Rules of Practice in Patent Cases; Reexamination
Proceedings
[BILLING CODE 3510-16]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 95-0720187-5187-01]
RIN 0651-AA79
Rules of Practice in Patent Cases; Reexamination Proceedings
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of Proposed Rulemaking
SUMMARY: The Patent and Trademark Office (Office) is proposing to amend
its rules of practice in patent cases to provide revised procedures for
the reexamination of patents. H.R. 1732 proposes to authorize the
extension of reexamination proceedings as a means for improving the
quality of United States patents. The Office intends, through this
proposed amendment of its rules, to provide patent owners and the public
with guidance on the procedures the Office would follow in conducting
reexamination proceedings.
DATES: A public hearing will be held on Wednesday, September 20, 1995,
at the Stouffer Renaissance Crystal City Hotel, 2399 Jefferson Davis
Highway , Arlington, Virginia, 22202 at 9:30 a.m. Those wishing to
present oral testimony must request an opportunity to do so no later
than
September 14, 1995. Written comments must be submitted on or before
September 22, 1995.
ADDRESSES: Written comments concerning the rule changes should be
addressed to the Assistant Commissioner for Patents, Box DAC,
Washington, D.C. 20231, marked to the attention of Gerald A. Dost,
Senior Legal Advisor, Special Program Law Office, Crystal Park 1, Suite
520. In addition, written comments may also be sent by facsimile
transmission to (703) 308-6916 with a confirmation copy mailed to the
above address, or by electronic mail messages over the Internet to
reexamrule@uspto.gov.
Written comments concerning reexamination rule matters will be available
for public inspection on October 2, 1995, in Room 520 of Crystal Park
One, 2011 Crystal Drive, Arlington, Virginia.
FOR FURTHER INFORMATION CONTACT:
Gerald A. Dost or Lawrence E. Anderson by telephone at (703) 305-9285,
by electronic mail at landerso@uspto.gov, or by mail to Gerald A. Dost
to his attention addressed to the Assistant Commissioner for Patents,
Box DAC, Washington, D.C. 20231.
SUPPLEMENTARY INFORMATION:
Background
This proposed rulemaking sets forth distinct procedures directed towards
determining and improving the quality and reliability of United States
patents. The procedures are proposed to provide for the expanded
reexamination of patents as proposed in H.R. 1732.
Discussion of General Issues Involved
The proposals are in response to H.R. 1782 which resulted from
suggestions and comments to the Administration by the public, bar
groups, and the August 1992 Advisory Commission on Patent Law Reform
suggesting more participation in the reexamination proceeding by third
party requesters. Under the rules proposed herein, third party
requesters will have greater opportunity to participate in reexamination
proceedings in keeping with the spirit and intent of the proposed law.
At the same time, participation will be limited to minimize the costs
and other effects of reexamination requests on patentees.
If H.R. 1732 is amended during the legislative process, the final rules
will comply with this legislation as enacted. If H.R. 1732 is not
enacted, the proposed rules for expanded reexamination of patents would
be withdrawn.
Because reexaminations filed before the proposed law takes effect will
continue to be governed by
37 CFR 1.501 - 1.570, to avoid confusion between the new and old rules
the newly proposed reexamination rules have been numbered 37 CFR 1. 901
- 1.997.
Regarding the reexamination fee, 35 U.S.C. 41(d) requires the
Commissioner to set the fee for reexamination at a level which will
recover the estimated average cost to the Office. The estimated
average cost is $4,500 per patent owner requested reexamination and
$11,000 for third party requested reexaminations. The difference in
price takes into account the estimate that the examiner will spend twice
the amount of time examining a case where a third party requester is
present and additional costs incurred during the appellate stages
incident to additional processing steps required in the third party
proceedings.
Discussion of the Major Specific Issues Involved
The proposed rules relating to reexamination proceedings are directed to
the procedures set forth in proposed Chapter 30 of Title 35 of the
United States Code (35 U.S.C. 301-307). This proposed Chapter provides
for the citation of prior art in patents, filing of requests for
reexamination, decisions on such requests, reexamination and appeal from
reexamination decisions, and the issuance of a certificate at
the termination of the reexamination proceedings.
Section 1.4 is proposed to be amended so that paragraph (a)(2) includes
the reexamination §§ 1.901 -1.997.
Section 1.6 is proposed to be amended so that paragraph(d)(5) incudes
§1.913, which related to the exception of the use of facsimile
transmission for filing the request for reexamination.
Section 1.11 is proposed to be amended so that paragraph (c), which
relates to reexaminations at the initiative of the Commissioner,
includes the reference to reexamination § 1.929.
Section 1.17 is proposed to be amended so that paragraph (l) reflects
the fact that in the case of reexaminations filed after January 1, 1996,
petitions for revival of a reexamination proceeding terminated for an
unavoidable failure to respond require the fees of $55.00 for a small
entity and $110.00 for other than small entity. Also, § 1.17 is
proposed to be amended so that paragraph (m) reflects the fact that in
the case of reexaminations filed after January 1, 1996, petitions for
revival of a reexamination proceeding terminated for an unintentional
failure to respond require the fees of $605.00 for a small entity and
$1,210.00 for other than small entity. The Office has proposed an
increase in the fee set by § 1.17(m). See "Revision of Patent and
Trademark Fees" published in the Federal Register at 60 FR 27934 (May
26, 1995) and in the Patent and Trademark Office Official Gazette at
1174 Off. Gaz. Pat. Office 134 (May 30, 1995).
Section 1.20 is proposed to be amended so that paragraph (c) reflects
the fact that in the case of reexaminations filed after January 1, 1996,
there is a two tier fee scale in which patent owner requesters will be
charged $4,500 and third party requesters will be charged $11,000.
Section 1.25 is proposed to be amended so that paragraph (b), which
relates to requests for reexaminations, includes the reference to
reexamination § 1.913.
Section 1.26 is proposed to be amended so as to reflect that in the case
of reexaminations filed after January 1, 1996, a refund of seventy-five
percent (75%) of the fee paid for filing the request for reexamination
will be made to the requester.
Section 1.112 is proposed to be amended so that the last sentence
reflects the fact that in the case of reexaminations filed after January
1, 1996, the examiner may close prosecution prior to making the action
final. Section 1.113, which provides for a final rejection or action in
a reexamination proceeding, is proposed to be amended so that its
application is limited to applicants and patent owners in reexaminations
filed before January 1, 1996. For reexaminations filed after January 1,
1996, the new reexamination rules will apply.
Section 1.115, which provides for amendments by the patent owner in a
reexamination proceeding, is proposed to be amended so that its
application is limited to applicants and patent owners in reexaminations
filed before January 1, 1996. For reexaminations filed after January 1,
1996, the new reexamination rules will apply.
Section 1.116, which provides for amendments after final action in
reexamination proceedings, is proposed to be amended so that its
application is permissible after an action closing prosecution for
patent owners in reexaminations filed on or after January 1, 1996.
Also, for clarity, the rule is amended to provide that for
reexaminations filed after January 1, 1996, no appeal is permitted until
a right of appeal notice has been issued.
Section 1.136, which provides for filing of timely responses with
petitions and fee for extension of time and extensions of time for
cause, is amended to make it clear that for reexamination proceedings
filed on or after January 1, 1996, § 1.957 is controlling for
extensions of time.
Section 1.137, which provides for revival of abandoned applications or
lapsed patents, is proposed to be amended to change the title and add
new paragraphs (g) and (h). Paragraph (f) is proposed to be utilized
for provisional applications. Paragraph (g) is proposed to be added to
provide for revival of unavoidably terminated proceedings for
reexamination proceedings filed before January 1, 1996. Paragraph (h) is
proposed to be added to make it clear that for reexamination proceedings
filed on or after January 1, 1996, § 1.958 is controlling.
Section 1.191, which provides for appeal to the Board of Patent Appeals
and Interferences by the patent owner from any decision adverse to
patentability, is proposed to be amended so as to be applicable to
reexaminations filed before January 1, 1996. For reexamination
proceedings filed on or after January 1, 1996, § 1.959 is controlling.
Section 1.192, which provides two months from the date of the Notice of
Appeal for the patent owner to file an appeal brief in a reexamination
proceeding, is proposed to be amended so as to be applicable to
reexaminations filed before January 1, 1996. For reexamination
proceedings filed on or after January 1, 1996, § 1.965 is controlling.
Section 1.193, which provides for the Examiner's answer and reply brief,
is proposed to be amended so as to be applicable to reexaminations filed
before January 1, 1996. For reexamination proceedings filed on or after
January 1, 1996, §§ 1.969 and 1.971 are controlling.
