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

70°14′27.546″ W; thence to the point of designating the correspondence address III: Making miscellaneous clarifying beginning.(DATUM:NAD 83). All for the patent as the correct address for changes as to the terminology and vessels are restricted from entering this all communications for patent owners in applicability of the reexamination rules, area. an ex parte reexamination or an inter and correcting inadvertent errors in the (b) Effective Date. This section is partes reexamination, and simplifying text of certain reexamination rules. effective 8 a.m. April 2, 2007 until 11:59 the filing of reexamination papers by I. Reexamination Correspondence p.m. on April 15, 2007. providing for the use of a single ‘‘mail (c) Definitions. (1) Designated stop’’ address for the filing of Subpart 1—The Patent Owner’s representative means a Coast Guard substantially all ex parte reexamination Address of Record: Section 1.33(c) has Patrol Commander, including a Coast papers (such is already the case for inter been revised to designate the Guard coxswain, petty officer, or other partes reexamination papers). The correspondence address for the patent to officer operating a Coast Guard vessel Office is revising the rules to prohibit be reexamined, or being reexamined, as and a Federal, State, and local officer supplemental patent owner responses to the correct address for all notices, designated by or assisting the Captain of an Office action in an inter partes official letters, and other the Port (COTP). reexamination proceeding without a communications for patent owners in (2) [Reserved] showing of sufficient cause. Finally, the reexamination proceedings. Prior to this (d) Regulations. (1) In accordance Office is making miscellaneous revision to § 1.33(c), all notices, official with the general regulations in 165.23 of clarifying changes as to terminology and letters, and other communications for this part, entry into or movement within applicability of the reexamination rules. patent owners in a reexamination this zone by any person or vessel is The Office is not implementing its proceeding had been directed to the prohibited unless authorized by the proposal (that was set forth in the attorney or agent of record in the patent COTP, Northern New England or the proposed rule making) to newly provide file at the address listed on the register COTP’s designated representative. for a patent owner reply to a request for of patent attorneys and agents (2) The safety zone is closed to all reexamination, prior to the Office’s maintained by the Office of Enrollment vessel traffic, except as may be decision on the request. and Discipline (OED) pursuant to § 11.5 and § 11.11 (hereinafter, the ‘‘attorney or permitted by the COTP or the COTP’s DATES: Effective Date: May 16, 2007. designated representative. Applicability Date: The changes in agent of record register address’’). (3) Vessel operators desiring to enter this final rule apply to any The correspondence address for any or operate within the safety zone may reexamination proceeding (ex parte or pending reexamination proceeding not having the same correspondence contact the COTP or the COTP’s inter partes) which is pending before the address as that of the patent is, by way designated representative at telephone Office as of May 16, 2007 and to any of this revision to § 1.33(c), number 207–767–0303 or on VHF reexamination proceeding which is filed automatically changed to that of the Channel 13 (156.7 MHz) or VHF after that date. patent file—as of the effective date of channel 16 (156.8 MHz) to seek FOR FURTHER INFORMATION CONTACT: By permission to do so. If permission is this Notice. For any such proceeding, it telephone—Kenneth M. Schor, Senior is strongly encouraged that the patent granted, all persons and vessels must Legal Advisor at (571) 272–7710; by comply with the instructions given to owner affirmatively file a Notification of mail addressed to U.S. Patent and Change of Correspondence Address in them by the COTP or the COTP’s Trademark Office, Mail Stop designated representative. the reexamination proceeding and/or Comments—Patents, Commissioner for the patent to conform the address of the Dated: April 2, 2007. Patents, P.O. Box 1450, Alexandria, VA proceeding with that of the patent and S.P. Garrity, 22313–1450, marked to the attention of to clarify the record as to which address Captain, U.S. Coast Guard, Captain of the Kenneth M. Schor; by facsimile should be used for correspondence. Port, Northern New England. transmission to (571) 273–7710 marked While the correspondence address [FR Doc. E7–7187 Filed 4–13–07; 8:45 am] to the attention of Kenneth M. Schor; or change for the reexamination BILLING CODE 4910–15–P by electronic mail message (e-mail) over proceeding is automatically effected (by the Internet addressed to rule) even if the patent owner [email protected]. notification is not filed, such a patent DEPARTMENT OF COMMERCE SUPPLEMENTARY INFORMATION: The Office owner notification clarifies the record, is revising the rules of practice relating and addresses the possibility that, Patent and Trademark Office to ex parte and inter partes absent such a patent owner notification, reexamination as follows: correspondence may inadvertently be 37 CFR Parts 1 and 41 I: Designating the correspondence mailed to an incorrect address, causing [Docket No.: PTO–P–2005–0016] address for the patent as the correct a delay in the prosecution. address for all notices, official letters, This revision to § 1.33(c) is based on RIN 0651–AB77 and other communications for patent the following: (1) Prior to the revision, owners in an ex parte reexamination or the Office had received reexamination Revisions and Technical Corrections an inter partes reexamination. Also, filings where the request had been Affecting Requirements for Ex Parte simplifying the filing of reexamination served on the patent owner at the and Inter Partes Reexamination papers by providing for the use of ‘‘Mail correspondence address under § 1.33(a) AGENCY: United States Patent and Stop Ex Parte Reexam’’ for the filing of that was the correct address for the Trademark Office, Department of all ex parte reexamination papers (not patent, rather than at the attorney or Commerce. just ex parte reexamination requests), agent of record register address that was ACTION: Final rule. other than certain correspondence to the the previously prescribed (prior to the Office of the General Counsel. present rule revision) correspondence SUMMARY: The United States Patent and II: Prohibiting supplemental patent address in § 1.33(c) for use in Trademark Office (Office) is revising the owner responses to an Office action in reexamination. This occurred because rules of practice relating to ex parte and an inter partes reexamination without a the § 1.33(a) address was, and is, the inter partes reexamination. The Office is showing of sufficient cause. address used for correspondence during

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the pendency of applications, as well as different states, mailing a notice related be used for the original request papers post-grant correspondence in patents to a reexamination proceeding for the for ex parte reexamination. The new maturing from such applications. (2) patent to the OED register address of an mail stop for inter partes reexamination, Further, even if a potential attorney or agent of record in the on the other hand, was to be used for reexamination requester realized that patented file, even the attorney or agent both original request papers and all the attorney or agent of record register most recently made of record, is likely subsequent correspondence filed in the address was the proper patent owner to result in correspondence not being Office (other than correspondence to the address to use, patent practitioners received by the appropriate party (prior Office of the General Counsel pursuant occasionally move from one firm to to the present rule change, the notice to § 1.1(a)(3) and § 1.302(c)), because the another, and a potential reexamination would have been mailed to the first- Central Reexamination Unit (CRU) was requester was then faced with two (or listed attorney or agent of record). (and still is) the central receiving area more) § 1.33(c) addresses for the Since the correspondence address of for all inter partes reexamination practitioners of record; the requester the patent file is used for maintenance proceeding papers. The CRU has now then had to decide which practitioner to fee correspondence where a fee address also become the central receiving area serve. (3) Finally, the ‘‘attorney or agent is not specified, patent owners already for all ex parte reexamination of record register address’’ might not be have an incentive to keep the proceeding papers. Accordingly, the kept up-to-date. In this regard, the OED correspondence address for a patent file filing of ex parte reexamination papers regularly has mail returned because the up-to-date. Given the choice of relying is now simplified by revising § 1.1(c) to register of patent attorneys and agents on either the correspondence address require the use of ‘‘Mail Stop Ex Parte maintained pursuant to § 11.5 and for the patent or the address for the Reexam’’ for the filing of all ex parte § 11.11 is not up-to-date. On the other attorney/agent of record per the register reexamination papers (original request hand, a practitioner or patent owner of patent attorneys and agents (as was papers and all subsequent was, and is, likely to be inclined to keep the case prior to the present revision of correspondence), other than the § 1.33(a) address up-to-date for § 1.33(c)), it is more reasonable to rely correspondence to the Office of the prompt receipt of notices regarding the on the correspondence address for the General Counsel pursuant to § 1.1(a)(3) patent. Thus, the correspondence patent. The patentee is responsible for and § 1.302(c). Correspondence relating address for the patent provides a better updating the correspondence address to all reexamination proceedings is best or more reliable option for the patent for the patent, and if the patentee does handled at one central location where owner’s address than does the address not, then the patentee appropriately Office personnel have specific expertise in the register of patent attorneys and bears the risk of a terminated in reexamination because of the unique agents maintained by OED pursuant to reexamination prosecution due to the nature of reexamination proceedings. § 11.5 and § 11.11 (which was the failure to respond to an Office action That central location is the CRU. reexamination address for the patent sent to an obsolete address. Further, use of the correspondence address for the II. To Prohibit Supplemental Patent owner called for by § 1.33(c) prior to the Owner Responses to an Office Action present revision of § 1.33(c)). patent provides both a potential reexamination requester and the Office Without a Showing of Sufficient Cause As was pointed out in the notice of with one simple address to work with, The Office is amending § 1.945 to proposed rule making (Revisions and and the requester and the Office should provide that a patent owner Technical Corrections Affecting not be confused in the situations where supplemental response (which can be Requirements for Ex Parte and Inter attorneys move from firm to firm (as that filed to address a third-party requester’s Partes Reexamination, 71 FR 16072 has become more common). The comments on patent owner’s initial (March 30, 2006) 1305 Off. Gaz. Pat. correspondence address for the patent is response to an Office action) will be Office 132 (April 25, 2006)), a change to available in public PAIR (Patent entered only where the patent owner the correspondence address may be Application Information Retrieval) at has made a showing of sufficient cause filed with the Office during the the Office’s Web site www.uspto.gov, so as to why the supplemental response enforceable life of the patent, and the that a requester need only click on the should be entered. correspondence address will be used in address button for the patent, and he/ Pursuant to § 1.937(b), an inter partes any correspondence relating to she will know what address to use. reexamination proceeding is maintenance fees unless a separate fee Subpart 2—Reexamination ‘‘conducted in accordance with §§ 1.104 address has been specified. See correspondence addressed to the Office: through 1.116, the sections governing § 1.33(d). A review of randomly selected Section 1.1(c) is revised to prescribe the the application examination process recent listings of inter partes use of ‘‘Mail Stop Ex Parte Reexam’’ for * * * except as otherwise provided reexamination filings reflected that all the filing of all ex parte reexamination ***’’ Thus, a patent owner’s response had an attorney or agent of record for papers (not just ex parte reexamination to an Office action is governed by the related patents. There were an requests), other than correspondence to § 1.111. Prior to the revision of average of 18.6 attorneys or agents of the Office of the General Counsel § 1.111(a)(2) implemented via the final record for the patents, and for those pursuant to § 1.1(a)(3) and § 1.302(c). rule, Changes To Support attorneys or agents, an average of 3.8 In the final rule Changes to Implementation of the United States addresses (according to the register of Implement the 2002 Inter Partes Patent and Trademark Office 21st patent attorneys and agents maintained Reexamination and Other Technical Century Strategic Plan, 69 FR 56482 pursuant to § 11.5 and § 11.11). Amendments to the Patent Statute, 68 (Sept. 21, 2004), 1287 Off. Gaz. Pat. Although for half of the patents, all of FR 70996 (Dec. 22, 2003), 1278 Off. Gaz. Office 67 (Oct. 12, 2004) (final rule), a the attorneys or agents had the same Pat. Office 218 (Jan. 20, 2004), § 1.1(c) patent owner could file an unlimited address, one patent had 77 attorneys was amended to provide separate mail number of supplemental responses to an and agents of record, and the register stops for ex parte reexamination Office action for an inter partes reflects 18 different addresses for these proceedings and inter partes reexamination proceeding, thereby practitioners. In such a patent with reexamination proceedings. As per that delaying prosecution. The changes to many different attorneys and agents of rule making, the mail stop for ex parte § 1.111(a)(2) made in the Strategic Plan record, and many of the practitioners in reexamination proceedings could only final rule, in effect, addressed this

