Options after Office action closing

prosecution in inter partes reexamination.

(a) After an Office action closing

prosecution in an inter partes

reexamination, the patent owner may

once file comments limited to the issues

raised in the Office action closing

prosecution. The comments can include

a proposed amendment to the claims,

which amendment will be subject to the

criteria of § 1.116 as to whether or not

it shall be admitted. The comments

must be filed within the time set for

response in the Office action closing

prosecution.

(b) When the patent owner does file

comments, a third party requester may

once file comments responsive to the

patent owner’s comments within 30

days from the date of service of patent

owner’s comments on the third party

requester.

§ 1.953 Examiner’s Right of Appeal Notice

in inter partes reexamination.

(a) Upon considering the comments of

the patent owner and the third party

requester subsequent to the Office

action closing prosecution in an inter

partes reexamination, or upon

expiration of the time for submitting

such comments, the examiner shall

issue a Right of Appeal Notice, unless

the examiner reopens prosecution and

issues another Office action on the

merits.

(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 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. Any

appeal by the parties shall be conducted

in accordance with §§ 1.959–1.983.

(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,

the inter partes reexamination

proceeding will be terminated, and the

Commissioner will proceed to issue a

certificate under § 1.997 in accordance

with the Right of Appeal Notice.

Interviews Prohibited in Inter Partes

Reexamination

§ 1.955 Interviews prohibited in inter

partes reexamination proceedings.

There will be no interviews in an inter

partes reexamination proceeding which

discuss the merits of the proceeding.

Extensions of Time, Termination of

Proceedings, and Petitions To Revive in

Inter Partes Reexamination

§ 1.956 Patent owner extensions of time in

inter partes reexamination.

The time for taking any action by a

patent owner in an inter partes

reexamination proceeding will be

extended only for sufficient cause and

for a reasonable time specified. Any

request for such extension must be filed

on or before the day on which action by

the patent owner is due, but in no case

will the mere filing of a request effect

any extension. See § 1.304(a) for

extensions of time for filing a notice of

appeal to the U.S. Court of Appeals for

the Federal Circuit.

§ 1.957 Failure to file a timely, appropriate

or complete response or comment in inter

partes reexamination.

(a) If the third party requester files an

untimely or inappropriate comment,

notice of appeal or brief in an inter

partes reexamination, the paper will be

refused consideration.

(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 reexamination proceeding will be

terminated and the Commissioner will

proceed to issue a certificate under

§ 1.997 in accordance with the last

action of the Office.

(c) If claims are found patentable and

the patent owner fails to file a timely

and appropriate response to any Office

action in an inter partes reexamination

proceeding, further prosecution will be

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.

(d) When action by the patent owner

is a bona fide attempt to respond and to

advance the prosecution and is

substantially a complete response to the

Office action, but consideration of some

matter or compliance with some

requirement has been inadvertently

omitted, an opportunity to explain and

supply the omission may be given.

§ 1.958 Petition to revive terminated inter

partes reexamination or claims terminated

for lack of patent owner response.

(a) If a response by the patent owner

is not timely filed in the Office, the

delay in filing such response may be

excused if it is shown to the satisfaction

of the Commissioner that the delay was

unavoidable. A grantable petition to

accept an unavoidably delayed response

must be filed in compliance with

§ 1.137(a).

(b) Any response by the patent owner

not timely filed in the Office may be

accepted if the delay was unintentional.

A grantable petition to accept an

unintentionally delayed response must

be filed in compliance with § 1.137(b).

Appeal to the Board of Patent Appeals

and Interferences in Inter Partes

Reexamination

§ 1.959 Notice of appeal and cross appeal

to Board of Patent Appeals and

Interferences in inter partes reexamination.

(a)(1) Upon the issuance of a Right of

Appeal Notice under § 1.953, the patent

owner involved in an inter partes

reexamination proceeding may appeal

to the Board of Patent Appeals and

Interferences with respect to the final

rejection of any claim of the patent by

filing a notice of appeal within the time

provided in the Right of Appeal Notice

and paying the fee set forth in § 1.17(b).