Section 1.194, which provides for the oral hearing, is proposed to be
amended so as to be applicable to reexaminations filed before January 1,
1996. For reexamination proceedings filed on or after January 1, 1996,
§ 1.973 is controlling.
Section 1.195, which provides for the affidavits or declarations after
appeal, is proposed to be amended so as to be applicable to
reexaminations filed before January 1, 1996. For reexamination
proceedings filed on or after January 1, 1996, § 1.975 is controlling.
Section 1.196, which provides for the decision of the Board of Patent
Appeals and Interferences, is proposed to be amended so as to be
applicable to reexaminations filed before January 1, 1996. For
reexamination proceedings filed on or after January 1, 1996, § 1.977 is
controlling.
Section 1.197, which provides for action following the decision, is
proposed to be amended so as to be applicable to reexaminations filed
before January 1, 1996. For reexamination proceedings filed on or after
January 1, 1996, § 1.979 is controlling.
Section 1.198, which provides for reopening after the decision, is
proposed to be amended so as to be applicable to reexaminations filed
before January 1, 1996. For reexamination proceedings filed on or after
January 1, 1996, § 1.981 is controlling.
Section 1.301, which provides for appeal by the owner of a patent in
reexamination proceedings to the U.S. Court of Appeals for the Federal
Circuit, is proposed to be amended so as to be applicable to
reexaminations filed before January 1, 1996. For reexamination
proceedings filed on or after January 1, 1996, § 1.983 is controlling.
Section 1.303, which provides for remedy by civil action under 35 U.S.C.
145 for the owner of a patent in reexamination proceedings, is proposed
to be amended so as to be applicable to reexaminations filed before
January 1, 1996. For reexamination proceedings filed on or after
January 1, 1996, § 1.983 is controlling.
Section 1.304 which provides for time for appeal or civil action, is
proposed to be amended so as to refer also to § 1.957.
The title to Subpart D is proposed to be amended to provide that the
reexamination rules in this part apply only to reexamination proceedings
filed before January 1, 1996.
The proposed title to Subpart H provides that the reexamination rules in
this part apply only to reexamination proceedings filed on or after
January 1, 1996.
Proposed § 1.901 provides a system for citation of patents and printed
publications to the Office for placement in the patent file by any
person during the period of enforceability of the patent in accordance
with 35 U.S.C. 301. The section provides for citations limited to
patents and printed publications when the person making the citation
states the pertinency and applicability of the citation to the patent
and the bearing the citation has on the patentability of at least one
claim of the patent. The rule provides that a citation made by the
patent owner may include an explanation of how the claims differ from
the prior art cited. Any citations which include items other than
patents and printed publications will not be entered in the patent file.
This does not, of course, limit in any manner the kinds and types of
information which can be relied upon in protests against pending patent
applications, whether such be original applications or reissue
applications. The term "period of enforceability of a patent" includes
any period for which recovery can be had for infringement. Under usual
circumstances, this would be the term of the patent plus the six years
provided by 35 U.S.C. 286.
Proposed § 1.902 provides for the processing of prior art citations
during a reexamination proceeding.
Proposed § 1.903 provides for the service of papers on parties.
Proposed § 1.904 provides that the notices published in the Official
Gazette will be considered to be constructive notice.
Proposed § 1.905 provides for submission of papers by the public.
Proposed § 1.906 covers the scope of reexamination in a reexamination
proceeding. While it is not intended that the examiners will routinely
complete a new search when conducting reexamination, the examiners will
be free to, and will, very likely, conduct additional searches and cite
and apply additional prior patents and publications when they consider
it is appropriate and beneficial to do so.
Insofar as the actual reexamination is concerned, the examination is
only on the basis of patents or printed publications and on the basis of
the requirements of 35 U.S.C. 112, except for the best mode requirement.
Claims in a reexamination proceeding must not enlarge the scope of the
claims of the patent and must not introduce new matter. Paragraph (c)
provides that questions relating to matters other than those indicated
in paragraphs (a) and (b) of this section will not be resolved in a
reexamination proceeding, but will be noted by the examiner as being an
open question in the record. Patent owners could then file a reissue
application if they wish such questions to be resolved.
Proposed § 1.907 sets forth when reexamination is prohibited. Once an
order to reexamine has been issued under § 1.931, neither the patent
owner nor the third party requester, if any, nor privies of either, may
file a subsequent request for reexamination of the patent until a
reexamination certificate is issued under §1.997, unless authorized by
the Commissioner. Once a final decision has been entered against a party
in a civil action arising in whole or in part under 28 U.S.C. 1338 in
which the party did not sustain its burden of proving invalidity of any
patent claim in suit, then neither that party nor its privies may
thereafter request reexamination of any such patent claim on the basis
of issues which that party or its privies raised or could have raised in
such civil action, and a reexamination requested by that party or its
privies on the basis of such issues may not thereafter be maintained by
the Office.
Proposed § 1.909 provides for estoppel of third party requesters from
previous reexamination proceedings. A third party requester, or its
privy, who, during a reexamination proceeding, has filed a notice of
appeal to the Court of Appeals for the Federal Circuit, or who has
participated as a party to an appeal by the patent owner, under the
provisions of 35 U.S.C. 141 to 144, is estopped from later asserting, in
a subsequent reexamination proceeding, the invalidity of any claim
determined to be patentable on appeal on any ground which the third
party requester, or its privy, raised or could have raised during the
prior reexamination proceeding. A third party requester, or its privy,
is deemed not to have participated as a party to an appeal by the patent
owner unless, within twenty days after the patent owner has filed notice
of appeal, the third party (or its privy) files notice with the
Commissioner electing to participate.
Proposed § 1.911 provides factors for consideration of privies and
persons bound. For the purposes of § 1.907, a determination of whether
a person is a privy with respect to the patent owner shall include
consideration of whether there is: (1) a mutual, concurrent or
successive relationship to the same property rights in the patent
involved in the reexamination proceeding; or (2) representation of the
interests of the patent owner concerning the patent. For the purposes
of §§ 1.907 and 1.909, a determination of whether a person is a privy
with respect to a third party requester shall include consideration of
whether there is: (1) a mutual, concurrent or successive relationship to
the same property rights which are or may be affected by and/or infringe
the patent involved in the reexamination proceeding; or (2)
representation of the interests of the other party which are or may be
affected by and/or potentially infringe the patent. For the purposes
of §§ 1.907 and 1.909, a person who is not a party to the reexamination
proceeding but who controls or substantially participates in the control
of the presentation of the reexamination proceeding on behalf of a party
is bound by the determination of issues decided as though he or she were
a named party. To have control of the presentation requires that person
to have effective choice as to the legal theories and/or grounds of
rejection or defenses to be advanced on behalf of the party to the
reexamination proceeding. Under this section a party would be precluded
from hiring another law firm and having that firm file a subsequent
reexamination request in order to avoid the prohibitions of 35 U.S.C.
307(c) or 308.
Proposed § 1.913 sets forth procedures for any person to request
reexamination in accordance with
35 U.S.C. 302 and limits the period for such request to the period of
enforceability of the patent for which the request is filed.
Proposed § 1.915(a) requires payment of the fee for requesting
reexamination. Paragraph (b) of new
§ 1.915 indicates what each request for reexamination must include.
Paragraph (c) of new § 1.915 covers amendments which a patent owner can
propose. Such amendments can accompany a request for reexamination by
the patent owner. Paragraph (d) indicates that requests for
reexamination may be filed by attorneys or agents on behalf of a
requester, but it is noted that the real party in interest must be
identified in accordance with § 1.915(b) (10).
Proposed § 1.917 indicates what will be done if the request is
incomplete.
Proposed § 1.919 indicates the date on which the entire fee is received
will be considered to be the date of the request for reexamination..
Proposed § 1.921 provides that prior art submissions by the third party
requester filed after the reexamination order shall be limited solely to
prior art which is used to rebut a finding of fact by the examiner or a
response of the patent owner.
Proposed § 1.923 relates to a determination as to whether the request
has presented a substantial new question of patentability under 35
U.S.C. 303 and requires that the determination be made within
3 months of the filing date of the request
Proposed § 1.925 refers to the refund provisions.
Proposed § 1.927 provides for review by petition to the Commissioner of
any decision refusing reexamination.
Proposed § 1.929 provides for reexamination at the initiative of the
Commissioner under the provisions of the last sentence of paragraph (a)
of 35 U.S.C. 303.
Proposed § 1.931 provides for ordering reexamination where a substantial
new question of patentability has been found pursuant to §§ 1.923 or
1.929. Under paragraph (b), the only limitation placed on the
selection of the examiner by the Office is that the same examiner whose
decision was reversed on petition ordinarily will not conduct the
reexamination.