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undesirable consequence of the rules in It is to be noted that any requester FR 56482 (Sept. 21, 2004), 1287 Off. reexamination by providing that a reply comments filed after a patent owner Gaz. Pat. Office 67 (Oct. 12, 2004) (final (or response, in reexamination) which is response to an Office action must be rule) (hereinafter the Strategic Plan supplemental to a § 1.111(b) compliant filed ‘‘within 30 days after the date of Final Rule). The Office then re- reply will not be entered as a matter of service of the patent owner’s response.’’ presented those proposals in Revisions right (with the exception of a 35 U.S.C. 314(b)(2). Thus, where the and Technical Corrections Affecting supplemental reply filed while action patent owner files a supplemental Requirements for Ex Parte and Inter by the Office is suspended under response to an Office action, the Partes Reexamination, 71 FR 16072 § 1.103(a) or (c)). requester would be well advised to file (March 30, 2006) 1305 Off. Gaz. Pat. Section 1.111(a)(2)(i), as implemented any comments deemed appropriate Office 132 (April 25, 2006) (proposed in the Strategic Plan final rule, provides within 30 days after the date of service rule) after further consideration and in that ‘‘the Office may enter’’ a of the patent owner’s supplemental view of the changes made by the final supplemental response to an Office response to preserve requester’s rule Rules of Practice Before the Board action under certain conditions. comment right, in the event the Office of Patent Appeals and Interferences, 69 Whether or not the supplemental exercises its discretion to enter the FR 49960 (Aug. 12, 2004), 1286 Off. Gaz. response should be entered, based on supplemental response. (The requester’s Pat. Office 21 (Sept. 7, 2004) (final rule) the individual circumstances for comments may address whether the (hereinafter, the Appeals final rule). The submission of a supplemental response patent owner showing is adequate, in essential substance of the changes set is a question to be decided by the Office. addition to addressing the merits of the forth in sub-parts 1 and 2, remains as In order to fully inform both the Office supplemental response.) If the patent originally proposed in the Strategic Plan and the requester (so that the requester owner’s supplemental response is not Proposed Rule. can provide rebuttal in its comments) as entered by the Office, then both the The four types (sub-parts) of revisions to why patent owner deems a supplemental response, and any are explained as follows: Sub-part 1. The rules are amended to supplemental response to be worthy of comments following that supplemental clarify that ‘‘conclusion’’ of a entry, § 1.945 has been revised to response, will either be returned to reexamination ‘‘proceeding’’ takes place require a patent owner showing of parties or discarded as the Office when the reexamination certificate is sufficient cause why entry should be chooses in its sole discretion. If the issued and published, while permitted to accompany any supplemental response and/or ‘‘termination’’ of the ‘‘prosecution’’ of supplemental response by the patent comments were scanned into the the proceeding takes place when the owner. The showing of sufficient cause electronic Image File Wrapper (IFW) for patent owner fails to file a timely must provide: (1) A detailed explanation the reexamination proceeding, and thus, the papers cannot be physically response in an ex parte or inter partes of how the criteria of § 1.111(a)(2)(i) is reexamination proceeding, or a Notice satisfied; (2) an explanation of why the returned or discarded, then the supplemental response and/or of Intent to Issue Reexamination supplemental response was not Certificate (NIRC) is issued, whichever presented together with the original comments entries will be marked ‘‘closed’’ and ‘‘non-public,’’ and they occurs first. This distinction is response to the Office action; and (3) a will not constitute part of the record of important, because a reexamination compelling reason to enter the the reexamination proceeding. Such prosecution that is terminated may be supplemental response. It is to be noted papers will not display in the Office’s reopened at the option of the Director that in some instances, where there is a image file wrapper that is made where appropriate. For example, a clear basis for the supplemental available to the public, patent owners, rejection that was withdrawn during the response, this three-prong showing may and representatives of patent owners, proceeding may be reinstated after the be easily satisfied. Thus, for example, i.e., they will not display in PAIR prosecution has terminated, where the the patent claim text may have been (Patent Application Information propriety of that rejection has been incorrectly reproduced, where a patent Retrieval) at the Office’s Web site reconsidered. In contrast, a claim is amended in the original http://www.uspto.gov. reexamination proceeding that has been response. In such an instance, the patent concluded is not subject to being owner need only point to the III. Clarifying Changes as to reopened. After the reexamination § 1.111(a)(2)(i)(E) provision for Reexamination Rule Terminology and proceeding has been concluded, the correction of informalities (e.g., Applicability, and Correction of Office is not permitted to reinstate the typographical errors), and state that the Inadvertent Errors in the Text of identical ground of rejection in a incorrect reproduction of the claim was Certain Reexamination Rules subsequent reexamination proceeding, not noted in the preparation of the The Office is making miscellaneous when the same question of patentability original response. The compelling clarifying changes as to the terminology raised by the prior art in the concluded reason to enter the supplemental and applicability of the reexamination proceeding is the basis of the rejection. response is implicit in such a statement, rules. The rule changes of sub-parts 1 See section 13105, part (a), of the Patent as the record for the proceeding and 2 below were originally proposed in and Trademark Office Authorization Act certainly must be corrected as to the the Changes To Support of 2002, enacted in Public Law 107–273, incorrect reproduction of the claim. Implementation of the United States 21st Century Department of Justice This revision permits the entry of a Patent and Trademark Office 21st Appropriations Authorization Act, 116 supplemental response to an Office Century Strategic Plan, 68 FR 53816 Stat. 1758 (2002). action where there is a valid reason for (Sept. 12, 2003), 1275 Off. Gaz. Pat. This distinction between terminating it, and a showing to that effect is made Office 23 (Oct. 7, 2003) (proposed rule) the prosecution of the reexamination by the patent owner. At the same time, (hereinafter the Strategic Plan Proposed proceeding, and the conclusion of the it provides both the Office and the Rule). The Office did not proceed with reexamination proceeding, was requester with notice of patent owner’s those changes in the final rule Changes highlighted by the Federal Circuit reasons for desiring entry, and it permits To Support Implementation of the decision of In re Bass, 314 F.3d 575, the requester to rebut patent owner’s United States Patent and Trademark 577, 65 USPQ2d 1156, 1157 (Fed. Cir. stated position. Office 21st Century Strategic Plan, 69 2003), wherein the court indicated that