(2) Upon the issuance of a Right of

Appeal Notice under § 1.953, a third

party requester involved in an inter

partes reexamination proceeding may

appeal to the Board of Patent Appeals

and Interferences with respect to any

final decision favorable to the

patentability, including any final

determination not to make a proposed

rejection, of any original, proposed

amended, or new claim of the patent by

filing a notice of appeal within the time

provided in the Right of Appeal Notice

and paying the fee set forth in § 1.17(b).

(b)(1) Within fourteen days of service

of a third party requester’s notice of

appeal under paragraph (a)(2) of this

section and upon payment of the fee set

forth in § 1.17(b), a patent owner who

has not filed a notice of appeal may file

76782 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

a notice of cross appeal with respect to

the final rejection of any claim of the

patent.

(2) Within fourteen days of service of

a patent owner’s notice of appeal under

paragraph (a)(1) of this section and upon

payment of the fee set forth in § 1.17(b),

a third party requester who has not filed

a notice of appeal may file a notice of

cross appeal with respect to any final

decision favorable to the patentability,

including any final determination not to

make a proposed rejection, of any

original, proposed amended, or new

claim of the patent.

(c) The notice of appeal or cross

appeal in an inter partes reexamination

proceeding must identify the appealed

claim(s) and must be signed by the

patent owner, the third party requester,

or their duly authorized attorney or

agent.

(d) An appeal or cross appeal, when

taken, must be taken from all the

rejections of the claims in a Right of

Appeal Notice which the patent owner

proposes to contest or from all the

determinations favorable to

patentability, including any final

determination not to make a proposed

rejection, in a Right of Appeal Notice

which a third party requester proposes

to contest. Questions relating to matters

not affecting the merits of the invention

may be required to be settled before an

appeal is decided.

(e) The times for filing a notice of

appeal or cross appeal may not be

extended.

§ 1.961 Jurisdiction over appeal in inter

partes reexamination.

Jurisdiction over the inter partes

reexamination proceeding passes to the

Board of Patent Appeals and

Interferences upon transmittal of the

file, including all briefs and examiner’s

answers, to the Board of Patent Appeals

and Interferences. Prior to the entry of

a decision on the appeal, the

Commissioner may sua sponte order the

inter partes reexamination proceeding

remanded to the examiner for action

consistent with the Commissioner’s

order.

§ 1.962 Appellant and respondent in inter

partes reexamination defined.

For the purposes of inter partes

reexamination, appellant is any party,

whether the patent owner or a third

party requester, filing a notice of appeal

or cross appeal. If more than one party

appeals or cross appeals, each appealing

or cross appealing party is an appellant

with respect to the claims to which his

or her appeal or cross appeal is directed.

A respondent is any third party

requester responding under § 1.967 to

the appellant’s brief of the patent owner,

or the patent owner responding under

§ 1.967 to the appellant’s brief of any

third party requester. No third party

requester may be a respondent to the

appellant brief of any other third party

requester.

§ 1.963 Time for filing briefs in inter partes

reexamination.

(a)An appellant’s brief in an inter

partes reexamination must be filed no

later than two months from the latest

filing date of the last-filed notice of

appeal or cross appeal or, if any party

to the inter partes reexamination is

entitled to file an appeal or cross appeal

but fails to timely do so, the expiration

of time for filing (by the last party

entitled to do so) such notice of appeal

or cross appeal. The time for filing an

appellant’s brief may not be extended.

(b) Once an appellant’s brief has been

properly filed, any brief must be filed by

respondent within one month from the

date of service of the appellant’s brief.

The time for filing a respondent’s brief

may not be extended.

(c) The examiner will consider both

the appellant’s and respondent’s briefs

and may prepare an examiner’s answer

under § 1.969.

(d) Any appellant may file a rebuttal

brief under § 1.971 within one month of

the date of the examiner’s answer. The

time for filing a rebuttal brief may not

be extended.

(e) No further submission will be

considered and any such submission

will be treated in accordance with

§ 1.939.

§ 1.965 Appellant’s brief in inter partes

reexamination.

(a)Appellant(s) may once, within time

limits for filing set forth in § 1.963, file

a brief in triplicate and serve the brief

on all other parties to the inter partes

reexamination proceeding in accordance

with § 1.903. The brief must be signed

by the appellant, or the appellant’s duly

authorized attorney or agent and must

be accompanied by the requisite fee set

forth in § 1.17(c). The brief must set

forth the authorities and arguments on

which appellant will rely to maintain

the appeal. Any arguments or

authorities not included in the brief will

be refused consideration by the Board of

Patent Appeals and Interferences, unless

good cause is shown.