Proposed § 1.933 covers the duty of disclosure by a patent owner in a
reexamination proceeding involving the owner's patent.
Proposed § 1.935 indicates that the initial Office action normally
accompanies the reexamination order.
Proposed § 1.937 provides that in accordance with 35 U.S.C. 305(c),
unless otherwise provided by the Commissioner for good cause, all
reexamination proceedings will be conducted with special dispatch.
Paragraph (b) covers the basic items relating to the conduct of
reexamination proceedings.
Proposed § 1.939 provides that no paper shall be filed before the first
Office action.
Proposed § 1.941 provides for proposed amendments provided for in the
second sentence of 35 U.S.C. 305. Amendments submitted by the patent
owner cannot enlarge the scope of a claim in the patent. Amendments will
not be effectively entered into the patent until the certificate under §
1.997 and
35 U.S.C. 307 is issued.
Proposed § 1.943 provides a page limit for responses and briefs of 50
pages. Prior art references and Appendix of claims would not be
included in this total.
Proposed § 1.945 provides that a patent owner will be given at least
thirty days to respond to any Office action. Although problems may
arise in certain cases and extensions of time may be granted, it is felt
that relatively short response times are necessary in order to process
reexaminations with "special dispatch."
Proposed § 1.947 provides that in accordance with 35 U.S.C. 305 (b)(3),
if a patent owner files a response to any Office action on the merits,
the third party requester may once file written comments.
Proposed § 1.949 provides when prosecution may be closed.
Proposed § 1.951 provides for responses by the parties after an Office
action closing prosecution. The responses and time periods provided for
by paragraphs (a) and (b) may run concurrently.
Proposed § 1.953 provides that, following the responses or expiration
of the time for response in
§ 1.951, the examiner may issue a right of appeal notice which shall
include a final rejection or final decision favorable to patentability
in accordance with 35 U.S.C. 134. The intent of limiting the appeal
rights until after the examiner issues a "Right of Appeal Notice" is to
specifically preclude the possibility of one party attempting to appeal
prematurely while prosecution before the examiner is being continued by
the other party.
Proposed § 1.955 relates to the conduct of interviews in reexamination
proceedings. The third party requester is permitted to attend all
interviews. Interviews are permitted before the first Office action only
when initiated by the examiner.
Proposed § 1.957 relates to extensions of time and termination of
reexamination proceedings. In circumstances where the response by the
patent owner is not required by the examiner and is merely
discretionary, such as when all claims are allowed or their
patentability is confirmed and the patent owner is merely given the
opportunity for comment, such a failure to comment is not the type of
lack of response contemplated by paragraphs (b) and (c) and, therefore,
not grounds for termination or limiting prosecution.
Proposed § 1.958 relates to revival of terminated proceedings.
Proposed § 1.959 relates to appeals and cross appeals to the Board of
Patent Appeals and Interferences. Both patent owners and third party
requesters are given appeal rights in accordance with 35 U.S.C. 306.
Proposed § 1.961 relates to time of transfer of the jurisdiction of the
appeal over to the Board of Patent Appeals and Interferences.
Proposed § 1.962 relates to the definition of appellant and respondent.
Proposed § 1.963 relates to the time periods for filing briefs.
Proposed § 1.965 relates to the appellant brief.
Proposed § 1.967 relates to the respondent brief.
Proposed § 1.969 relates to the examiner's answer.
Proposed § 1.971 relates to the reply brief.
Proposed § 1.973 relates to the oral hearing.
Proposed § 1.975 relates to affidavits or declarations after appeal.
Proposed § 1.977 relates to the decision by the Board of Patent Appeals
and Interferences.
Proposed § 1.979 relates to the procedure following the decision by the
Board of Patent Appeals and Interferences.
Proposed § 1.981 relates to the procedure for reopening prosecution
following the decision by the Board of Patent Appeals and Interferences.
Proposed § 1.983 relates to appeals to the United States Court of
Appeals for the Federal Circuit. in accordance with 35 U.S.C. 306.
Under H.R. 1732, civil actions under 35 U.S.C. 145 are not permitted in
reexamination proceedings filed on or after January 1, 1996.
Proposed § 1.985 relates to notification of prior or concurrent
proceedings.
Proposed § 1.987 relates to the stay of concurrent proceedings.
Decisions as to whether to delay or combine cases will be made on a
case-by-case basis to minimize delays and to protect the interests of
all parties concerned.
Proposed § 1.989 relates to the merger of concurrent proceedings.
Proposed § 1.991 relates to the merger of a concurrent reissue
application and a reexamination proceeding.
Proposed § 1.993 relates to the stay of a concurrent interference and
reexamination proceeding.
Proposed § 1.995 relates to a third party requester's participation
rights being preserved in merged proceeding.
Proposed § 1.997 concerns the issuance of the reexamination certificate
under 35 U.S.C. 307 after the conclusion of reexamination proceedings.
The certificate will cancel any patent claims determined to be
unpatentable, confirm any patent claims determined to be patentable, and
incorporate into the patent any amended or new claim determined to be
patentable. Once all of the claims have been canceled from the patent,
the patent ceases to be enforceable for any purpose. Accordingly, any
pending reissue or other Office proceeding relating to a patent in which
such a certificate has been issued will be terminated. This provides a
degree of assurance to the public that patents with all the claims
canceled via reexamination proceedings will not again be asserted. It
is intended that copies of the certificate will continue to be part of
subsequently sold copies of the patent.
OTHER CONSIDERATIONS
The proposed rule changes are in conformity with the requirements of the
Regulatory Flexibility Act
(5 U.S.C. 601 et seq.), Executive Order 12612, and the Paperwork
Reduction Act of 1980, 44 U.S.C. 3501 et seq. It has been determined
that this rulemaking is not significant for the purposes of Executive
Order 12866.
The Assistant General Counsel for Legislation and Regulation of the
Department of Commerce has certified to the Chief Counsel for Advocacy,
Small Business Administration, that these proposed rule changes will not
have a significant economic impact on a substantial number of small
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal
impacts of these proposed changes are to expand the grounds for
requesting a reexamination and to permit the third party to participate
more extensively during the reexamination proceeding as well as having
appeal rights.
The Office has also determined that this notice has no Federalism
implications affecting the relationship between the National Government
and the States as outlined in Executive Order 12612.
These rule changes contain collection of information requirements
subject to the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.,
which is currently approved by the Office of Management and Budget under
Control No. 0651-0033. The public reporting burden for the collection of
information for requests for reexamination is estimated to average 2.0
hours each including the time for reviewing instructions, searching
existing data sources, gathering and maintaining the data needed, and
completing and reviewing the collection of information. Send comments
regarding this burden estimate or any other aspect of this collection of
information, including suggestions for reducing this burden to the
Office of System Quality and Enhancement, Patent and Trademark Office,
Washington, D.C. 20231, and to the Office of Information and Regulatory
Affairs, Office of Management and Budget, Washington, DC 20503 (ATTN:
Paperwork Reduction Act Project 0651-0033).
Notice is hereby given that pursuant to the authority granted to the
Commissioner of Patents and Trademarks by 35 U.S.C. 6, the Patent and
Trademark Office proposed to amend Title 37 of the Code of Federal
Regulations as set forth below.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of Information,
Inventions and patents, Reporting and record keeping requirements, Small
Businesses.
For the reasons set out in the preamble and under the authority given to
the Commissioner of Patents and Trademarks by 35 U.S.C. 6, Part I of
Title 37 CFR is proposed to be amended as set forth below.
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 would continue to read as
follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Section 1.4(a)(2) is proposed to be revised to read as follows:
§1.4 Nature of correspondence and signature requirements.
(a) * * *
(2) Correspondence in and relating to a particular
application or other proceeding in the Office. See particularly the
rules relating to the filing, processing, or other proceedings of
national applications in Subpart B, §§ 1.31 to 1.378; of international
applications in Subpart C, §§1.401 to 1.499; of reexamination of
patents filed before January 1, 1996, in Subpart D, 1.501 to 1.570, and
of reexaminations filed on or after January 1, 1996, in Subpart H, §§
1.901-1.997; of interferences in Subpart E; §§ 1.601 to 1.690; of
extension of patent term in Subpart F, §§ 1.710 to 1.785; and of
trademark applications §§2.11 to 2.189.
* * * * *
3. Section 1.6(d)(5) is proposed to be revised to read as follows:
§ 1.6 Receipt of Correspondence
* * * * *
(d)(5) A request for reexamination under §1.510 or § 1.913.
* * * * *
4. Section 1.11(c) is proposed to be revised to read as follows:
§1.11 Files open to the public.