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Until a matter has been completed, inter partes reexamination. Thus, after published. It is at that point in time that however, the PTO may reconsider an earlier the appeal proceeding in the the Office no longer has jurisdiction action. See In re Borkowski, 505 F.2d 713, reexamination is terminated (which over the patent that has been 718, 184 USPQ 29, 32–33 (CCPA 1974). A terminates the prosecution in the reexamined. Accordingly, the titles of reexamination is complete upon the reexamination), the reexamination §§ 1.570 and 1.997, as well as statutorily mandated issuance of a reexamination certificate, 35 U.S.C. 307(a); proceeding is concluded by the issuance paragraphs (b) and (d), are now revised the NIRC merely notifies the applicant of the and publication of the reexamination to track the language of 35 U.S.C. 307 PTO’s intent to issue a certificate. A NIRC certificate. and 35 U.S.C. 316, and refer to both does not wrest jurisdiction from the PTO It is further observed that in the issuance and publication, to thereby precluding further review of the matter. Appeals final rule, § 1.116(c) states that make it clear in the rules when the Each of the Notice of Intent to Issue ‘‘[t]he admission of, or refusal to admit, reexamination proceeding is concluded. Reexamination Certificate cover sheet any amendment after a final rejection, a The other reexamination rules forms (ex parte reexamination Form final action, an action closing containing language referring to the prosecution, or any related proceedings PTOL 469 and inter partes issuance of the reexamination certificate will not operate to relieve the * * * reexamination Form PTOL 2068) are likewise revised. These changes are reexamination prosecution from specifically states (in its opening directed to §§ 1.502, 1.530, 1.550, termination under § 1.550(d) or sentence) that ‘‘[p]rosecution on the 1.565(c), 1.570, 1.902, 1.953, 1.957, § 1.957(b) * * *.’’ The use of merits is (or remains) closed in this 1.979, and 1.997. ‘‘termination of the prosecution’’ is Sub-part 3. In § 1.137, the * * * reexamination proceeding. This consistent with the presentation in introductory text of paragraphs (a) and proceeding is subject to reopening at the § 1.116(c) in the Appeals final rule. As (b) previously stated ‘‘a reexamination initiative of the Office, or upon a further indication in the Appeals final proceeding terminated under petition.’’ This statement in both forms rule, § 1.197(a) discusses the passing of §§ 1.550(d) or 1.957(b) or (c).’’ makes the point that the NIRC jurisdiction over an application or [Emphasis added]. As pointed out in the terminates the prosecution in the patent under ex parte reexamination discussion of the first sub-part, when reexamination proceeding (if proceeding to the examiner after a the patent owner fails to timely respond, prosecution has not already been decision by the Board of Patent Appeals it is actually the prosecution of the terminated, e.g., via failure to respond), and Interferences, and § 1.197(b) then reexamination that is terminated under but does not (terminate or) conclude the states that ‘‘[p]roceedings on an § 1.550(d) for ex parte reexamination, or reexamination proceeding itself. Rather, application are considered terminated is terminated under § 1.957(b) for inter it is the issuance and publication of the by the dismissal of an appeal or the partes reexamination. For the § 1.957(c) reexamination certificate that concludes failure to timely file an appeal to the scenario, however, the prosecution of the reexamination proceeding. The rules court or a civil action (§ 1.304) except the inter partes reexamination are revised accordingly. ***.’’ Thus, the termination (of the proceeding is not terminated when the Definitional Consideration: In the appeal) does not signify the completion patent owner fails to timely respond Strategic Plan Proposed Rule, the of an application or reexamination pursuant to § 1.957(c). Rather, an Office terminology used was that a patent proceeding. Rather, the application then action is issued to permit the third party owner’s failure to file a timely response continues until patenting or requester to challenge the claims found in a reexamination proceeding (and the abandonment, and the reexamination patentable (as to any matter where the issuance of the NIRC) would continues until issuance (and requester has preserved the right of such ‘‘conclude’’ the prosecution of the publication) of the reexamination a challenge), and the prosecution is reexamination proceeding, but would certificate; at that point these ‘‘limited to the claims found patentable not terminate the reexamination proceedings are concluded. at the time of the failure to respond, and proceeding, and the issuance and The above changes are directed to to any claims added thereafter which do publication of a reexamination §§ 1.502, 1.530(l)(2), 1.550, 1.565(d), not expand the scope of the claims certificate would ‘‘terminate’’ the 1.570, 1.902, 1.953, 1.957, 1.958, 1.979, which were found patentable at that reexamination proceeding. This usage of 1.991, 1.997, and 41.4. time.’’ Section 1.957(c). Accordingly, ‘‘conclude’’ and ‘‘terminate’’ has been Sub-part 2. The reexamination rules the introductory text of § 1.137(a), and reconsidered, however, and the usage of are revised to state that the that of § 1.137(b), is now revised to the terms has been reversed to be reexamination certificate is ‘‘issued and provide for the situation where the consistent with the way the Office published.’’ Prior to this revision, the prosecution is ‘‘limited’’ pursuant to defines ‘‘termination,’’ as can be rules referred to the issuance of the § 1.957(c) (and the prosecution of the observed in the recent Appeals final reexamination certificate, but failed to reexamination is not ‘‘terminated’’). rule (supra.). It is to be noted that the refer to the publication of the certificate. Also, § 1.137(e) is revised consistently patent statute, in 35 U.S.C. 307(a), states Pursuant to 35 U.S.C. 307(a), ‘‘when with § 1.137(a) and § 1.137(b). Further, for ex parte reexamination: ‘‘In a the time for appeal has expired or any conforming changes are made to §§ 1.8 reexamination proceeding under this appeal proceeding has terminated, the and 41.4, which are revised to contain chapter, when the time for appeal has Director will issue and publish a language that tracks that of §§ 1.137(a) expired or any appeal proceeding has certificate * * *’’ (emphasis added) for and 1.137(b). terminated, the Director will issue and an ex parte reexamination proceeding. It is noted that § 1.957(c) does, in fact, publish a certificate canceling any claim Likewise, for an inter partes result in the ‘‘terminating’’ of of the patent finally determined to be reexamination, 35 U.S.C. 316(a) states reexamination prosecution as to the unpatentable, confirming any claim of that ‘‘when the time for appeal has non-patentable claims (under § 1.957(b), the patent determined to be patentable, expired or any appeal proceeding has on the other hand, prosecution is and incorporating in the patent any terminated, the Director shall issue and terminated in toto). It would be proposed amended or new claim publish a certificate’’ (emphasis added). confusing, however, to refer to a determined to be patentable.’’ Any reexamination proceeding is termination of reexamination (Emphasis added). 35 U.S.C. 316 concluded when the reexamination prosecution in the § 1.957(c) scenario, contains an analogous statement for certificate has been issued and since the limited termination as to the

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non-patentable claims could easily be Assignment Practice 69 FR 29865 (May as the correct address for all notices, confused with the termination of the 26, 2004) (final rule). official letters, and other entirety of the prosecution of § 1.957(b). In addition, in the final rule communications for patent owners in an Accordingly, the § 1.957(c) ‘‘limited’’ Clarification of Filing Date ex parte reexamination or an inter scope of prosecution to the scope of the Requirements for Ex Parte and Inter partes reexamination. Also, to simplify claims found patentable is the language Partes Reexamination Proceedings, 71 the filing of reexamination papers by deemed better suited for use in the FR 44219 (Aug. 4, 2006) (final rule), the providing for the use of ‘‘Mail Stop Ex rules. following errors appear. At page 44222, parte Reexam’’ for the filing of all ex Sub-part 4. Section 1.8(b) is revised to it is stated: parte reexamination papers (not just ex explicitly provide a remedy for an inter ‘‘If after receiving a ‘Notice of Failure to parte reexamination requests), other partes reexamination proceeding where Comply with * * * Reexamination Request than certain correspondence to the correspondence was mailed or Filing Requirements,’ the requester does not Office of the General Counsel. transmitted in accordance with remedy the defects in the request papers that Proposal IV: To make miscellaneous paragraph § 1.8(a) by a patent owner, are pointed out, then the request papers will clarifying changes as to the terminology and pursuant to § 1.957(c), the not be given a filing date, and a control and applicability of the reexamination reexamination prosecution is not number will not be assigned * * *. If any rules, and to correct inadvertent errors identified non-compliant item has not been in the text of certain reexamination terminated, but is rather ‘‘limited to the corrected, then a filing date (and a control claims found patentable at the time of rules. number) will not be assigned to the request After reviewing the comments, this the failure to respond, and to any claims papers.’’ [Emphasis added] added thereafter which do not expand notice of final rule making: (a) Adopts The Office will, however, be assigning the scope of the claims which were Proposals II—IV of the Revisions and control numbers and receipt dates to found patentable at that time.’’ Pursuant Technical Corrections proposed rule for requests for reexamination that are not to the previous version of § 1.8(b), a revision of the rules of practice, while compliant with the reexamination filing remedy was provided for having making only stylistic and non- date requirements. Thus, the text should substantive changes to the relevant correspondence considered to be timely read, and is hereby corrected to read: rules, which changes are discussed filed, where correspondence was mailed below, and (b) does not adopt Proposal or transmitted in accordance with ‘‘If after receiving a ‘Notice of Failure to I of the Revisions and Technical paragraph § 1.8(a) but not timely Comply with * * * Reexamination Request Corrections proposed rule. received in the Office, and ‘‘the Filing Requirements,’ the requester does not remedy the defects in the request papers that The comments taking issue with the application [was] held to be abandoned are pointed out, then the request papers will proposals, and the Office’s responses to or the proceeding is dismissed, not be given a filing date. The simplest case those comments, now follow. Comments terminated, or decided with prejudice.’’ * * *. If any identified non-compliant item generally in support of a change that has [Emphasis added.] It could have has not been corrected, then a filing date will been adopted are only discussed in appeared that § 1.8(b) did not apply to not be assigned to the request papers.’’ some instances. the § 1.957(c) scenario where Comments Received: The Office I. Comments as to Proposal I of the prosecution is ‘‘limited’’ rather than published a notice proposing the Revisions and Technical Corrections ‘‘terminated.’’ Therefore, § 1.8(b) is changes to ex parte and inter partes Proposed Rule revised to explicitly apply the § 1.8(b) reexamination practice for comment. remedy in the § 1.957(c) scenario as See Revisions and Technical Proposal I, as set forth in the well. Corrections Affecting Requirements for Revisions and Technical Corrections In addition, the certificate of mailing Ex Parte and Inter Partes proposed rule, was to newly provide for and transmission is available to a third Reexamination, 71 FR 16072 (March 30, a patent owner reply to a request for party requester filing papers in an inter 2006) 1305 Off. Gaz. Pat. Office 132 reexamination, prior to the Office’s partes reexamination. See MPEP 2624 (April 25, 2006) (hereinafter, the decision on the request. Comments and 2666.05. Just as a § 1.8(b) remedy is ‘‘Revisions and Technical Corrections against implementing the proposal in (and was) provided for the patent owner proposed rule’’). In response to the any form, were advanced by a major in the § 1.957(b) and § 1.957(c) Revisions and Technical Corrections intellectual property organization and scenarios, § 1.8(b) is now revised to proposed rule, the Office received four one of the two corporations that explicitly provide a remedy for the sets of written comments—one from an commented on the proposal. One requester in the § 1.957(a) scenario. intellectual property organization, two comment, which was advanced by the Sub-part 5. The final rule Rules of from corporations, and one from a law other corporation that commented, was Practice Before the Board of Patent firm. There were no comments received in favor of implementing the proposal Appeals and Interferences 69 FR 49960 from individual patent practitioners or even more liberally in favor of the (Aug. 12, 2004), 1286 Off. Gaz. Pat. others. patent owner than was proposed. Office 21 (Sept. 7, 2004) (final rule) The following four proposals were set 1. The corporate comment in favor of revised the reexamination appeal rules forth in the Revisions and Technical implementation of Proposal I: This to remove and reserve §§ 1.961 to 1.977. Corrections proposed rule: comment states that commenter believes In addition, §§ 1.959, 1.979, 1.993 were Proposal I: To newly provide for a this proposed rule change allows for revised and new §§ 41.60 through 41.81 patent owner reply to a request for an greater input from involved parties were added. Revisions of some of the ex parte reexamination or an inter before an Examiner determines whether reexamination rules referring to these partes reexamination prior to the reexamination should be declared, and sections were inadvertently not made, examiner’s decision on the request. that the greater input would further the and have now been made via this Proposal II: To prohibit supplemental goal of a fair and efficient, well- Notice. Further, §§ 1.510(f) and 1.915(c) patent owner responses to an Office informed reexamination. The comment are revised to change § 1.34(a) to § 1.34, action in an inter partes reexamination further states that the proposed rule to update the two sections to conform without a showing of cause. change would allow patentees to inform with the revision of § 1.34 made in final Proposal III: To designate the the Patent Office of facts that may bear rule Revision of Power of Attorney and correspondence address for the patent upon the decision on the reexamination