(b) A party’s appeal shall stand

dismissed upon failure of that party to

file an appellant’s brief, accompanied by

the requisite fee, within the time

allowed.

(c) The appellant’s brief shall contain

the following items under appropriate

headings and in the order indicated

below, unless the brief is filed by a party

who is not represented by a registered

practitioner. The brief may include an

appendix containing only those portions

of the record on which reliance has been

made.

(1) Real Party in Interest. A statement

identifying the real party in interest.

(2) Related Appeals and Interferences.

A statement identifying by number and

filing date all other appeals or

interferences known to the appellant,

the appellant’s legal representative, or

assignee which will directly affect or be

directly affected by or have a bearing on

the decision of the Board of Patent

Appeals and Interferences in the

pending appeal.

(3) Status of Claims. A statement of

the status of all the claims, pending or

canceled. If the appellant is the patent

owner, the appellant must also identify

the rejected claims whose rejection is

being appealed. If the appellant is a

third party requester, the appellant must

identify the claims that the examiner

has made a determination favorable to

patentability, which determination is

being appealed.

(4) Status of Amendments. A

statement of the status of any

amendment filed subsequent to the

close of prosecution.

(5) Summary of Invention. A concise

explanation of the invention or subject

matter defined in the claims involved in

the appeal, which shall refer to the

specification by column and line

number, and to the drawing(s), if any,

by reference characters.

(6) Issues. A concise statement of the

issues presented for review. No new

ground of rejection can be proposed by

a third party requester appellant.

(7) Grouping of Claims. If the

appellant is the patent owner, for each

ground of rejection in the Right of

Appeal Notice which appellant contests

and which applies to a group of two or

more claims, the Board of Patent

Appeals and Interferences shall select a

single claim from the group and shall

decide the appeal as to the ground of

rejection on the basis of that claim alone

unless a statement is included that the

claims of the group do not stand or fall

together; and, in the argument under

paragraph (c)(8) of this section,

appellant explains why the claims of

this group are believed to be separately

patentable. Merely pointing out

differences in what the claims cover is

not an argument as to why the claims

are separately patentable.

(8) Argument. The contentions of

appellant with respect to each of the

issues presented for review in paragraph

(c)(6) of this section, and the bases

therefor, with citations of the

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76783

authorities, statutes, and parts of the

record relied on. Each issue should be

treated under a separate, numbered

heading.

(i) For each rejection under 35 U.S.C.

112, first paragraph, or for each

determination favorable to patentability,

including a determination not to make

a proposed rejection under 35 U.S.C.

112, first paragraph, which appellant

contests, the argument shall specify the

errors in the rejection or the

determination and how the first

paragraph of 35 U.S.C. 112 is complied

with, if the appellant is the patent

owner, or is not complied with, if the

appellant is a third party requester,

including, as appropriate, how the

specification and drawing(s), if any,

(A) Describe, if the appellant is the

patent owner, or fail to describe, if the

appellant is a third party requester, the

subject matter defined by each of the

appealed claims; and

(B) Enable, if the appellant is the

patent owner, or fail to enable, if the

appellant is a third party requester, any

person skilled in the art to make and use

the subject matter defined by each of the

appealed claims.

(ii) For each rejection under 35 U.S.C.

112, second paragraph, or for each

determination favorable to patentability

including a determination not to make

a proposed rejection under 35 U.S.C.

112, second paragraph, which appellant

contests, the argument shall specify the

errors in the rejection, if the appellant

is the patent owner, or the

determination, if the appellant is a third

party requester, and how the claims do,

if the appellant is the patent owner, or

do not, if the appellant is a third party

requester, particularly point out and

distinctly claim the subject matter

which the inventor regards as the

invention.

(iii) For each rejection under 35

U.S.C. 102 or for each determination

favorable to patentability including a

determination not to make a proposed

rejection under 35 U.S.C. 102 which

appellant contests, the argument shall

specify the errors in the rejection, if the

appellant is the patent owner, or

determination, if the appellant is a third

party requester, and why the appealed

claims are, if the appellant is the patent

owner, or are not, if the appellant is a

third party requester, patentable under

35 U.S.C. 102, including any specific

limitations in the appealed claims

which are or are not described in the

prior art.