* * * * *
(c) All requests for reexamination for which the fee under
1.20(c) has been paid, will be announced in the Official Gazette. Any
reexaminations at the initiative of the Commissioner pursuant to 1.520
or 1.929 will also be announced in the Official Gazette. The
announcement shall include at least the date of the request, if any, the
reexamination request control number or the Commissioner initiated order
control number, patent number, title, class and subclass, name of the
inventor, name of the patent owner of record, and the examining group to
which the reexamination is assigned.
* * * * *
5. Section 1.17(l) and (m) are proposed to be revised to read as
follows:
§ 1.17 Patent application processing fees.
* * * * *
(l) For filing a petition:
(1) For the revival of an unavoidably abandoned application
under 35 U.S.C. 111, 133, 364, or 371,
(2) For delayed payment of the issue fee under 35 U.S.C. 151,
or,
(3) For the revival of an unavoidably terminated
reexamination proceeding:
By a small entity (§ 1.9(f))
....................................... 55.00
By other than a small entity
.................................... 110.00
(m) For filing a petition:
(1) For revival of an unintentionally abandoned application,
(2) For the unintentionally delayed payment of the fee for
issuing a patent, or
(3) For reexamination proceedings filed on or after January
1, 1996, for the revival of an unintentionally terminated reexamination
proceeding:
By a small entity (§
1.9(f))....................................... 605.00
By other than a small entity
................................ 1, 210.00
* * * * *
6. Section 1.20(c) is proposed to be revised to read as follows:
§ 1.20 Post issuance fees.
* * * * *
(c) For filing a request for reexamination (§ 1.915(a)):
by a patent owner
..........................................$4,500.00
by a third party requester
..............................$11,000.00
* * * * *
7. Section 1.25(b) is proposed to be revised to read as follows:
§ 1.25 Deposit accounts.
* * * * *
(b) Filing, issue, appeal, international-type search report,
international application processing, petition, and post-issuance fees
may be charged against these accounts if sufficient funds are on deposit
to cover such fees. A general authorization to charge all fees, or only
certain fees, set forth in §§ 1.16 to 1.18 to a deposit account
containing sufficient funds may be filed in an individual application,
either for the entire pendency of the application or with respect to a
particular paper filed. An authorization to charge to a deposit account
the fee for a request for reexamination pursuant to § 1.510 or § 1.915
and any other fees required in a reexamination proceeding in a patent
may also be filed with the request for reexamination. An authorization
to charge a fee to a deposit account will not be considered payment of
the fee on the date the authorization to charge the fee is effective as
to the particular fee to be charged unless sufficient funds are present
in the account to cover the fee.
8. Section 1.26(c) is proposed to be revised to read as follows:
§ 1.26 Refunds.
* * * * *
(c) If the Commissioner decides not to institute a reexamination
proceeding, for reexaminations filed on or after January 1, 1996, a
refund of seventy-five percent (75%) of the fee paid for filing the
request for reexamination will be made to the requester. Reexamination
requesters should indicate whether any refund should be made by check or
by credit to a deposit account.
9. Section 1.112 is proposed to be revised to read as follows:
§ 1.112 Reconsideration.
After response by applicant or patent owner (§ 1.111), the
application or patent under reexamination will be reconsidered and again
examined. The applicant or patent owner will be notified if claims are
rejected, or objections or requirements made, in the same manner as
after the first
examination. Applicant or patent owner may respond to such Office
action in the same manner
provided in § 1.111, with or without amendment. Any amendments after
the second Office action must ordinarily be restricted to the rejection
or to the objections or requirements made. The application or patent
under reexamination will be again considered, and so on repeatedly,
unless the examiner has
indicated that the action is final or is an action closing prosecution.
10. Section 1.113(a) is proposed to be revised to read as follows:
§1.113 Final rejection or action.
(a) On the second or any subsequent examination or consideration
the rejection or other action may be made final, whereupon applicant's
or (for reexaminations filed before January 1, 1996) patent owner's
response is limited to appeal in the case of rejection of any claim (§
1.191), or to amendment as specified in § 1.116. Petition may be taken
to the Commissioner in the case of objections or requirements not
involved in the rejection of any claim (§1.181). Response to a final
rejection or action must include cancellation of, or appeal from the
rejection of, each rejected claim. If any claim stands allowed, the
response to a final rejection or action must comply with any
requirements or objection as to form.
* * * * *
11. Section 1.115 is proposed to be revised to read as follows:
§ 1.115 Amendment.
The applicant may amend before or after the first examination and
action and also after the second or subsequent examination or
reconsideration as specified in §1.112 or when and as specifically
required by the examiner. For reexaminations filed before January 1,
1996, the patent owner may amend in accordance with §§ 1.510(e) and
1.530(b) prior to reexamination, and during reexamination
proceedings in accordance with §§ 1.112 and 1.116. For reexaminations
filed on or after January 1, 1996, the patent owner may amend in
accordance with § 1.915(c) prior to reexamination, and during
reexamination proceedings in accordance with §§ 1.941 and 1.945.
12. Section 1.116(a) is proposed to be revised to read as follows:
§ 1.116 Amendments after final action.
(a) After final rejection or action (§ 1.113) or action closing
prosecution (§ 1.949) for reexaminations filed on or after January 1,
1996, amendments may be made cancelling claims or complying with any
requirement of form which has been made. Amendments presenting rejected
claims in better form for consideration on appeal may be admitted. The
admission of, or refusal to admit, any amendment after final rejection,
and any proceedings relative thereto, shall not operate to relieve the
application or patent under reexamination from its condition as subject
to appeal or to save the application from abandonment under § 1.135.
Notwithstanding the above, for reexamination proceedings filed on or
after January 1, 1996, no appeal may be had until a right of appeal
notice has been issued pursuant to § 1.953.
* * * * *
13. Section 1.136(a) (2) and (b) are proposed to be revised to read as
follows:
§ 1.136 Filing of timely responses with petition and fee for extension
of time and extensions of time for cause.
(a) * * *
(2) The date on which the response, the petition, and the fee
have been filed is the date of the response and also the date for
purposes of determining the period of extension and the corresponding
amount of the fee. The expiration of the time period is determined by
the amount of the fee paid. In no case may an applicant respond later
than the maximum time period set by statute, or be granted an extension
of time under paragraph (b) of this section when the provisions of this
paragraph are available. See § 1.136(b) for extensions of time relating
to proceedings pursuant to § 1.193(b), 1.194, 1.196 or 1.197. See
§1.304 for extension of time to appeal to the U.S. Court of Appeals for
the Federal Circuit or to commence a civil action. See § 1.550(c) for
extension of time in reexamination proceedings filed before January 1,
1996, § 1.957 for extension of time in reexamination proceedings filed
on or after January 1, 1996, and § 1.645 for extension of time in
interference proceedings.
(b) When a response with petition and fee for extension of time
cannot be filed pursuant to paragraph (a) of this section, the time for
response will be extended only for sufficient cause and for a reasonable
time specified. Any request for such extension must be filed on or
before the day on which action by the applicant is due, but in no case
will the mere filing of the request effect any extension. In no case can
any extension carry the date on which response to an Office action is
due beyond the maximum time period set by statute or be granted when the
provisions of paragraph (a) of this section are available. See § 1.304
for extension of time to appeal to the U.S. Court of Appeals for the
Federal Circuit or to commence a civil action, § 1.645 for extension of
time in interference proceedings,
§ 1.550(c) for extension of time in reexamination proceedings filed
before January 1, 1996, and § 1.957 for extension of time in
reexamination proceedings filed on or after January 1, 1996.
14. Section 1.137(g) and (h) are proposed to be added and the Section
heading revised to read as follows:
§ 1.137 Revival of abandoned application, lapsed patent or terminated
reexamination.
* * * * *
(g) A reexamination proceeding filed before January 1, 1996, which
is terminated for failure to prosecute may be revived as a pending
proceeding if it is shown to the satisfaction of the Commissioner that
the delay was unavoidable. A petition to revive an unavoidably
terminated reexamination proceeding must be promptly filed after the
patent owner is notified of, or otherwise becomes aware of, the
termination of the proceeding, and must be accompanied by:
(1) a proposed response to continue prosecution of that
proceeding unless it has been previously filed;
(2) the petition fee as set forth in § 1.17(l); and
(3) a showing that the delay was unavoidable. The showing must
be a verified showing if made by a person not registered to practice
before the Patent and Trademark Office.
(h) For reexamination proceedings filed on or after January 1,
1996, see § 1.958.
15. Section 1.191(a) is proposed to be revised to read as follows:
§ 1.191 Appeal to Board of Patent Appeals and Interferences.