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

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The commenter that favored supplemental patent owner response to Office. Thus, if the patent owner simply implementing Proposal I suggested an Office action (which can be filed to was not aware of an argument, or even implementing the proposal more address a third party requester’s rebuttal art, that the requester submitted liberally in favor of the patent owner comments on patent owner’s initial in commenting on the Office action and than was proposed by the Office. Such response to an Office action) without an patent owner’s response, a points are, however, moot, as the adequate showing of sufficient cause for supplemental response will not be proposal is not being adopted. The entry. This would be implemented by entered for the purpose of addressing following is also added with respect to revising § 1.945. Three comments the argument, or rebuttal art. The the suggestions made. As to the addressed this proposal. purpose of the response is to respond to assertion that the discarding/returning 1. The law firm comment expresses a the Office action, not to reply to the of a non-compliant patent owner reply belief that the proposed revision to requester or to reshape the patent without a chance for re-submission is § 1.945 would achieve the Office’s owner’s response after obtaining unlike other Office rules that allow a purpose of (1) providing assistance to requester’s input. Likewise, if the submission to be corrected if not in the Office in exercising its discretion to purpose of the supplemental response is proper form, in this instance there is a enter supplemental replies pursuant to merely to reconfigure claims without three-month statutory period running § 1.111(a)(2) in inter partes making a material change to the against the Office to decide the request. reexamination proceedings, and (2) substance, or to add some claims for A reply correction cycle would make it discouraging patent owners from filing additional scope of protection, such unduly burdensome for the Office to superfluous supplemental replies that would not provide a compelling reason. comply with the three-month statutory delay the proceedings. The commenter, 2. The intellectual property mandate. As to the various options as to however, raises certain concerns as to organization comment supports liberalizing the 50-page limit for the the proposal. implementation of Proposal II. reply suggested by commenter, this too Commenter correctly points out that, Commenter, however, requests would impact on the Office’s ability to pursuant to the proposal, the showing of clarification as follows: ‘‘If a patent comply with the three-month statutory sufficient cause would be required to owner files a supplemental response to mandate. provide: (1) A detailed explanation of a PTO action in an inter partes As to the suggestion for a patent how the criteria of § 1.111(a)(2)(i) is reexamination proceeding, we owner reply to a Director-ordered satisfied; (2) an explanation of why the understand that it must be accompanied reexamination, the following is supplemental response could not have by a showing of sufficient cause. We observed: After reexamination is been presented together with the further understand that the filing of that ordered at the initiative of the USPTO original response to the Office action; supplemental response, whether or not Director, the patent owner does in fact and (3) a compelling reason to enter the accompanied by an appropriate showing have the right to reply via a patent supplemental response. The commenter and whether or not the PTO ultimately owner’s statement under § 1.530. This then asserts that an explanation of why enters the supplemental response, will right of ‘‘reply’’ takes place before the the supplemental response ‘‘could not’’ trigger an opportunity for the third party proceeding enters into the examination have been presented together with the to file written comments that may stage, and is essentially what the original response is not workable. The address both the supplemental response commenter is requesting. As to a commenter suggests use of ‘‘was not’’ in and any showing of sufficient cause. notification to patent owner prior to place of ‘‘could not’’ to address the Please confirm whether our reexamination being ordered at the concern. This point is well taken and is understanding is correct.’’ initiative of the USPTO Director, which adopted. Once the patent owner In response, the following is the commenter also refers to, there is no explains why the supplemental provided. It is mandated by statute that official proceeding at that point in response ‘‘was not’’ presented together any requester comments filed after a which to notify the patent owner of the with the original response, the Office patent owner response to an Office intent to initiate a reexamination. Also, can evaluate the reason in terms of the action must be filed ‘‘within 30 days if such a notice of intent to initiate a equities it provides. Thus, if the patent after the date of service of the patent reexamination were issued as suggested owner was reasonably not aware of a owner’s response.’’ 35 U.S.C. 314(b)(2). by the commenter, that would be certain fact or circumstance that Thus, where the patent owner files a tantamount to ordering reexamination generated patent owner’s basis for the supplemental response to an Office since a substantial new question of supplemental response, that will be a action, the requester would be well patentability would be needed in each factor to be balanced against the delay advised to file any comments deemed case. The effect would be the same as in the proceeding and additional appropriate (to address the merits and/ initiating reexamination followed by a resources to be expended by the or showing of sufficient cause) within patent owner’s statement under § 1.530 requester and the Office. 30 days after the date of service of the filed prior to the examination stage of Commenter also asserts that there is patent owner’s supplemental response, the proceeding, which is provided for in no guidance of what would be a in case the Office exercises its discretion the current practice. Further, the ‘‘compelling reason’’ to enter the to enter the supplemental response. If suggestion also is subject to the above- supplemental response. the supplemental response is not discussed concerns raised in the This point is addressed here in terms entered, both the supplemental response intellectual property organization and of equities. A patent owner would need and any comments following that corporate comments opposed to to show that its position would be supplemental response will either be implementation of Proposal I. prejudiced by the lack of entry of a returned to parties or discarded as the supplemental response in a way that Office chooses in its sole discretion. If II. Comments as to Proposal II of the cannot be addressed later in the the supplemental response and/or Revisions and Technical Corrections proceeding, and that the adverse effect comments were scanned into the Proposed Rule on patent owner is significant enough to electronic Image File Wrapper (IFW) for Proposal II, as set forth in the counter-balance the delay in the the reexamination proceeding, and thus, Revisions and Technical Corrections proceeding and additional resources to the papers cannot be physically proposed rule, was to prohibit a be expended by the requester and the returned or discarded, then the

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

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1. One of the corporate comments in a quandary as to which address to and all subsequent ex parte supports the Proposal II rule change as serve. The same would be true for reexamination correspondence filed in to the designation of the correspondence parties serving papers under MPEP 2286 the Office, other than correspondence to address for the patent as the correct or 2686 (notifications of existence of the Office of the General Counsel address for communications for patent prior or concurrent proceedings). pursuant to § 1.1(a)(3) and § 1.302(c), owners in a reexamination, and Retaining the address used for should be additionally marked ‘Mail recognizes the need to ease the burden correspondence in the reexamination Stop Ex Parte Reexam.’’’ on the Office in corresponding with proceeding different from that used Section 1.8: Section 1.8(b) is amended patent owners in reexamination during the pendency of applications (as to recite ‘‘In the event that proceedings. Commenter, however, well as post-grant correspondence in correspondence is considered timely strongly encourages the Office to patents maturing from such filed by being mailed or transmitted in promptly post all correspondence applications) will also make it difficult accordance with paragraph (a) of this electronically since ‘‘the for members of the public reviewing the section, but not received in the * * * correspondence address will be the only patent and its associated files and Office after a reasonable amount of time address used for mailings by the Office’’ materials. Furthermore, searching out has elapsed from the time of mailing or under the proposal, ‘‘and no double all the instances where the transmitting of the correspondence correspondence will be sent.’’ correspondence address would be in * * * or the prosecution of a In response, all correspondence for a need of a change in view of the reexamination proceeding is terminated reexamination proceeding is in fact ‘‘adopted regulation’’ in order to send pursuant to § 1.550(d) or § 1.957(b) or promptly posted electronically in the the suggested ‘‘specific requirement of limited pursuant to § 1.957(c), or a Office’s Image File Wrapper (IFW) for the patent owner to comply with the requester paper is refused consideration that proceeding, and is available via the adopted regulation’’ would place a huge pursuant to § 1.957(a), the Office’s public PAIR (Patent Application and undue burden on Office resources. correspondence will be considered Information Retrieval) system. One of The ex parte reexamination data timely if the party who forwarded such the benefits resulting from the Office’s captured by the Office through Sept. 30, correspondence:’’. The language ‘‘the somewhat recent creation of the Central 2006, will be used to illustrate this. prosecution of a reexamination Reexamination Unit is that There are 1,944 ex parte reexamination proceeding is terminated’’ (for § 1.550(d) reexamination correspondence is now proceedings pending. The Office would and § 1.957(b)) clarifies that the mailed by a central unit dedicated need to check to see which of the 8,252 reexamination proceeding is not solely to reexamination, which is in a total ex parte reexamination concluded under § 1.550(d) or position to ensure prompt entry of proceedings are the 1,944 pending § 1.957(b), but rather, the prosecution of correspondence into the IFW. reexamination proceedings. Then, the reexamination is terminated. The 2. The intellectual property Notices would need to be sent out for language ‘‘or the prosecution of a organization comment likewise supports all of them, and the Office would also reexamination proceeding is * * * Proposal III. Commenter, however, need to do the PALM work. For inter limited pursuant to § 1.957(c)’’ more identifies a concern that ‘‘the Office partes reexamination proceedings, appropriately sets forth that the § 1.8(b) states that it will automatically change however, there are approximately 200 remedy is applied to avoid the § 1.957(c) the correspondence address to that of pending proceedings. Accordingly, the consequences of a patent owner’s failure the patent file.’’ Commenter suggests Office intends to issue, in the near to respond in an inter partes that, despite the rule revision, the future, a notice in all pending inter reexamination. The language ‘‘or a correspondence address of the patent partes reexamination proceedings, requester paper is refused consideration owner and any third party, should be notifying the parties about this rule pursuant to § 1.957(a)’’ more maintained by the Office as ‘‘whatever change and the patent owner’s correct appropriately sets forth that the § 1.8(b) correspondence address has been address. It is to be noted that requester remedy is applied to avoid the § 1.957(a) established,’’ and ‘‘a specific paper service on patent owner occurs far consequences of a failure to file a requirement of the patent owner to more often in inter partes requester paper in an inter partes comply with the adopted regulation’’ reexamination, than such service on reexamination. should be made. This suggestion is patent owner in ex parte reexamination. Section 1.17: Sections 1.17(l) and (m) presented to reduce ‘‘the risk of Thus, the major impact of commenter’s are revised to clarify that a termination of the prosecution of a concern in this area has been addressed. reexamination proceeding is not reexamination proceeding by sending IV. Proposal IV has been adopted as concluded under § 1.550(d) or correspondence to the patent owner at it was proposed—none of the comments § 1.957(b), but rather, the prosecution of an address different than has already took issue with any aspect of this a reexamination is terminated under been established in the pending proposal. § 1.550(d) or § 1.957(b), or reexamination proceeding.’’ reexamination prosecution is limited This suggestion is not adopted; Section-by-Section Discussion under § 1.957(c). No change is made as however, for inter partes reexamination Section 1.1: Section 1.1(c)(1) is to the fee amounts. proceedings, an accommodation will be amended to provide for use of ‘‘Mail Section 1.33: Section 1.33(c) is made by the Office as is discussed Stop Ex Parte Reexam’’ for the filing of revised to replace the prior recitation of below. Retaining the old attorney or all ex parte reexamination papers other ‘‘the attorney or agent of record (see agent of record register address as that than certain correspondence to the § 1.32(b)) in the patent file at the of the patent owner’s correspondence Office of the General Counsel. Paragraph address listed on the register of patent address in the face of the rule change (c)(1) of § 1.1(c) has been changed from attorneys and agents maintained which mandates otherwise can only its prior reading ‘‘Requests for ex parte pursuant to §§ 11.5 and 11.11 or, if no lead to uncertainty and confusion. This reexamination (original request papers attorney or agent is of record, to the would result in a situation where some only) should be additionally marked patent owner or owners at the address correspondence addresses are done one ‘Mail Stop Ex Parte Reexam’’’ to now or addresses of record’’ with way and others are done another way. read ‘‘Requests for ex parte ‘‘correspondence address.’’ As § 1.33(c) Third party requesters would be placed reexamination (original request papers) is now revised, all notices, official