(iv) For each rejection under 35 U.S.C.

103 or for each determination favorable

to patentability, including a

determination not to make a proposed

rejection under 35 U.S.C. 103 which

appellant contests, the argument shall

specify the errors in the rejection, if the

appellant is the patent owner, or

determination, if the appellant is a third

party requester. If appropriate, also state

the specific limitations in the appealed

claims which are or are not described in

the prior art and explain how such

limitations render the claimed subject

matter obvious, if the appellant is a

third party requester, or unobvious, if

the appellant is the patent owner, over

the prior art. If the rejection or

determination is based upon a

combination of references, the argument

shall explain why the references, taken

as a whole, do or do not suggest the

claimed subject matter. The argument

should include, as may be appropriate,

an explanation of why features

disclosed in one reference may or may

not properly be combined with features

disclosed in another reference. A

general argument that all the limitations

are or are not described in a single

reference does not satisfy the

requirements of this paragraph.

(v) For any rejection other than those

referred to in paragraphs (c)(8)(i) to (iv)

of this section or for each determination

favorable to patentability, including any

determination not to make a proposed

rejection other than those referred to in

paragraphs (c)(8)(i) to (iv) of this section

which appellant contests, the argument

shall specify the errors in the rejection,

if the appellant is the patent owner, or

determination, if the appellant is a third

party requester, and the specific

limitations in the appealed claims, if

appropriate, or other reasons, which

cause the rejection or determination to

be in error.

(9) Appendix. An appendix

containing a copy of the claims

appealed by the appellant.

(10) Certificate of Service. A

certification that a copy of the brief has

been served in its entirety on all other

parties to the reexamination proceeding.

The names and addresses of the parties

served must be indicated.

(d) If a brief is filed which does not

comply with all the requirements of

paragraph (c) of this section, appellant

will be notified of the reasons for noncompliance and provided with a nonextendable period of one month within

which to file an amended brief. If the

appellant does not file an amended brief

during the one-month period, or files an

amended brief which does not overcome

all the reasons for non-compliance

stated in the notification, that

appellant’s appeal will stand dismissed.

§ 1.967 Respondent’s brief in inter partes

reexamination.

(a) Respondent(s) in an inter partes

reexamination appeal may once, within

the time limit for filing set forth in

§ 1.963, file a respondent brief in

triplicate and serve the brief on all

parties in accordance with § 1.903. The

brief must be signed by the party, or the

party’s duly authorized attorney or

agent, and must be accompanied by the

requisite fee set forth in § 1.17(c). The

brief must state the authorities and

arguments on which respondent will

rely. Any arguments or authorities not

included in the brief will be refused

consideration by the Board of Patent

Appeals and Interferences, unless good

cause is shown. The respondent brief

shall be limited to issues raised in the

appellant brief to which the respondent

brief is directed. A third party

respondent brief may not address any

brief of any other third party.

(b) The respondent brief shall contain

the following items under appropriate

headings and in the order here

indicated, and may include an appendix

containing only those portions of the

record on which reliance has been

made.

(1) Real Party in Interest. A statement

identifying the real party in interest.

(2) Related Appeals and Interferences.

A statement identifying by number and

filing date all other appeals or

interferences known to the respondent,

the respondent’s legal representative, or

assignee (if any) which will directly

affect or be directly affected by or have

a bearing on the decision of the Board

of Patent Appeals and Interferences in

the pending appeal.

(3) Status of claims. A statement

accepting or disputing appellant’s

statement of the status of claims. If

appellant’s statement of the status of

claims is disputed, the errors in

appellant’s statement must be specified

with particularity.

(4) Status of amendments. A

statement accepting or disputing

appellant’s statement of the status of

amendments. If appellant’s statement of

the status of amendments is disputed,

the errors in appellant’s statement must

be specified with particularity.

(5) Summary of invention. A

statement accepting or disputing

appellant’s summary of the invention or

subject matter defined in the claims

involved in the appeal. If appellant’s

summary of the invention or subject

matter defined in the claims involved in

the appeal is disputed, the errors in

appellant’s summary must be specified.