(a) Every applicant for a patent or for reissue of a patent, or
every owner of a patent under reexamination (for reexaminations filed
before January 1, 1996), any of the claims of which have been twice
rejected or who has been given a final rejection (§ 1.113), may, upon
the payment of the fee set forth in § 1.17(e), appeal from the decision
of the examiner to the Board of Patent Appeals and Interferences within
the time allowed for response. Notwithstanding the above, for
reexamination proceedings filed on or after January 1, 1996, § 1.959 et
seq., is controlling.
* * * * *
16. Section 1.192(a) is proposed to be revised to read as follows:
§ 1.192 Appellant's brief.
(a) The appellant shall, within 2 months from the date of the
notice of appeal under § 1.191 in an application, reissue application,
or patent under reexamination (for reexaminations filed before January
1, 1996), or within the time allowed for response to the action appealed
from, if such time is later, file a brief in triplicate. The brief must
be accompanied by the requisite fee set forth in § 1.17(f) and must set
forth the authorities and arguments on which the appellant will rely to
maintain the appeal. Any arguments or authorities not included in the
brief may be refused consideration by the Board of Patent Appeals and
Interferences. Notwithstanding the above, for reexamination proceedings
filed on or after January 1, 1996, § 1.965 is controlling.
* * * * *
17. Section 1.193 is proposed to be amended by adding a paragraph (c)
to read as follows:
§ 1.193 Examiner's answer.
* * * * *
(c) Notwithstanding the above, for reexamination proceedings filed
on or after January 1, 1996, §§ 1.969 and 1.971 are controlling.
18. Section 1.194 is proposed to be amended by adding a paragraph (d)
to read as follows:
§ 1.194 Oral hearing.
* * * * *
(d) Notwithstanding the above, for reexamination proceedings filed
on or after January 1, 1996, § 1.973 is controlling.
19. Section 1.195 is proposed to be revised to read as follows:
§ 1.195 Affidavits or declarations after appeal.
Affidavits, declarations, or exhibits submitted after the case has
been appealed will not be admitted without a showing of good and
sufficient reasons why they were not earlier presented.
Notwithstanding the above, for reexamination proceedings filed on or
after January 1, 1996, § 1.975 is controlling.
20. Section 1.196 is proposed to be amended by adding a paragraph (g)
to read as follows:
§ 1.196 Decision by the Board of Patent Appeals and Interferences.
* * * * *
(g) Notwithstanding the above, for reexamination proceedings filed
on or after January 1, 1996, § 1.977 is controlling.
21. Section 1.197 is proposed to be amended by adding a paragraph (d)
to read as follows:
§ 1.197 Action following decision.
* * * * *
(d) Notwithstanding the above, for reexamination proceedings filed
on or after January 1, 1996, § 1.979 is controlling.
22. Section 1.198 is proposed to be revised to read as follows:
§ 1.198 Reopening after decision.
Cases which have been decided by the Board of Patent Appeals and
Interferences will not be reopened or reconsidered by the primary
examiner except under the provisions of § 1.196 without the written
authority of the Commissioner, and then only for the consideration of
matters not already adjudicated, sufficient cause being shown.
Notwithstanding the above, for reexamination proceedings filed on or
after January 1, 1996, § 1.981 is controlling.
23. Section 1.301 is proposed to be revised to read as follows:
§ 1.301 Appeal to U.S. Court of Appeals for the Federal Circuit.
Any applicant or any owner of a patent involved in a reexamination
proceeding (filed before January 1, 1996) dissatisfied with the
decision of the Board of Patent Appeals and Interferences, and any party
to an interference dissatisfied with the decision of the Board of Patent
Appeals and Interferences, may appeal to the U.S. Court of Appeals for
the Federal Circuit. The appellant must take the following steps in such
an appeal: In the Patent and Trademark Office file a written notice of
appeal directed to the Commissioner (see §§ 1.302 and 1.304); and in
the Court, file a copy of the notice of appeal and pay the fee for
appeal as provided by the rules of the Court. Notwithstanding the
above, for reexamination proceedings filed on or after January 1, 1996,
§ 1.983 is controlling.
24. Section 1.303 is proposed to be amended by revising paragraphs (a)
and (b) and adding a new paragraph (d) to read as follows:
§ 1.303 Civil action under 35 U.S.C. 145, 146, 306.
(a) Any applicant or any owner of a patent involved in a
reexamination proceeding (filed before January 1, 1996) dissatisfied
with the decision of the Board of Patent Appeals and Interferences, and
any party dissatisfied with the decision of the Board of Patent Appeals
and Interferences may, instead of appealing to the U.S. Court of Appeals
for the Federal Circuit (§ 1.301), have remedy by civil action under 35
U.S.C. 145 or 146, as appropriate. Such civil action must be commenced
within the time specified in § 1.304.
(b) If an applicant in an ex parte case or an owner of a patent
involved in a reexamination proceeding (filed before January 1, 1996)
has taken an appeal to the U.S.Court of Appeals for the Federal Circuit,
he or she thereby waives his or her right to proceed under 35 U.S.C.
145.
* * * * *
(d) For reexamination proceedings filed on or after January 1,
1996, no remedy by civil action under 35 U.S.C. 145 is available.
25. Section 1.304(a)(2) is proposed to be revised to read as follows:
§ 1.304 Time for appeal or civil action.
(a) * * *
(2) The time periods set forth in this section are not subject
to the provisions of §§ 1.136, 1.550(c), 1.957 or 1.645 (a) or (b).
* * * * *
26. The heading for Subpart D is proposed to be revised to read as
follows:
Subpart D -- Reexamination of Patents for Proceedings Filed Before
January 1, 1996
(For Proceedings beginning on or after January 1,
1996, see Subpart H)
27. Subpart H is proposed to be added to read as follows:
Subpart H -- Reexamination of Patents for Proceedings Filed On or
After January 1, 1996
(For Proceedings beginning Before January 1, 1996,
see Subpart D)
§ 1.901 Citation of prior art in patent files.
§ 1.902 Processing of prior art citations in patent files during a
reexamination proceeding.
REEXAMINATION PROCEEDINGS
§ 1.903 Service of papers on parties.
§ 1.904 Notice of reexamination in Official Gazette.
§ 1.905 Submission of papers by public.
§ 1.906 Scope of reexamination in reexamination proceeding.
§ 1.907 Reexamination prohibited.
§ 1.909 Estoppel of third party requester from previous reexamination
proceedings.
§ 1.911 Privies and persons bound.
DETERMINING IF REEXAMINATION WILL BE ORDERED
§ 1.913 Persons eligible.
§ 1.915 Content of request.
§ 1.917 Omission of a requirement in the request for reexamination.
§ 1.919 Filing date for request for reexamination.
§ 1.921 Submission of prior art by third party following the order for
reexamination.
§ 1.923 Examiner's consideration of the request for reexamination.
§ 1.925 Partial refund if request is denied.
§ 1.927 Petition to review denial of the request for reexamination.
REEXAMINATION OF PATENTS
§ 1.929 Reexamination at the initiative of the Commissioner.
§ 1.931 Order to reexamine.
INFORMATION DISCLOSURE
§ 1.933 Information material to patentability in reexamination proceedings.
OFFICE ACTIONS AND RESPONSES (BEFORE THE EXAMINER)
§ 1.935 Initial Office action normally accompanies order to reexamine.
§ 1.937 Conduct of Reexamination.
§ 1.939 Unauthorized papers.
§ 1.941 Amendments by patent owner and their effective date.
§ 1.943 Length of responses and briefs.
§ 1.945 Response by patent owner.
§ 1.947 Response by third party requester to patent owner's response.
§ 1.949 Examiner's Office action closing prosecution.
§ 1.951 Responses after Office action closing prosecution.
§ 1.953 Examiner's Right of Appeal Notice.
INTERVIEWS
§ 1.955 Interviews in reexamination proceedings.
EXTENSIONS OF TIME AND REVIVAL OF PROCEEDINGS
§ 1.957 Extensions of time and cause for termination in reexamination
proceedings.
§ 1.958 Revival of terminated proceedings.
APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES
§ 1.959 Notice of appeal and cross appeal to Board of Patent Appeals and
Interferences.
§ 1.961 Jurisdiction over appeal.
§ 1.962 Appellant and respondent defined.
§ 1.963 Time for filing briefs.
§ 1.965 Appellant brief.
§ 1.967 Respondent brief.
§ 1.969 Examiner's answer.
§ 1.971 Reply brief.
§ 1.973 Oral hearing.
§ 1.975 Affidavits or declarations after appeal.
§ 1.977 Decision by the Board of Patent Appeals and Interferences.
§ 1.979 Action following decision.