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letters, and other communications for the paper will be returned or discarded to conform § 1.550(d) to the language of the patent owner or owners in a at the Office’s option. This explicit 35 U.S.C. 307. reexamination proceeding will be recitation of the Office’s discretion was Section 1.565: Section 1.565(c) is directed to the correspondence address proposed at the last line of the amended to set forth that merged for the patent. As previously discussed, discussion of § 1.530(a) in the Section- (consolidated) ex parte reexamination a change to the correspondence address by-Section analysis of the proposed rule proceedings will result in the ‘‘issuance may be filed with the Office during the making notice and was not commented and publication’’ of a single certificate enforceable life of the patent. on. If the unauthorized paper was under § 1.570. As pointed out above, Section 1.137: Sections 1.137(a), (b), scanned into the electronic Image File this tracks the statutory language. and (e) are amended to more Wrapper (IFW) for the reexamination Section 1.565(d) is further amended to appropriately set forth the § 1.550(d) proceeding, and thus, the paper cannot make it clear that the issuance of a and § 1.957(b) consequences of the be physically returned or discarded, reissue patent for a merged reissue- patent owner’s failure to make a then the unauthorized paper entry will reexamination proceeding effects the required response. To do so, the be marked ‘‘closed’’ and ‘‘non-public,’’ conclusion of the reexamination introductory text of § 1.137(a) and and it will not constitute part of the proceeding. This is distinguished from § 1.137(b) is now revised to recite ‘‘a record of the reexamination proceeding. the termination of the reexamination reexamination prosecution becoming Such papers will not display in the prosecution, as pointed out above. As a terminated under §§ 1.550(d) or Office’s image file wrapper that is made further technical change, 1.957(b)’’ (emphasis added), rather than available, via PAIR, to the public, patent ‘‘consolidated’’ in the prior version of the previous recitation of ‘‘a owners, and representatives of patent § 1.565(c) is revised to now recite reexamination proceeding becoming owners. ‘‘merged,’’ for consistency with the terminated under §§ 1.550(d) or Section 1.530(k) is amended to state terminology used in § 1.565(d). There is 1.957(b)’’ (emphasis added). In that proposed amendments in ex parte no difference in the meaning of the two § 1.137(e), ‘‘a terminated ex parte or inter partes reexamination are not terms, and the use of different terms in reexamination prosecution’’ and ‘‘a effective until the reexamination the two subsections was confusing. In terminated inter partes reexamination certificate is both ‘‘issued and addition, in § 1.565(d), the prior prosecution or an inter partes published’’ to conform § 1.530(k) with recitation of ‘‘normally’’ is replaced by reexamination limited as to further the language of 35 U.S.C. 307. Sections ‘‘usually’’ (‘‘normally’’ was an prosecution’’ are inserted in place of the 1.530(l)(1) and (l)(2) are amended to previous recitation of ‘‘a terminated ex delete the references to ‘‘1.977’’ and add inadvertent inappropriate choice of parte reexamination proceeding’’ and ‘‘a instead ‘‘1.997.’’ This corrects the prior terminology). The same term (‘‘usually’’) terminated inter partes reexamination reference to non-existent § 1.977. In would be added to § 1.565(c). As was proceeding,’’ respectively. addition, § 1.530(l)(2) is revised to recite pointed out in the Notice of Proposed Sections 1.137(a), (b) and (e) are that the reexamination proceeding is Rule Making, there are instances where amended to clarify that the ‘‘concluded’’ by a reexamination the Office does not merge (consolidate) reexamination proceedings under certificate under § 1.570 or § 1.997, as an ongoing ex parte reexamination § 1.957(c) referred to in § 1.137 are opposed to ‘‘terminated,’’ which applies proceeding with a subsequent limited as to further prosecution; the to a reexamination prosecution. reexamination or reissue proceeding, prosecution is not terminated. To make Section 1.550: Section 1.550(d) is which are addressed on a case-by-case this clarification, the introductory text amended to recite that ‘‘[i]f the patent basis. The following examples are again portions of § 1.137(a) and § 1.137(b) are owner fails to file a timely and set forth. If the prosecution in an revised to recite that the prosecution is appropriate response to any Office ongoing ex parte reexamination ‘‘limited under § 1.957(c),’’ rather than action or any written statement of an proceeding has terminated (e.g., a ‘‘terminated.’’ Section 1.137(e) is interview required under § 1.560(b), the Notice of Intent to Issue Reexamination revised to also refer to ‘‘revival’’ of ‘‘an prosecution in the ex parte Certificate has issued), the ex parte inter partes reexamination limited as to reexamination proceeding will be a reexamination proceedings will further prosecution.’’ The heading of terminated prosecution, and the generally not be merged (consolidated) § 1.137 is also revised to add ‘‘limited.’’ Director will proceed to issue and with a subsequent reexamination Section 1.502: Section 1.502 is publish a certificate concluding the proceeding or reissue application. If an amended to state that the reexamination proceeding under § 1.570 ongoing ex parte reexamination ‘‘reexamination proceeding’’ is ***.’’ This makes it clear that the proceeding is ready for decision by the ‘‘concluded by the issuance and patent owner’s failure to timely file a Board of Patent Appeals and publication of a reexamination required response (or interview Interferences, or is on appeal to the U.S. certificate.’’ That is the point at which statement) will result in the Court of Appeals for the Federal Circuit, citations (having an entry right in the ‘‘terminating of prosecution of the it would be inefficient (and contrary to patent) that were filed after the order of reexamination proceeding,’’ but will not the statutory mandate for special ex parte reexamination will be placed in ‘‘conclude the reexamination dispatch in reexamination) to ‘‘pull the patent file. proceeding.’’ It is to be noted that the back’’ the ongoing ex parte Section 1.510: Section 1.510(f) is prosecution will be a terminated reexamination proceeding for merger revised to change § 1.34(a) to § 1.34. prosecution as of the day after the with a subsequent reexamination This change updates the section to response was due and not timely filed. proceeding or reissue application. As a conform to the revision of § 1.34 made In this instance, the Notice of Intent to final example, an ongoing ex parte in Revision of Power of Attorney and Issue Reexamination Certificate (NIRC) reexamination proceeding might be Assignment Practice, 69 FR 29865 (May will be subsequently issued; however, it directed to one set of claims for which 26, 2004) (final rule). will not be the instrument that operates a first accused infringer (with respect to Section 1.530: Section 1.530(a) is to terminate the prosecution, since that the first set) has filed the ongoing amended to provide for the disposition will have already automatically request for reexamination. A later of the unauthorized paper being occurred upon the failure to respond. reexamination request might then be explicitly set forth in the § 1.530(a), i.e., Further, ‘‘issued and published’’ is used directed to a different set of claims for