(6) Issues. A statement accepting or

disputing appellant’s statement of the

issues presented for review. If

76784 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

appellant’s statement of the issues

presented for review is disputed, the

errors in appellant’s statement must be

specified. A counter statement of the

issues for review may be made. No new

ground of rejection can be proposed by

a third party requester respondent.

(7) Argument. A statement accepting

or disputing the contentions of the

appellant with each of the issues. If a

contention of the appellant is disputed,

the errors in appellant’s argument must

be specified, stating the basis therefor,

with citations of the authorities,

statutes, and parts of the record relied

on. Each issue should be treated under

a separate heading. An argument may be

made with each of the issues stated in

the counter statement of the issues, with

each counter-stated issue being treated

under a separate heading. The

provisions of § 1.965 (c)(8)(iii) and (iv)

of these regulations shall apply to any

argument raised under 35 U.S.C. 102 or

sec. 103.

(8) Certificate of Service. A

certification that a copy of the

respondent brief has been served in its

entirety on all other parties to the

reexamination proceeding. The names

and addresses of the parties served must

be indicated.

(c) If a respondent brief is filed which

does not comply with all the

requirements of paragraph (b) of this

section, respondent will be notified of

the reasons for non-compliance and

provided with a non-extendable period

of one month within which to file an

amended brief. If the respondent does

not file an amended brief during the

one-month period, or files an amended

brief which does not overcome all the

reasons for non-compliance stated in the

notification, the respondent brief will

not be considered.

§ 1.969 Examiner’s answer in inter partes

reexamination.

(a) The primary examiner in an inter

partes reexamination appeal may,

within such time as directed by the

Commissioner, furnish a written

statement in answer to the patent

owner’s and/or third party requester’s

appellant brief or respondent brief

including, as may be necessary, such

explanation of the invention claimed

and of the references, the grounds of

rejection, and the reasons for

patentability, including grounds for not

adopting a proposed rejection. A copy of

the answer shall be supplied to all

parties to the reexamination proceeding.

If the primary examiner finds that the

appeal is not regular in form or does not

relate to an appealable action, he or she

shall so state.

(b) An examiner’s answer may not

include a new ground of rejection.

(c) An examiner’s answer may not

include a new determination not to

make a proposed rejection of a claim.

(d) Any new ground of rejection, or

any new determination not to make a

proposed rejection, must be made in an

Office action reopening prosecution.

§ 1.971 Rebuttal brief in inter partes

reexamination.

Within one month of the examiner’s

answer in an inter partes reexamination

appeal, any appellant may once file a

rebuttal brief in triplicate. The rebuttal

brief of the patent owner may be

directed to the examiner’s answer and/

or any respondent brief. The rebuttal

brief of any third party requester may be

directed to the examiner’s answer and/

or the respondent brief of the patent

owner. The rebuttal brief of a third party

requester may not be directed to the

respondent brief of any other third party

requester. No new ground of rejection

can be proposed by a third party

requester. The time for filing a rebuttal

brief may not be extended. The rebuttal

brief must include a certification that a

copy of the rebuttal brief has been

served in its entirety on all other parties

to the reexamination proceeding. The

names and addresses of the parties

served must be indicated.

§ 1.973 Oral hearing in inter partes

reexamination.

(a) An oral hearing in an inter partes

reexamination appeal should be

requested only in those circumstances

in which an appellant or a respondent

considers such a hearing necessary or

desirable for a proper presentation of

the appeal. An appeal decided without

an oral hearing will receive the same

consideration by the Board of Patent

Appeals and Interferences as an appeal

decided after oral hearing.

(b) If an appellant or a respondent

desires an oral hearing, he or she must

file a written request for such hearing

accompanied by the fee set forth in

§ 1.17(d) within two months after the

date of the examiner’s answer. The time

for requesting an oral hearing may not

be extended.

(c) An oral argument may be

presented at oral hearing by, or on

behalf of, the primary examiner if

considered desirable by either the

primary examiner or the Board of Patent

Appeals and Interferences.