§ 1.981 Reopening after decision.
APPEAL TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
§ 1.983 Appeal to the United States Court of Appeals for the Federal
Circuit.
PROCEEDINGS INVOLVING SAME PATENT AS IN REEXAMINATION
§ 1.985 Notification of prior or concurrent proceedings.
§ 1.987 Stay of concurrent proceeding.
§ 1.989 Merger of concurrent reexamination proceedings.
§ 1.991 Merger of concurrent reissue application and reexamination
proceeding.
§ 1.993 Stay of concurrent interference and reexamination proceeding.
§ 1.995 Third party requester's participation rights preserved in merged
proceeding.
CERTIFICATE
§ 1.997 Issuance of reexamination certificate after reexamination
proceedings.
§ 1.901 Citation of prior art in patent files.
(a) At any time during the period of enforceability of a patent,
any person may cite to the Patent and Trademark Office in writing prior
art consisting of patents or printed publications which that person
states to be pertinent and applicable to the patent and believes to have
a bearing on the patentability of any claim of a particular patent. If
the citation is made by the patent owner, the explanation of pertinency
and applicability may include an explanation of how the claims differ
from the prior art.
(b) If the person making the citation wishes his or her identity
to be excluded from the patent file and kept confidential, the citation
papers must be submitted without any identification of the person making
the submission.
(c) Citations of patent or printed publications by the public in
patent files should either:
(1) reflect that a copy of the same has been mailed to
the patent owner at the address as provided for in § 1.33(c); or in the
event service is not possible,
(2) be filed with the Office in duplicate.
(d) Except as provided in §1.902, citations submitted in
accordance with this section will be placed and made of record in the
patent file.
§ 1.902 Processing of prior art citations in patent files during a
reexamination proceeding.
Citations by the patent owner in accordance with § 1.933 and by a
reexamination third party requester under § 1.915 will be entered in the
patent file. The entry in the patent file of other citations submitted
after the date of an order to reexamine pursuant to § 1.931 will be
delayed until the reexamination proceeding has been terminated.
REEXAMINATION PROCEEDINGS
§ 1.903 Service of papers on parties.
The patent owner and any third party requester will be sent copies
of Office actions issued during the reexamination proceeding. After
filing of a request for reexamination by a third party requester, any
document filed by either the patent owner or the third party requester
must be served on every other party in the reexamination proceeding in
the manner provided in § 1.248. Any document must reflect service or the
document may be refused consideration by the Office. The failure of the
third party requester, if any, to timely file or serve documents may
result in their being refused consideration.
§ 1.904 Notice of reexamination in Official Gazette.
A notice of the filing of a reexamination request or initiation of
a Commissioner-ordered reexamination will be published in the Official
Gazette. The notice published in the Official Gazette under § 1.11(c)
will be considered to be constructive notice of the reexamination
proceeding and
reexamination will proceed.
§ 1.905 Submission of papers by public.
Unless specifically provided for, no submissions on behalf of any
third parties other than third party requesters as defined in 35 U.S.C.
100(e) will be considered unless such submissions are in accordance with
§ 1.915 or entered in the patent file prior to the date of the order to
reexamine pursuant to § 1.931. Submissions by third parties, other than
third party requesters, filed after the date of the order to reexamine
pursuant to § 1.931, must meet the requirements of
§ 1.901(a) through (c) and will be treated in accordance with § 1.902.
§ 1.906 Scope of reexamination in reexamination proceeding.
(a) Claims in a reexamination proceeding will be examined on the
basis of patents or printed publications and on the basis of the
requirements of 35 U.S.C. 112 except for the best mode requirement.
(b) Claims in a reexamination proceeding must not enlarge the
scope of the claims of the patent.
(c) Questions other than those indicated in paragraphs (a) and (b)
of this section will not be resolved in a reexamination proceeding. If
such questions are raised by the patent owner or third party requester
during a reexamination proceeding, the existence of such questions will
be noted by the examiner in the next Office action, in which case the
patent owner may desire to consider the advisability of filing a reissue
application to have such questions considered and resolved.
§ 1.907 Reexamination prohibited.
(a) Once an order to reexamine has been issued under § 1.931,
neither the patent owner nor the third party requester, if any, nor
privies of either, may file a subsequent request for reexamination of
the patent until a reexamination certificate is issued under § 1.997,
unless authorized by the Commissioner.
(b) Once a final decision has been entered against a party in a
civil action arising in whole or in part under 28 U.S.C. 1338 that the
party has not sustained its burden of proving invalidity of any patent
claim in suit, then neither that party nor its privies may thereafter
request reexamination of any such patent claim on the basis of issues
which that party or its privies raised or could have raised in such
civil action, and a reexamination requested by that party, or its
privies, on the basis of such issues may not thereafter be maintained by
the Office.
§ 1.909 Estoppel of third party requester from previous reexamination
proceedings.
A third party requester, or its privy, who, during a reexamination
proceeding, has filed a notice of appeal to the Court of Appeals for the
Federal Circuit, or who has participated as a party to an appeal by the
patent owner, under the provisions of 35 U.S.C. 141 to 144, is estopped
from later asserting, in a subsequent reexamination proceeding, the
invalidity of any claim determined to be patentable on appeal on any
ground which the third party requester, or its privy, raised or could
have raised during the prior reexamination proceeding. A third party
requester, or its privy, is deemed not to have participated as a party
to an appeal by the patent owner unless, within twenty days after the
patent owner has filed notice of appeal, the third party, or its privy,
files notice with the Commissioner electing to participate.
§ 1.911 Privies and persons bound.
(a) For the purposes of § 1.907, a determination of whether a
person is a privy with respect to the patent owner shall include
consideration of whether there is:
(1) a mutual, concurrent or successive relationship to the
same property rights in the patent involved in the reexamination
proceeding; or
(2) representation of the interests of the patent owner
concerning the patent.
(b) For the purposes of §§ 1.907 and 1.909, a determination of
whether a person is a privy with respect to a third party requester
shall include consideration of whether there is:
(1) a mutual, concurrent or successive relationship to the
same property rights which are or may be affected by and/or infringe the
patent involved in the reexamination proceeding; or
(2) representation of the interests of the other party which
are or may be affected by and/or potentially infringe the patent.
(c) For the purposes of §§ 1.907 and 1.909, a person who is not a
party to the reexamination proceeding but who controls or substantially
participates in the control of the presentation of the reexamination
proceeding on behalf of a party is bound by the determination of issues
decided as though he or she were a named party. To have control of the
presentation requires that person to have effective choice as to the
legal theories and/or grounds of rejection or defenses to be advanced on
behalf of the party to the reexamination proceeding.
DETERMINING IF REEXAMINATION WILL BE ORDERED
§ 1.913 Persons eligible.
Except as otherwise provided, any person may, at any time during
the period of enforceability of a patent, file a request for
reexamination by the Patent and Trademark Office of any claim of the
patent on the basis of prior art patents or printed publications cited
under § 1.901 or on the basis of the requirements of 35 U.S.C. 112
except for the best mode requirement.
§ 1.915 Content of request.
(a) The request must be accompanied by the fee for requesting
reexamination set in § 1.20(c).
(b) Any request for reexamination must include the following
parts:
(1) A statement pointing out each substantial new question of
patentability based on prior patents and printed publications or based
on the manner in which the patent specification or claims fail to comply
with the requirements of 35 U.S.C. 112 except for the best mode
requirement.
(2) An identification of every claim for which reexamination is
requested.
(3) A detailed explanation of the pertinency and manner of
applying the cited prior art to every claim for which reexamination is
requested or a detailed explanation of the manner in which the
specification or claim(s) fail to comply with 35 U.S.C. 112 except for
the best mode requirement. If appropriate, the party requesting
reexamination may also point out how claims distinguish over cited prior
art or how 35 U.S.C. 112 requirements are complied with except for the
best mode requirement.
(4) A copy of every patent or printed publication relied upon or
referred to in paragraphs (b)(1) and (3) of this section accompanied by
an English language translation of all the necessary and pertinent parts
of any non-English language document.
(5) The entire patent for which reexamination is requested must
be furnished in the form of cut-up copies of the original patent with
only a single column of the printed patent securely mounted or
reproduced in permanent form on one side of a separate paper. A copy of
any disclaimer, certificate of
correction, or reexamination certificate issued in the patent must also
be included.
(6) A certification that a copy of the request filed by a person
other than the patent owner has been served in its entirety on the
patent owner at the address as provided for in § 1.33(c). The name and
address of the party served must be indicated. If service was not
possible, a duplicate copy must be supplied to the Office.