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which a second accused infringer (with detailed explanation of how the A showing of sufficient cause will not respect to the second set) has filed the requirements of § 1.111(a)(2)(i) are be established by an explanation that request. In this instance, where there are satisfied; (2) an explanation of why the the supplemental response is needed to simply no issues in common, merger supplemental response was not address the requester’s comments (on would serve only to delay the resolution presented together with the original patent owner’s response), and could not of the first proceeding without response to the Office action; and (3) a have been presented together with the providing any benefit to the public (this compelling reason to enter the original response because it was not would run counter to the statutory supplemental response. known that requester would raise a mandate for ‘‘special dispatch’’ in Where the patent owner files a particular point. The inter partes reexamination proceedings). If supplemental response to an Office reexamination statute (35 U.S.C. 314) reexamination is to act as an effective action, the requester may file its provides for the patent owner to alternative to litigation, the ability to comments under § 1.947 within 30 days respond to an Office action, and the decide the question of whether to after the date of service of the patent requester to comment on that response. merge/consolidate based on the merits owner’s supplemental response, in There is no intent in the statute to of a particular fact pattern must be, and order to preserve requester’s statutory provide the patent owner with a chance is, reserved to the Office. comment right, in the event the Office to file a supplemental response to Section 1.570: The heading of § 1.570 exercises its discretion to enter the address the requester’s comments. and § 1.570(a) are amended to make it supplemental response. (The comments Indeed, 35 U.S.C. 314(b)(2) ends the clear that the issuance and publication may address the merits of the iteration of addressing the Office action of the ex parte reexamination certificate proceeding and/or the adequacy of the by stating that ‘‘the third-party requester ‘‘concludes’’ the reexamination showing of sufficient cause why the shall have one opportunity to file ‘‘proceeding.’’ The failure to timely supplemental response should be written comments addressing issues respond, or the issuance of the NIRC, entered.) If the requester fails to file raised by the action of the Office or the terminate prosecution, but do not comments, and the Office enters the patent owner’s response thereto.’’ conclude the reexamination proceeding. supplemental response after 30 days As pointed out above, no For consistency with the language of 35 from its filing, the requester will be corresponding rule revision is needed in U.S.C. 307, § 1.570, paragraphs (b) and statutorily barred from commenting at ex parte reexamination, since there is no (d), are amended to recite that the this stage, because, pursuant to 35 third party requester comment on a patent owner response (that a patent reexamination certificate is both ‘‘issued U.S.C. 314(b)(2), any requester and published.’’ owner will wish to address), and comments filed after a patent owner Section 1.902: Section 1.902 is § 1.111(a)(2) adequately deals with response to an Office action must be amended to state that the patent owner supplemental responses. ‘‘reexamination proceeding’’ is filed ‘‘within 30 days after the date of Section 1.953: The prior version of ‘‘concluded by the issuance and service of the patent owner’s response.’’ § 1.953(b) stated: ‘‘Any appeal by the publication of a reexamination If the requester files comments and the parties shall be conducted in certificate.’’ That is the point at which patent owner’s supplemental response accordance with §§ 1.959–1.983.’’ This citations (having a right to entry in the is not entered by the Office, then both reference to §§ 1.959 through 1.983 is patent) that were filed after the order of the supplemental response, and any not correct, as some of the referenced inter partes reexamination will be comments following that supplemental rules had been deleted and others placed in the patent file. response, will either be returned to the added. Instead of revising the incorrect Section 1.915: Section 1.915(c) is parties or discarded as the Office reference, the entire sentence has been revised to change the prior recitation of chooses in its sole discretion. If the deleted as being out of place in § 1.953, ‘‘§ 1.34(a)’’ to § 1.34. This change supplemental response and/or which is not directed to the appeal updates the section to conform to the comments were scanned into the process, but is rather directed to an revision of § 1.34 made in Revision of electronic Image File Wrapper (IFW) for Office action notifying parties of the Power of Attorney and Assignment the reexamination proceeding, and thus, right to appeal. Section 1.953(c) is Practice, 69 FR 29865 (May 26, 2004) the papers cannot be physically amended to state that if a notice of (final rule). returned or discarded, then the appeal is not timely filed after a Right Section 1.923: In the first sentence of supplemental response and/or of Appeal Notice (RAN), then § 1.923, the prior recitation of ‘‘§ 1.919’’ comments entries will be marked ‘‘prosecution in the inter partes is changed to ‘‘§ 1.915,’’ since it is ‘‘closed’’ and ‘‘non-public,’’ and they reexamination proceeding will be § 1.915 that provides for the request; will not constitute part of the record of terminated.’’ This will not, however, § 1.919 provides for the filing date of the the reexamination proceeding. Such conclude the reexamination proceeding. request. papers will not display in the Office’s Section 1.956: The subheading Section 1.945: Prior to the present image file wrapper that is made preceding § 1.956 is amended to refer to revision, § 1.945 provided that ‘‘[t]he available, via PAIR, to the public, patent termination of the prosecution of the patent owner will be given at least thirty owners, and representatives of patent reexamination, rather than the days to file a response to any Office owners. termination or conclusion of the action on the merits of the inter partes The decision on the sufficiency of the reexamination proceeding, since reexamination.’’ Section 1.945 is now showing will not be issued until after termination of the prosecution of the revised to address the filing of a receipt of requester comments under reexamination is what the sections that supplemental response to an Office § 1.947 on the supplemental response, follow address. It is § 1.997 (Issuance of action. Any supplemental response to or the expiration of the 30-day period Inter Partes Reexamination Certificate) an Office action will be entered only for requester comments (whichever that deals with conclusion of the where the supplemental response is comes first). The decision will be reexamination proceeding. accompanied by a showing of sufficient communicated to the parties either prior Section 1.957: Section 1.957(b) is cause why the supplemental response to, or with, the next Office action on the amended to recite that ‘‘[i]f no claims should be entered. The showing of merits, as is deemed appropriate for the are found patentable, and the patent sufficient cause must provide: (1) A handling of the case. owner fails to file a timely and

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appropriate response * * *, the Section 1.989: Section 1.989(a) is impact of the changes in this final rule prosecution in the reexamination amended to set forth that consolidated is to prohibit supplemental patent proceeding will be a terminated (merged) reexamination proceedings owner responses to an Office action in prosecution, and the Director will containing an inter partes an inter partes reexamination without a proceed to issue and publish a reexamination proceeding will result in showing of sufficient cause. certificate concluding the reexamination the issuance and publication of a single The change in this final rule to proceeding under § 1.997 * * *.’’ certificate under § 1.570. As pointed out prohibit supplemental patent owner (Emphasis added). This makes it clear above, this tracks the statutory language. responses to an Office action in an inter that the patent owner’s failure to timely Section 1.991: In § 1.991, ‘‘and 41.60– partes reexamination without a showing file a required response, where no claim 41.81’’ is added to the previously of sufficient cause will not have a has been found patentable, will result in recited ‘‘§§ 1.902 through 1.997,’’ since significant economic impact on a the terminating of prosecution of the §§ 41.60–41.81 provide the requester substantial number of small entities for reexamination proceeding, but will not with participation rights. Further, two reasons. First, assuming that all conclude the reexamination proceeding. § 1.991 is amended to make it clear that patentees in an inter partes As previously discussed for ex parte the issuance of a reissue patent for a reexamination are small entities and reexamination, the prosecution will be a merged reissue-reexamination that all would have submitted a terminated prosecution as of the day proceeding effects the conclusion of the supplemental response without after the response was due and not reexamination proceeding. This is sufficient cause, the change would timely filed. In this instance, the NIRC distinguished from the termination of impact fewer than 100 small entity will be subsequently issued; however, it the reexamination prosecution, as patentees each year. Second, there is no will not be the instrument that operates pointed out above. petition or other fee for the showing of to terminate the prosecution, since that Section 1.997: Both the heading of sufficient cause that would be necessary will have already automatically § 1.997 and § 1.997(a) are amended to under the implemented change for a occurred upon the failure to respond. make it clear that the issuance and supplemental patent owner’s response Also, ‘‘issued and published’’ is used to publication of the inter partes to an Office action in an inter partes conform § 1.550(d) to the language of 35 reexamination certificate effects the reexamination. U.S.C. 316. conclusion of the reexamination Therefore, the changes implemented proceeding. The failure to timely in this notice will not have a significant Section 1.958: The heading of § 1.958 respond, or the issuance of the NIRC, economic impact on a substantial is amended to refer to the termination does not conclude the reexamination number of small entities. of prosecution of the reexamination, proceeding. Section 1.997(a) is also Executive Order 13132: This rule rather than the termination or revised to make its language consistent making does not contain policies with conclusion of the reexamination with that of § 1.570(a). For consistency federalism implications sufficient to proceeding, since that is what the rule with the language of 35 U.S.C. 316, warrant preparation of a Federalism addresses. Section 1.997, paragraphs (b) and (d), Assessment under Executive Order Section 1.979: Section 1.979(b) is are amended to recite that the 13132 (Aug. 4, 1999). amended to recite that ‘‘[u]pon reexamination certificate is both issued Executive Order 12866: This rule judgment in the appeal before the Board and published. making has been determined to be not of Patent Appeals and Interferences, if Section 41.4: Paragraph (b) of § 41.4 is significant for purposes of Executive no further appeal has been taken amended to (1) recite to ‘‘a Order 12866 (Sept. 30, 1993). (§ 1.983), the prosecution in the inter reexamination prosecution becoming Paperwork Reduction Act: This notice partes reexamination proceeding will be terminated under §§ 1.550(d) or involves information collection terminated and the Director will issue 1.957(b)’’ rather than the prior recitation requirements which are subject to and publish a certificate under § 1.997 of ‘‘a reexamination proceeding review by the Office of Management and concluding the proceeding.’’ This makes becoming terminated under §§ 1.550(d) Budget (OMB) under the Paperwork it clear that the termination of an appeal or 1.957(b),’’ and (2) refer to the Reduction Act of 1995 (44 U.S.C. 3501 for an inter partes reexamination prosecution as being ‘‘limited’’ under et seq.). The collections of information proceeding will result in a terminating § 1.957(c) rather than ‘‘terminated’’ involved in this notice have been of prosecution of the reexamination under § 1.957(c). These changes track reviewed and previously approved by proceeding if no other appeal is present, those made in § 1.137; see the OMB under OMB control numbers: but will not conclude the reexamination discussion of § 1.137. 0651–0027, 0651–0031, 0651–0033, and proceeding. Rather, it is the 0651–0035. The United States Patent reexamination certificate under § 1.997 Rule Making Considerations and Trademark Office is not that concludes the reexamination Regulatory Flexibility Act: For the resubmitting the other information proceeding. reasons set forth herein, the Deputy collections listed above to OMB for its In addition, the title of § 1.979 is General Counsel for General Law of the review and approval because the amended to add ‘‘appeal’’ before United States Patent and Trademark changes in this notice do not affect the proceedings, and thus recite ‘‘Return of Office has certified to the Chief Counsel information collection requirements Jurisdiction from the Board of Patent for Advocacy of the Small Business associated with the information Appeals and Interferences; termination Administration that the changes collections under these OMB control of appeal proceedings.’’ This makes it implemented in this notice will not numbers. The principal impacts of the clear that it is the appeal proceedings have a significant economic impact on changes in this final rule are to: (1) that are terminated; the reexamination a substantial number of small entities. Prohibit supplemental patent owner proceeding is not terminated or See 5 U.S.C. 605(b). The Office has responses to an Office action in an inter concluded. issued between about 150,000 and partes reexamination without a showing Section 1.983: In § 1.983(a), the prior 190,000 patents each year during the of sufficient cause, (2) designate the incorrect reference to § 1.979(e) is last five fiscal years. The Office receives correspondence address for the patent changed to recite the correct reference: fewer than 100 requests for inter partes as the correspondence address for all § 41.81. reexamination each year. The principal communications for patent owners in ex