(d) If an appellant or a respondent has

requested an oral hearing and has

submitted the fee set forth in § 1.17(d),

a hearing date will be set, and notice

given to all parties to the reexamination

proceeding, as well as the primary

examiner. The notice shall set a nonextendable period within which all

requests for oral hearing shall be

submitted by any other party to the

appeal desiring to participate in the oral

hearing. A hearing will be held as stated

in the notice, and oral argument will be

limited to thirty minutes for each

appellant and respondent who has

requested an oral hearing, and twenty

minutes for the primary examiner

unless otherwise ordered before the

hearing begins. No appellant or

respondent will be permitted to

participate in an oral hearing unless he

or she has requested an oral hearing and

submitted the fee set forth in § 1.17(d).

(e) If no request and fee for oral

hearing have been timely filed by an

appellant or a respondent, the appeal

will be assigned for consideration and

decision on the written record.

§ 1.975 Affidavits or declarations after

appeal in inter partes reexamination.

Affidavits, declarations, or exhibits

submitted after the inter partes

reexamination has been appealed will

not be admitted without a showing of

good and sufficient reasons why they

were not earlier presented.

§ 1.977 Decision by the Board of Patent

Appeals and Interferences; remand to

examiner in inter partes reexamination.

(a) The Board of Patent Appeals and

Interferences, in its decision, may affirm

or reverse each decision of the examiner

on all issues raised on each appealed

claim, or remand the reexamination

proceeding to the examiner for further

consideration. The reversal of the

examiner’s determination not to make a

rejection proposed by the third party

requester constitutes a decision adverse

to the patentability of the claims which

are subject to that proposed rejection

which will be set forth in the decision

of the Board of Patent Appeals and

Interferences as a new ground of

rejection under paragraph (b) of this

section. The affirmance of the rejection

of a claim on any of the grounds

specified constitutes a general

affirmance of the decision of the

examiner on that claim, except as to any

ground specifically reversed.

(b) Should the Board of Patent

Appeals and Interferences have

knowledge of any grounds not raised in

the appeal for rejecting any pending

claim, it may include in the decision a

statement to that effect with its reasons

for so holding, which statement shall

constitute a new ground of rejection of

the claim. A decision which includes a

new ground of rejection shall not be

considered final for purposes of judicial

review. When the Board of Patent

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76785

Appeals and Interferences makes a new

ground of rejection, the patent owner,

within one month from the date of the

decision, must exercise one of the

following two options with respect to

the new ground of rejection to avoid

termination of the appeal proceeding as

to the rejected claim:

(1) The patent owner may submit an

appropriate amendment of the claim so

rejected or a showing of facts relating to

the claim, or both.

(2) The patent owner may file a

request for rehearing of the decision of

the Board of Patent Appeals and

Interferences under § 1.979(a).

(c) Where the patent owner has

responded under paragraph (b)(1) of this

section, any third party requester,

within one month of the date of service

of the patent owner response, may once

file comments on the response. Such

written comments must be limited to

the issues raised by the decision of the

Board of Patent Appeals and

Interferences and the patent owner’s

response. Any third party requester that

had not previously filed an appeal or

cross appeal and is seeking under this

subsection to file comments or a reply

to the comments is subject to the appeal

and brief fees under § 1.17(b) and (c),

respectively, which must accompany

the comments or reply.

(d) Following any response by the

patent owner under paragraph (b)(1) of

this section and any written comments

from a third party requester under

paragraph (c) of this section, the

reexamination proceeding will be

remanded to the examiner. The

statement of the Board of Patent

Appeals and Interferences shall be

binding upon the examiner unless an

amendment or showing of facts not

previously of record be made which, in

the opinion of the examiner, overcomes

the new ground of rejection. The

examiner will consider any response

under paragraph (b)(1) of this section

and any written comments by a third

party requester under paragraph (c) of

this section and issue a determination

that the rejection should be maintained

or has been overcome.

(e) Within one month of the

examiner’s determination pursuant to

paragraph (d) of this section, the patent

owner or any third party requester may

once submit comments in response to

the examiner’s determination. Within

one month of the date of service of

comments in response to the examiner’s

determination, any party may file a

reply to the comments. No third party

requester reply may address the

comments of any other third party

requester reply. Any third party

requester that had not previously filed

an appeal or cross appeal and is seeking

under this subsection to file comments

or a reply to the comments is subject to

the appeal and brief fees under § 1.17(b)

and (c), respectively, which must

accompany the comments or reply.