(7) If the patent is currently involved in a reexamination
proceeding for which a reexamination certificate has not been issued, a
certification that the person making the request is not a privy of the
patent owner or third party requester, unless otherwise authorized by
the Commissioner.
(8) In a request filed by a third party requester, a
certification that:
(i) no final decision has been entered against that party or
its privies in a civil action arising in whole or in part under 28
U.S.C. 1338 in which that party or its privies did not sustain its
burden of proving the invalidity of any patent claim in suit, and
(ii) neither that party nor its privies are requesting
reexamination of any such patent
claim on the basis of issues which that party or its privies raised or
could have raised in such civil action.
(9) In a request filed by a third party requester, a
certification that the request does not assert the invalidity of any
claim determined to be patentable on appeal on any ground which the
third party requester or its privy raised or could have raised during a
prior reexamination proceeding in which that party or its privies filed
a notice of appeal to the Court of Appeals for the Federal Circuit
and/or participated as a party to an appeal by the patent owner, under
the provisions of 35 U.S.C. 141 to 144.
(10) A statement identifying the real party in interest to the
extent necessary for a subsequent person filing a reexamination request
to determine whether that person is a privy.
(c) A request filed by the patent owner may include a proposed
amendment in accordance with
§ 1.121(f).
(d) If a request is filed by an attorney or agent identifying
another party on whose behalf the request is being filed, the attorney
or agent must have a power of attorney from that party or be acting in a
representative capacity pursuant to § 1.34(a).
§ 1.917 Omission of a requirement in the request for reexamination.
If the request is not accompanied by the fee for requesting
reexamination or all of the other parts required by § 1.915, the person
identified as requesting reexamination will be so notified and given an
opportunity to complete the request within a specified time. If the fee
for requesting reexamination has been paid but the defect in the request
is not corrected within the specified time, the determination whether or
not to institute reexamination will be made on the request as it then
exists. If the fee for requesting reexamination has not been paid, no
determination will be made and the request will be placed in the patent
file as a citation if it complies with the requirements of § 1.901
and/or § 1.902.
§ 1.919 Filing date for request for reexamination.
The filing date of the request is the date on which the request
including the entire fee for requesting reexamination is received; or,
if the request is not initially accompanied by the entire fee, the date
on which the last portion of the fee is received in the Patent and
Trademark Office.
§ 1.921 Submission of prior art by third party following the order for
reexamination.
Prior art submissions by the third party requester filed after the
reexamination order shall be limited solely to prior art which is used
to rebut a finding of fact by the examiner or a response of the patent
owner.
§ 1.923 Examiner's consideration of the request for reexamination.
Within three months following the filing date of a request for
reexamination, an examiner will consider the request and determine
whether or not a substantial new question of patentability affecting any
claim of the patent is raised by the request and the prior art cited
therein, with or without consideration of other patents or printed
publications, or by the failure of the patent specification or claim(s)
to comply with the requirements of 35 U.S.C. 112 except for the best
mode requirement. The examiner's determination will be based on the
claims in effect at the time of the determination and will become a part
of the official file of the patent and will be mailed to the patent
owner at the address as provided for in § 1.33(c) and to the person
requesting reexamination.
§ 1.925 Partial refund if request is denied.
Where no substantial new question of patentability has been found,
a refund of a portion of the fee for requesting reexamination will be
made to the requester in accordance with § 1.26(c).
§ 1.927 Petition to review denial of the request for reexamination.
The requester may seek review by a petition to the Commissioner under
§ 1.181 within one month of the mailing date of the examiner's
determination refusing reexamination. Any such petition must comply with §
1.181(b). If no petition is timely filed or if the decision on petition
affirms that no substantial new question of patentability has been raised,
the determination shall be final and nonappealable.
REEXAMINATION OF PATENTS
§ 1.929 Reexamination at the initiative of the Commissioner.
The Commissioner, at any time during the period of enforceability of
a patent, may determine whether or not a substantial new question of
patentability is raised by patents or printed publications which have been
discovered by the Commissioner or which have been brought to the
Commissioner's attention or by the failure of the patent specification or
claim(s) to comply with the requirements of
35 U.S.C. 112 except for the best mode requirement. The Commissioner may
order reexamination even though no request for reexamination has been filed
in accordance with § 1.915. Normally requests from outside the Patent and
Trademark Office that the Commissioner undertake reexamination on his or
her own initiative will not be considered. Any determination to initiate
reexamination under this section will become a part of the official file of
the patent and will be given or mailed to the patent owner at the address
as provided for in § 1.33(c).
§ 1.931 Order to reexamine.
(a) If a substantial new question of patentability is found, the
determination will include an order for reexamination of the patent for
resolution of the question.
(b) If the order for reexamination resulted from a petition pursuant
to § 1.927, the reexamination will ordinarily be conducted by an examiner
other than the examiner responsible for the initial determination under §
1.923.
INFORMATION DISCLOSURE
§ 1.933 Information material to patentability in reexamination proceedings.
(a) A patent by its very nature is affected with a public interest.
The public interest is best served, and the most effective reexamination
occurs when, at the time a reexamination proceeding is being conducted, the
Office is aware of and evaluates the teachings of all information material
to patentability in a reexamination proceeding. Each individual associated
with the patent owner in a reexamination proceeding has a duty of candor
and good faith in dealing with the Office, which includes a duty to
disclose to the Office all information known to that individual to be
material to patentability in a reexamination proceeding. The individuals
who have a duty to disclose to the Office all information known to them to
be material to patentability in a reexamination proceeding are the patent
owner, each attorney or agent who represents the patent owner, and every
other individual who is substantively involved on behalf of the patent
owner in a reexamination proceeding. The duty to disclose the information
exists with respect to each claim pending in the reexamination proceeding
until the claim is cancelled. Information material to the patentability of
a cancelled claim need not be submitted if the information is not material
to patentability of any claim remaining under consideration in the
reexamination proceeding. The duty to disclose all information known to be
material to patentability in a reexamination proceeding is deemed to be
satisfied if all information known to be material to patentability of any
claim in the patent after issuance of the reexamination certificate was
cited by the Office or submitted to the Office in an information disclosure
statement. However, the duties of candor, good faith, and disclosure have
not been complied with if any fraud on the Office was practiced or
attempted or the duty of disclosure was violated through bad faith or
intentional misconduct by, or on behalf of, the patent owner in the
reexamination proceeding. Any information disclosure statement must be
filed with the items listed in § 1.98(a) as applied to individuals
associated with the patent owner in a reexamination proceeding, and should
be filed within two months of the date of the order for reexamination, or
as soon thereafter as possible.
(b) Under this section, information is material to patentability in a
reexamination proceeding when it is not cumulative to information of record
or being made of record in the reexamination proceeding, and
(1) It is a patent or printed publication that establishes, by
itself or in combination with other patents or printed publications, a
prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the patent
owner takes in:
(i) Opposing an argument of unpatentability relied on by the
Office, or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability of a claim pending in a reexamination
proceeding is established when the information compels a conclusion that a
claim is unpatentable under the preponderance of evidence, burden-of-proof
standard, giving each term in the claim its broadest reasonable
construction consistent with the specification, and before any
consideration is given to evidence which may be submitted in an attempt to
establish a contrary conclusion of patentability.
(c) The responsibility for compliance with this section rests upon
the individuals designated in paragraph (a) of this section, and no
evaluation will be made by the Office in the reexamination proceeding as to
compliance with this section. If questions of compliance with this section
are discovered during a reexamination proceeding, they will be noted as
unresolved questions in accordance with § 1.906(c).
OFFICE ACTIONS AND RESPONSES (BEFORE THE EXAMINER)
§ 1.935 Initial Office action normally accompanies order to reexamine.
The order for reexamination will normally be accompanied by the
initial Office action on the merits of the reexamination.
§ 1.937 Conduct of Reexamination.
(a) All reexamination proceedings, including any appeals to the
Board of Patent Appeals and Interferences, will be conducted with special
dispatch within the Office, unless the Commissioner makes a determination
that there is good cause for suspending the reexamination proceeding. A
final determination that good cause exists shall not be made until the
patent owner and third party requesters (if any) have had a reasonable
opportunity to comment on or oppose any suspension.
(b) Except as otherwise provided, the reexamination proceeding will
be conducted in accordance with the sections governing the application
examination process; §§ 1.104 through 1.119, and will result in the
issuance of a reexamination certificate under § 1.997.
§ 1.939 Unauthorized papers.
Unless authorized by the reexamination regulations (§§ 1.901-1.997),
no paper shall be filed prior to the first Office action. If an
unauthorized paper is filed by the patent owner or third party requester,
it will not be considered in making the determination under § 1.923 and
will be returned.