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parte and inter partes reexaminations, § 1.1 Addresses for non-trademark By a small entity (§ 1.27(a))—$750.00. and (3) provide for the use of a single correspondence with the United States By other than a small entity— ‘‘mail stop’’ address for the filing of Patent and Trademark Office. $1,500.00. substantially all ex parte reexamination * * * * * * * * * * (c) * * * papers (as is already the case for inter I 5. Section 1.33 is amended by revising partes reexamination papers). (1) Requests for ex parte reexamination (original request papers) paragraph (c) to read as follows: Comments are invited on: (1) Whether and all subsequent ex parte § 1.33 Correspondence respecting patent the collection of information is reexamination correspondence filed in applications, reexamination proceedings, necessary for proper performance of the the Office, other than correspondence to and other proceedings. functions of the agency; (2) the accuracy the Office of the General Counsel * * * * * of the agency’s estimate of the burden; pursuant to § 1.1(a)(3) and § 1.302(c), (c) All notices, official letters, and (3) ways to enhance the quality, utility, should be additionally marked ‘‘Mail other communications for the patent and clarity of the information to be Stop Ex Parte Reexam.’’ owner or owners in a reexamination collected; and (4) ways to minimize the * * * * * proceeding will be directed to the burden of the collection of information I 3. Section 1.8 is amended by revising correspondence address. Amendments to respondents. the introductory text of paragraph (b) to and other papers filed in a Interested persons are requested to read as follows: reexamination proceeding on behalf of send comments to the Office of the patent owner must be signed by the Information and Regulatory Affairs, § 1.8 Certificate of mailing or patent owner, or if there is more than transmission. Office of Management and Budget, New one owner by all the owners, or by an Executive Office Building, Room 10202, * * * * * attorney or agent of record in the patent 725 17th Street, NW., Washington, DC (b) In the event that correspondence is file, or by a registered attorney or agent 20503, Attention: Desk Officer for the considered timely filed by being mailed not of record who acts in a Patent and Trademark Office; and (2) or transmitted in accordance with representative capacity under the Robert A. Clarke, Acting Director, Office paragraph (a) of this section, but not provisions of § 1.34. Double of Patent Legal Administration, received in the U.S. Patent and correspondence with the patent owner Commissioner for Patents, P.O. Box Trademark Office after a reasonable or owners and the patent owner’s 1450, Alexandria, VA 22313–1450. amount of time has elapsed from the attorney or agent, or with more than one time of mailing or transmitting of the Notwithstanding any other provision attorney or agent, will not be correspondence, or after the application undertaken. of law, no person is required to respond is held to be abandoned, or after the * * * * * to nor shall a person be subject to a proceeding is dismissed or decided with penalty for failure to comply with a prejudice, or the prosecution of a I 6. Section 1.137 is amended by collection of information subject to the reexamination proceeding is terminated revising its heading, the introductory requirements of the Paperwork pursuant to § 1.550(d) or § 1.957(b) or text of paragraph (a), the introductory Reduction Act unless that collection of limited pursuant to § 1.957(c), or a text of paragraph (b), and paragraph (e) information displays a currently valid requester paper is refused consideration to read as follows: OMB control number. pursuant to § 1.957(a), the § 1.137 Revival of abandoned application, List of Subjects correspondence will be considered terminated or limited reexamination timely if the party who forwarded such prosecution, or lapsed patent. 37 CFR Part 1 correspondence: (a) Unavoidable. If the delay in reply Administrative practice and * * * * * by applicant or patent owner was procedure, Courts, Freedom of I 4. Section 1.17 is amended by revising unavoidable, a petition may be filed information, Inventions and patents, paragraphs (l) and (m) to read as pursuant to this paragraph to revive an Reporting and recordkeeping follows: abandoned application, a reexamination requirements, Small businesses, and prosecution terminated under § 1.17 Patent application and §§ 1.550(d) or 1.957(b) or limited under Biologics. reexamination processing fees. § 1.957(c), or a lapsed patent. A 37 CFR Part 41 * * * * * grantable petition pursuant to this (l) For filing a petition for the revival paragraph must be accompanied by: Administrative practice and of an unavoidably abandoned procedure, Inventions and patents, application under 35 U.S.C. 111, 133, * * * * * Lawyers. 364, or 371, for the unavoidably delayed (b) Unintentional. If the delay in reply payment of the issue fee under 35 U.S.C. by applicant or patent owner was I For the reasons set forth in the 151, or for the revival of an unavoidably unintentional, a petition may be filed preamble, 37 CFR parts 1 and 41 are terminated or limited reexamination pursuant to this paragraph to revive an amended as follows: prosecution under 35 U.S.C. 133 abandoned application, a reexamination (§ 1.137(a)): prosecution terminated under PART 1—RULES OF PRACTICE IN By a small entity (§ 1.27(a))—$250.00. §§ 1.550(d) or 1.957(b) or limited under PATENT CASES By other than a small entity—$500.00. § 1.957(c), or a lapsed patent. A (m) For filing a petition for the revival grantable petition pursuant to this I 1. The authority citation for 37 CFR of an unintentionally abandoned paragraph must be accompanied by: part 1 continues to read as follows: application, for the unintentionally * * * * * Authority: 35 U.S.C. 2(b)(2), unless delayed payment of the fee for issuing (e) Request for reconsideration. Any otherwise noted. a patent, or for the revival of an request for reconsideration or review of unintentionally terminated or limited a decision refusing to revive an I 2. Section 1.1 is amended by revising reexamination prosecution under 35 abandoned application, a terminated or paragraph (c)(1) to read as follows: U.S.C. 41(a)(7) (§ 1.137(b)): limited reexamination prosecution, or

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lapsed patent upon petition filed § 1.530 Statement by patent owner in ex the prosecution in the ex parte pursuant to this section, to be parte reexamination; amendment by patent reexamination proceeding will be a considered timely, must be filed within owner in ex parte or inter partes terminated prosecution, and the reexamination; inventorship change in ex two months of the decision refusing to parte or inter partes reexamination. Director will proceed to issue and revive or within such time as set in the publish a certificate concluding the (a) Except as provided in § 1.510(e), decision. Unless a decision indicates no statement or other response by the reexamination proceeding under § 1.570 otherwise, this time period may be patent owner in an ex parte in accordance with the last action of the extended under: reexamination proceeding shall be filed Office. (1) The provisions of § 1.136 for an prior to the determinations made in * * * * * abandoned application or lapsed patent; accordance with § 1.515 or § 1.520. If a I 11. Section 1.565 is amended by premature statement or other response (2) The provisions of § 1.550(c) for a revising paragraphs (c) and (d) to read is filed by the patent owner, it will not terminated ex parte reexamination as follows: prosecution, where the ex parte be acknowledged or considered in reexamination was filed under § 1.510; making the determination, and it will be § 1.565 Concurrent office proceedings or returned or discarded (at the Office’s which include an ex parte reexamination option). proceeding. (3) The provisions of § 1.956 for a * * * * * * * * * * terminated inter partes reexamination (k) Amendments not effective until prosecution or an inter partes certificate. Although the Office actions (c) If ex parte reexamination is reexamination limited as to further will treat proposed amendments as ordered while a prior ex parte prosecution, where the inter partes though they have been entered, the reexamination proceeding is pending reexamination was filed under § 1.913. proposed amendments will not be and prosecution in the prior ex parte * * * * * effective until the reexamination reexamination proceeding has not been terminated, the ex parte reexamination I certificate is issued and published. 7. Section 1.502 is revised to read as (l) Correction of inventorship in an ex proceedings will usually be merged and follows: parte or inter partes reexamination result in the issuance and publication of § 1.502 Processing of prior art citations proceeding. a single certificate under § 1.570. For during an ex parte reexamination (1) When it appears in a patent being merger of inter partes reexamination proceeding. reexamined that the correct inventor or proceedings, see § 1.989(a). For merger inventors were not named through error of ex parte reexamination and inter Citations by the patent owner under without deceptive intention on the part partes reexamination proceedings, see § 1.555 and by an ex parte of the actual inventor or inventors, the § 1.989(b). reexamination requester under either Director may, on petition of all the § 1.510 or § 1.535 will be entered in the parties set forth in § 1.324(b)(1)–(3), (d) If a reissue application and an ex reexamination file during a including the assignees, and satisfactory parte reexamination proceeding on reexamination proceeding. The entry in proof of the facts and payment of the fee which an order pursuant to § 1.525 has the patent file of citations submitted set forth in § 1.20(b), or on order of a been mailed are pending concurrently after the date of an order to reexamine court before which such matter is called on a patent, a decision will usually be pursuant to § 1.525 by persons other in question, include in the made to merge the two proceedings or than the patent owner, or an ex parte reexamination certificate to be issued to suspend one of the two proceedings. reexamination requester under either under § 1.570 or § 1.997 an amendment Where merger of a reissue application § 1.510 or § 1.535, will be delayed until naming only the actual inventor or and an ex parte reexamination the reexamination proceeding has been inventors. The petition must be proceeding is ordered, the merged concluded by the issuance and submitted as part of the reexamination examination will be conducted in publication of a reexamination proceeding and must satisfy the accordance with §§ 1.171 through 1.179, certificate. See § 1.902 for processing of requirements of § 1.324. and the patent owner will be required prior art citations in patent and (2) Notwithstanding paragraph (1)(1) to place and maintain the same claims reexamination files during an inter of this section, if a petition to correct in the reissue application and the ex partes reexamination proceeding filed inventorship satisfying the requirements parte reexamination proceeding during under § 1.913. of § 1.324 is filed in a reexamination the pendency of the merged proceeding. proceeding, and the reexamination The examiner’s actions and responses I 8. Section 1.510 is amended by proceeding is concluded other than by revising paragraph (f) to read as follows: by the patent owner in a merged a reexamination certificate under proceeding will apply to both the § 1.570 or § 1.997, a certificate of § 1.510 Request for ex parte reissue application and the ex parte correction indicating the change of reexamination. reexamination proceeding and will be inventorship stated in the petition will * * * * * be issued upon request by the patentee. physically entered into both files. Any ex parte reexamination proceeding (f) If a request is filed by an attorney I 10. Section 1.550 is amended by merged with a reissue application shall or agent identifying another party on revising paragraph (d) to read as whose behalf the request is being filed, follows: be concluded by the grant of the the attorney or agent must have a power reissued patent. For merger of a reissue of attorney from that party or be acting § 1.550 Conduct of ex parte reexamination application and an inter partes proceedings. in a representative capacity pursuant to reexamination, see § 1.991. § 1.34. * * * * * * * * * * (d) If the patent owner fails to file a I 9. Section 1.530 is amended by timely and appropriate response to any I 12. Section 1.570 is amended by revising paragraphs (a), (k) and (l) to Office action or any written statement of revising its heading and paragraphs (a), read as follows: an interview required under § 1.560(b), (b) and (d), to read as follows:

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§ 1.570 Issuance and publication of ex or be acting in a representative capacity favorable to patentability, and may parte reexamination certificate concludes pursuant to § 1.34. request the issuance of a Right of ex parte reexamination proceeding. * * * * * Appeal Notice. The request must have (a) To conclude an ex parte I 15. Section 1.923 is revised to read as the concurrence of the patent owner and reexamination proceeding, the Director follows: all third party requesters present in the will issue and publish an ex parte proceeding and must identify all of the reexamination certificate in accordance § 1.923 Examiner’s determination on the appealable issues and the positions of with 35 U.S.C. 307 setting forth the request for inter partes reexamination. the patent owner and all third party results of the ex parte reexamination Within three months following the requesters on those issues. If the proceeding and the content of the patent filing date of a request for inter partes examiner determines that no other following the ex parte reexamination reexamination under § 1.915, the issues are present or should be raised, proceeding. examiner will consider the request and a Right of Appeal Notice limited to the (b) An ex parte reexamination determine whether or not a substantial identified issues shall be issued. certificate will be issued and published new question of patentability affecting (c) The Right of Appeal Notice shall in each patent in which an ex parte any claim of the patent is raised by the be a final action, which comprises a reexamination proceeding has been request and the prior art citation. The final rejection setting forth each ground ordered under § 1.525 and has not been examiner’s determination will be based of rejection and/or final decision merged with any inter partes on the claims in effect at the time of the favorable to patentability including each reexamination proceeding pursuant to determination, will become a part of the determination not to make a proposed § 1.989(a). Any statutory disclaimer official file of the patent, and will be rejection, an identification of the status filed by the patent owner will be made mailed to the patent owner at the of each claim, and the reasons for part of the ex parte reexamination address as provided for in § 1.33(c) and decisions favorable to patentability and/ certificate. to the third party requester. If the or the grounds of rejection for each * * * * * examiner determines that no substantial claim. No amendment can be made in (d) If an ex parte reexamination new question of patentability is present, response to the Right of Appeal Notice. certificate has been issued and the examiner shall refuse the request The Right of Appeal Notice shall set a published which cancels all of the and shall not order inter partes one-month time period for either party claims of the patent, no further Office reexamination. to appeal. If no notice of appeal is filed, proceedings will be conducted with that I 16. Section 1.945 is revised to read as prosecution in the inter partes patent or any reissue applications or any follows: reexamination proceeding will be reexamination requests relating thereto. terminated, and the Director will * * * * * § 1.945 Response to Office action by proceed to issue and publish a patent owner in inter partes reexamination. I 13. Section 1.902 is revised to read as certificate under § 1.997 in accordance follows: (a) The patent owner will be given at with the Right of Appeal Notice. least thirty days to file a response to any I § 1.902 Processing of prior art citations Office action on the merits of the inter 18. The undesignated center heading during an inter partes reexamination partes reexamination. immediately preceding § 1.956 is proceeding. (b) Any supplemental response to the revised to read as follows: Citations by the patent owner in Office action will be entered only where Extensions of Time, Terminating of accordance with § 1.933 and by an inter the supplemental response is Reexamination Prosecution, and partes reexamination third party accompanied by a showing of sufficient Petitions To Revive in Inter Partes requester under § 1.915 or § 1.948 will cause why the supplemental response Reexamination be entered in the inter partes should be entered. The showing of reexamination file. The entry in the sufficient cause must include: I 19. Section 1.957 is amended by patent file of other citations submitted (1) An explanation of how the revising paragraph (b) to read as follows: after the date of an order for requirements of § 1.111(a)(2)(i) are reexamination pursuant to § 1.931 by § 1.957 Failure to file a timely, appropriate satisfied; or complete response or comment in inter persons other than the patent owner, or (2) An explanation of why the partes reexamination. the third party requester under either supplemental response was not § 1.913 or § 1.948, will be delayed until presented together with the original * * * * * the inter partes reexamination response to the Office action; and (b) If no claims are found patentable, proceeding has been concluded by the (3) A compelling reason to enter the and the patent owner fails to file a issuance and publication of a supplemental response. timely and appropriate response in an reexamination certificate. See § 1.502 for I 17. Section 1.953 is amended by inter partes reexamination proceeding, processing of prior art citations in revising paragraphs (b) and (c) to read the prosecution in the reexamination patent and reexamination files during as follows: proceeding will be a terminated an ex parte reexamination proceeding prosecution and the Director will filed under § 1.510. § 1.953 Examiner’s Right of Appeal Notice proceed to issue and publish a in inter partes reexamination. certificate concluding the reexamination I 14. Section 1.915 is amended by proceeding under § 1.997 in accordance revising paragraph (c) to read as follows: * * * * * (b) Expedited Right of Appeal Notice: with the last action of the Office. § 1.915 Content of request for inter partes At any time after the patent owner’s * * * * * reexamination. response to the initial Office action on I 20. Section 1.958 is amended by * * * * * the merits in an inter partes revising its heading to read as follows: (c) If an inter partes request is filed by reexamination, the patent owner and all an attorney or agent identifying another third party requesters may stipulate that § 1.958 Petition to revive inter partes party on whose behalf the request is the issues are appropriate for a final reexamination prosecution terminated for being filed, the attorney or agent must action, which would include a final lack of patent owner response. have a power of attorney from that party rejection and/or a final determination * * * * *

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I 21. Section 1.979 is amended by on a patent, a decision may be made to Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, revising its heading and paragraph (b) to merge the two proceedings or to 23, 32, 41, 134, 135. read as follows: suspend one of the two proceedings. I 27. Section 41.4 is amended by Where merger of a reissue application revising paragraph (b) to read as follows: § 1.979 Return of Jurisdiction from the and an inter partes reexamination Board of Patent Appeals and Interferences; termination of appeal proceedings. proceeding is ordered, the merged § 41.4 Timeliness. proceeding will be conducted in * * * * * * * * * * accordance with §§ 1.171 through 1.179, (b) Upon judgment in the appeal (b) Late filings. (1) A late filing that and the patent owner will be required results in either an application before the Board of Patent Appeals and to place and maintain the same claims Interferences, if no further appeal has becoming abandoned or a reexamination in the reissue application and the inter prosecution becoming terminated under been taken (§ 1.983), the prosecution in partes reexamination proceeding during the inter partes reexamination §§ 1.550(d) or 1.957(b) of this title or the pendency of the merged proceeding. limited under § 1.957(c) of this title may proceeding will be terminated and the In a merged proceeding the third party Director will issue and publish a be revived as set forth in § 1.137 of this requester may participate to the extent title. certificate under § 1.997 concluding the provided under §§ 1.902 through 1.997 proceeding. If an appeal to the U.S. (2) A late filing that does not result in and 41.60 through 41.81, except that either an application becoming Court of Appeals for the Federal Circuit such participation shall be limited to has been filed, that appeal is considered abandoned or a reexamination issues within the scope of inter partes prosecution becoming terminated under terminated when the mandate is issued reexamination. The examiner’s actions by the Court. §§ 1.550(d) or 1.957(b) of this title or and any responses by the patent owner limited under § 1.957(c) of this title will I 22. Section 1.983 is amended by or third party requester in a merged be excused upon a showing of excusable revising paragraph (a) to read as follows: proceeding will apply to both the neglect or a Board determination that § 1.983 Appeal to the United States Court reissue application and the inter partes consideration on the merits would be in of Appeals for the Federal Circuit in inter reexamination proceeding and be the interest of justice. partes reexamination. physically entered into both files. Any * * * * * (a) The patent owner or third party inter partes reexamination proceeding Dated: April 9, 2007. requester in an inter partes merged with a reissue application shall reexamination proceeding who is a be concluded by the grant of the Jon W. Dudas, party to an appeal to the Board of Patent reissued patent. Under Secretary of Commerce for Intellectual Appeals and Interferences and who is I Property and Director of the United States 25. Section 1.997 is amended by Patent and Trademark Office. dissatisfied with the decision of the revising its heading and paragraphs (a), [FR Doc. E7–7202 Filed 4–13–07; 8:45 am] Board of Patent Appeals and (b), and (d) to read as follows: Interferences may, subject to § 41.81, BILLING CODE 3510–16–P appeal to the U.S. Court of Appeals for § 1.997 Issuance and publication of inter partes reexamination certificate concludes the Federal Circuit and may be a party inter partes reexamination proceeding. DEPARTMENT OF COMMERCE to any appeal thereto taken from a (a) To conclude an inter partes reexamination decision of the Board of Patent and Trademark Office Patent Appeals and Interferences. reexamination proceeding, the Director will issue and publish an inter partes * * * * * 37 CFR Parts 2 and 7 reexamination certificate in accordance I 23. Section 1.989 is amended by with 35 U.S.C. 316 setting forth the [Docket No.: PTO–T–2007–0005] revising paragraph (a) to read as follows: results of the inter partes reexamination RIN 0651–AC11 § 1.989 Merger of concurrent proceeding and the content of the patent following the inter partes reexamination reexamination proceedings. Correspondence With the Madrid proceeding. (a) If any reexamination is ordered Processing Unit of the United States while a prior inter partes reexamination (b) A certificate will be issued and Patent and Trademark Office proceeding is pending for the same published in each patent in which an patent and prosecution in the prior inter inter partes reexamination proceeding AGENCY: United States Patent and partes reexamination proceeding has has been ordered under § 1.931. Any Trademark Office, Commerce. not been terminated, a decision may be statutory disclaimer filed by the patent ACTION: Final rule. made to merge the two proceedings or owner will be made part of the to suspend one of the two proceedings. certificate. SUMMARY: The United States Patent and Where merger is ordered, the merged * * * * * Trademark Office (Office) revises the examination will normally result in the (d) If a certificate has been issued and rules of practice to change the address issuance and publication of a single published which cancels all of the for correspondence with the Madrid reexamination certificate under § 1.997. claims of the patent, no further Office Processing Unit of the Office. The Office relocated to Alexandria, Virginia, in * * * * * proceedings will be conducted with that 2004, and hereby changes the address I 24. Section 1.991 is revised to read as patent or any reissue applications or any reexamination requests relating thereto. for correspondence with the Office follows: relating to filings pursuant to the * * * * * § 1.991 Merger of concurrent reissue Protocol Relating to the Madrid application and inter partes reexamination PART 41—PRACTICE BEFORE THE Agreement Concerning the International proceeding. BOARD OF PATENT APPEALS AND Registration of Marks to an Alexandria, If a reissue application and an inter INTERFERENCES Virginia address. partes reexamination proceeding on DATES: Effective Date: The changes in which an order pursuant to § 1.931 has I 26. The authority citation for 37 CFR this final rule are effective April 16, been mailed are pending concurrently part 41 continues to read as follows: 2007.

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