(f) After submission of any comments

and any reply pursuant to paragraph (e)

of this section, or after time has expired,

the reexamination proceeding will be

returned to the Board of Patent Appeals

and Interferences which shall

reconsider the matter and issue a new

decision. The new decision will

incorporate the earlier decision, except

for those portions specifically

withdrawn.

(g) The time period set forth in

paragraph (b) of this section is subject

to the extension of time provisions of

§ 1.956. The time periods set forth in

paragraphs (c) and (e) of this section

may not be extended.

§ 1.979 Action following decision by the

Board of Patent Appeals and Interferences

or dismissal of appeal in inter partes

reexamination.

(a) Parties to the appeal may file a

request for rehearing of the decision

within one month of the date of:

(1) The original decision of the Board

of Patent Appeals and Interferences

under § 1.977(a),

(2) The original § 1.977(b) decision

under the provisions of § 1.977(b)(2),

(3) The expiration of the time for the

patent owner to take action under

§ 1.977(b)(2), or

(4) The new decision of the Board of

Patent Appeals and Interferences under

§ 1.977(f).

(b) Within one month of the date of

service of any request for rehearing

under paragraph (a) of this section, or

any further request for rehearing under

paragraph (c) of this section, any party

to the appeal may once file comments

in opposition to the request for

rehearing or the further request for

rehearing. The comments in opposition

must be limited to the issues raised in

the request for rehearing or the further

request for rehearing.

(c) If a party to an appeal files a

request for rehearing under paragraph

(a) of this section, or a further request

for rehearing under this section, the

Board of Patent Appeals and

Interferences will issue a decision on

rehearing. This decision is deemed to

incorporate the earlier decision, except

for those portions specifically

withdrawn. If the decision on rehearing

becomes, in effect, a new decision, and

the Board of Patent Appeals and

Interferences so states, then any party to

the appeal may, within one month of

the new decision, file a further request

for rehearing of the new decision under

this subsection.

(d) Any request for rehearing shall

state the points believed to have been

misapprehended or overlooked in

rendering the decision and also state all

other grounds upon which rehearing is

sought.

(e) The patent owner may not appeal

to the U.S. Court of Appeals for the

Federal Circuit under § 1.983 until all

parties’ rights to request rehearing have

been exhausted, at which time the

decision of the Board of Patent Appeals

and Interferences is final and appealable

by the patent owner.

(f) An appeal by a third party

requester is considered terminated by

the dismissal of the third party

requester’s appeal, the failure of the

third party requester to timely request

rehearing under § 1.979(a) or (c), or a

final decision under § 1.979(e). The date

of such termination is the date on which

the appeal is dismissed, the date on

which the time for rehearing expires, or

the decision of the Board of Patent

Appeals and Interferences is final. An

appeal by the patent owner is

considered terminated by the dismissal

of the patent owner’s appeal, the failure

of the patent owner to timely request

rehearing under § 1.979(a) or (c), or the

failure of the patent owner to timely file

an appeal to the U.S. Court of Appeals

for the Federal Circuit under § 1.983.

The date of such termination is the date

on which the appeal is dismissed, the

date on which the time for rehearing

expires, or the date on which the time

for the patent owner’s appeal to the U.S.

Court of Appeals for the Federal Circuit

expires. If an appeal to the U.S. Court

of Appeals for the Federal Circuit has

been filed, the patent owner’s appeal is

considered terminated when the

mandate is received by the Office. Upon

termination of an appeal, if no other

appeal is present, the reexamination

proceeding will be terminated and the

Commissioner will issue a certificate

under § 1.997.

(g) The times for requesting rehearing

under paragraph (a) of this section, for

requesting further rehearing under

paragraph (c) of this section, and for

submitting comments under paragraph

(b) of this section may not be extended.

§ 1.981 Reopening after decision by the

Board of Patent Appeals and Interferences

in inter partes reexamination.

Cases which have been decided by the

Board of Patent Appeals and

Interferences will not be reopened or

reconsidered by the primary examiner

except under the provisions of § 1.977

without the written authority of the

Commissioner, and then only for the

76786 Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations

consideration of matters not already

adjudicated, sufficient cause being

shown.

Patent Owner Appeal to the United

States Court of Appeals for the Federal

Circuit in Inter Partes Reexamination

§ 1.983 Patent owner appeal to the United

States Court of Appeals for the Federal

Circuit in inter partes reexamination.

(a) The patent owner in a

reexamination proceeding who is

dissatisfied with the decision of the

Board of Patent Appeals and

Interferences may, subject to § 1.979(e),

appeal to the U.S. Court of Appeals for

the Federal Circuit. The appellant must

take the following steps in such an

appeal:

(1) In the U. S. Patent and Trademark

Office, file a timely written notice of

appeal directed to the Commissioner in

accordance with §§ 1.302 and 1.304; and

(2) In the Court, file a copy of the

notice of appeal and pay the fee, as

provided for in the rules of the Court.

Concurrent Proceedings Involving Same

Patent in Inter Partes Reexamination

§ 1.985 Notification of prior or concurrent

proceedings in inter partes reexamination.

(a) In any inter partes reexamination

proceeding, the patent owner shall call

the attention of the Office to any prior

or concurrent proceedings in which the

patent is or was involved, including but

not limited to interference, reissue,

reexamination, or litigation and the

results of such proceedings.

(b) Notwithstanding any provision of

the rules, any person at any time may

file a paper in an inter partes

reexamination proceeding notifying the

Office of a prior or concurrent

proceedings in which the same patent is

or was involved, including but not

limited to interference, reissue,

reexamination, or litigation and the

results of such proceedings. Such paper

must be limited to merely providing

notice of the other proceeding without

discussion of issues of the current inter

partes reexamination proceeding. Any

paper not so limited will be returned to

the sender.

§ 1.987 Suspension of inter partes

reexamination proceeding due to litigation.

If a patent in the process of inter

partes reexamination is or becomes

involved in litigation, the Commissioner

shall determine whether or not to

suspend the inter partes reexamination

proceeding.

§ 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 of a single reexamination

certificate under § 1.997.

(b) An inter partes reexamination

proceeding filed under § 1.913 which is

merged with an ex parte reexamination

proceeding filed under § 1.510 will

result in the merged proceeding being

governed by §§ 1.902 through 1.997,

except that the rights of any third party

requester of the ex parte reexamination

shall be governed by §§ 1.510 through

1.560.

§ 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,

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 terminated

by the grant of the reissued patent.

§ 1.993 Suspension of concurrent

interference and inter partes reexamination

proceeding.

If a patent in the process of inter

partes reexamination is or becomes

involved in an interference, the

Commissioner may suspend the inter

partes reexamination or the

interference. The Commissioner will not

consider a request to suspend an

interference unless a motion under

§ 1.635 to suspend the interference has

been presented to, and denied by, an

administrative patent judge and the

request is filed within ten (10) days of

a decision by an administrative patent

judge denying the motion for

suspension or such other time as the

administrative patent judge may set.

§ 1.995 Third party requester’s

participation rights preserved in merged

proceeding.

When a third party requester is

involved in one or more proceedings,

including an inter partes reexamination

proceeding, the merger of such

proceedings will be accomplished so as

to preserve the third party requester’s

right to participate to the extent

specifically provided for in these

regulations. In merged proceedings

involving different requesters, any paper

filed by one party in the merged

proceeding shall be served on all other

parties of the merged proceeding.

Federal Register / Vol. 65, No. 236 / Thursday, December 7, 2000 / Rules and Regulations 76787

Reexamination Certificate in Inter Partes

Reexamination

§ 1.997 Issuance of inter partes

reexamination certificate.

(a) Upon the conclusion of an inter

partes reexamination proceeding, the

Commissioner will issue a 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 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.

(c) The certificate will be sent to the

patent owner at the address as provided

for in § 1.33(c). A copy of the certificate

will also be sent to the third party

requester of the inter partes

reexamination proceeding.

(d) If a certificate has been issued

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.

(e) If the inter partes reexamination

proceeding is terminated by the grant of

a reissued patent as provided in § 1.991,

the reissued patent will constitute the

reexamination certificate required by

this section and 35 U.S.C. 316.

(f) A notice of the issuance of each

certificate under this section will be

published in the Official Gazette.

Dated: November 21, 2000.

Q. Todd Dickinson,

Under Secretary of Commerce for Intellectual

Property and Director of the United States

Patent and Trademark Office.

[FR Doc. 00–30425 Filed 12–6–00; 8:45 am]

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