§ 1.941 Amendments by patent owner and their effective date.
(a) Any proposed amendment to the description and claims must be made
in accordance with
§ 1.121(f) and be accompanied by an explanation of the support for the
proposed amendment in the disclosure of the patent. No amendment may
enlarge the scope of the claims of the patent or introduce new matter. No
amendment may be proposed for entry in an expired patent. Moreover, no
amendment will be incorporated into the patent by certificate issued after
the expiration of the patent.
(b) Amendments made to a patent during a reexamination proceeding
will not be effective until a reexamination certificate is issued.
§ 1.943 Length of responses and briefs.
Responses and appellant briefs by the patent owner (including
amendments) and third party requester, if any, shall not exceed 50 pages in
length, excluding Appendix of claims and reference materials such as prior
art references. All further briefs by any party shall not exceed 35 pages
in length.
§ 1.945 Response by patent owner.
The patent owner will be given at least thirty (30) days to respond
to any Office action. Such response may include arguments in response to
any rejections and/or proposed amendments or new claims to place the patent
in condition where all claims, if amended as proposed, would be patentable.
§ 1.947 Response by third party requester to patent owner's response.
If the patent owner files a response to an Office action, any third
party requester may once file written comments within a period of one month
from the date of service of the patent owner's response. These comments
shall be limited to issues covered by the action or the patent owner's
response.
§ 1.949 Examiner's Office action closing prosecution.
Upon consideration of the issues and/or grounds of rejection a second
or subsequent time, or upon allowance of all claims, the examiner shall
issue an Office action treating all claims present in the reexamination
proceeding, which may be an action closing prosecution. An action will not
normally close prosecution if it includes a new ground of rejection which
was not previously addressed by the patent owner, unless the new ground was
necessitated by an amendment.
§ 1.951 Responses after Office action closing prosecution.
(a) After any action closing prosecution issued by the examiner,
the third party requester may once file written comments limited to the
issues raised in the Office action closing prosecution. Such comments must
be filed within the time set for response in the action closing
prosecution. When the third party requester does file such comments, the
patent owner may file comments responding to the third party requester's
comments within one month from the date of service of the third party
requester's comments on the patent owner.
(b) After any action closing prosecution issued by the examiner, the
patent owner may once file written comments limited to the issues raised in
the reexamination proceeding and/or present a proposed amendment to the
claims which amendment will be subject to the criteria of § 1.116 as to
whether it shall be entered and/or considered. Such comments and/or
proposed amendments must be filed within the time set for response in the
action closing prosecution. Where the patent owner does file such comments
and/or proposed amendment, the third party requester may file comments
responding to such comments and/or proposed amendments by the patent owner
within one month from the date of service of patent owner's comments and/or
proposed amendment on the third party requester.
§ 1.953 Examiner's Right of Appeal Notice.
Upon considering the responses of the patent owner and any third
party requester subsequent to the Office action closing prosecution, or
upon expiration of the time for submitting such responses, the examiner
shall issue a "Right of Appeal Notice," unless the examiner reopens
prosecution. The "Right of Appeal Notice" shall include a final rejection
and/or final decision favorable to patentability which shall identify the
status of each claim and reasons for patentability or grounds of rejection
for each claim. It shall set a
30-day or one month time period, whichever is longer, for either party to
appeal. If no appeal follows, the reexamination proceeding will be
terminated and the Commissioner will proceed to issue a certificate under §
1.997 in accordance with the last action of the Office.
INTERVIEWS
§ 1.955 Interviews in reexamination proceedings.
(a) Interviews in reexamination proceedings pending before the Office
between examiners and the owners of such patents or their attorneys or
agents of record must be had in the Office at such times, within Office
hours, as the respective examiners may designate. Interviews will not be
permitted at any other time or place without the authority of the
Commissioner. Interviews should be arranged for in advance. A third party
requester may not initiate an interview. A third party requester has a
right to participate in an interview initiated by the patent owner or the
examiner and must be given adequate notice and opportunity to participate.
A senior level Office official will be present when the interview is
attended by a third party requester.
(b) Interviews for the discussion of the patentability of claims in
patents involved in reexamination proceedings will not be initiated by the
patent owner prior to the first office action thereon.
(c) In every instance of an interview with an examiner, each party
must present a statement of the issues which were discussed. An interview
does not remove the necessity for response to Office actions as specified
in § 1.111.
EXTENSIONS OF TIME AND REVIVAL OF PROCEEDINGS
§ 1.957 Extensions of time and cause for termination in reexamination
proceedings.
(a) The time for taking any action by a patent owner or third party
requester in a reexamination proceeding will be extended only for
sufficient cause, and for a reasonable time specified. Any request for
such extension must be filed on or before the day on which action by the
patent owner or third party requester is due, but in no case will the mere
filing of a request effect any extension. See § 1.304(a) for extensions of
time for filing a notice of appeal to the U.S. Court of Appeals for the
Federal Circuit.
(b) If the patent owner fails to file a timely and appropriate response
to any Office action in a reexamination proceeding, the reexamination
proceeding will be terminated and the Commissioner will proceed to issue a
certificate under § 1.997 in accordance with the last action of the
Office, unless there is a third party requester and claims are found
patentable.
(c) If there is a third party requester and claims are found patentable,
and the patent owner fails to file a timely and appropriate response to any
action in a reexamination proceeding, prosecution will be limited to claims
found patentable at the time of the failure to respond and to claims which
do not enlarge the scope of the claims found patentable at that time.
§ 1.958 Revival of terminated proceedings.
(a) A reexamination proceeding terminated for failure to prosecute may
be revived as a pending proceeding if it is shown to the satisfaction of
the Commissioner that the delay was unavoidable. A petition to revive an
unavoidably terminated reexamination proceeding must be promptly filed
after the patent owner is notified of, or otherwise becomes aware of, the
termination of the proceeding, and must be accompanied by:
(1) a proposed response to continue prosecution of that proceeding
unless it has been previously filed;
(2) the petition fee as set forth in § 1.17(l); and
(3) a showing that the delay was unavoidable. The showing must be a
verified showing if made by a person not registered to practice before the
Patent and Trademark Office.
(b) A reexamination proceeding terminated for failure of the patent
owner to prosecute may be revived as a pending proceeding if the delay in
prosecution was unintentional. A petition to revive an unintentionally
terminated reexamination proceeding must be:
(1) accompanied by a proposed response to continue prosecution of that
proceeding unless it has been previously filed;
(2) accompanied by the petition fee as set forth in § 1.17(m);
(3) accompanied by a statement that the delay was unintentional. The
statement must be a verified statement if made by a person not registered
to practice before the Patent and Trademark Office. The Commissioner may
require additional information where there is a question whether the delay
was unintentional; and
(4) filed either:
(i ) within two months of the date of the first Office notification
that the proceeding has been terminated; or
(ii) within two months of the date of the first decision on a
petition to revive under paragraph (a) of this section which was timely
filed within the time period set forth in paragraph (b)(4)(i) of this
section.
(c) Any request for reconsideration or review of a decision refusing to
revive a proceeding upon petition filed pursuant to paragraphs (a) or (b)
of this section, to be considered timely, must be filed within two months
of the decision refusing to revive or within such time as set in the
decision.
(d) The time periods set forth in this section cannot be extended,
except that the time period set forth in paragraph (c) of this section may
be extended under the provisions of § 1.957(a).
APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES
§ 1.959 Notice of appeal and cross appeal to Board of Patent Appeals and
Interferences.
(a)(1) Once a "Right of Appeal Notice" has been issued, by filing a
notice of appeal within the time provided in § 1.953 and paying the fee set
forth in § 1.17(e), the patent owner may appeal to the Board of Patent
Appeals and Interferences with respect to any decision adverse to the
patentability of any original or proposed amended or new claim of the
patent.
(2) Once a "Right of Appeal Notice" has been issued, by filing a
notice of appeal within the time provided in §1.953 and paying the fee set
forth in § 1.17(e), a third party requester involved in a reexamination
proceeding may appeal to the Board of Patent Appeals and Interferences with
respect to any final decision favorable to the patentability of any
original or proposed amended or new claim of the patent. (b)(1)
Within fourteen days of service of a third party requester's notice of
appeal, and upon payment of the fee set forth in § 1.17(e), a patent owner
who has not filed a notice of appeal may file a notice of cross appeal with
respect to any decision adverse to the patentability of any original or
proposed amended or new claim of the patent.
(2) Within fourteen days of service of a patent owner's notice of
appeal, and upon payment of the fee set forth in § 1.17(e), a third party
requester who has not filed a notice of appeal may file a notice of cross
appeal with respect to any final decision favorable to the patentability of
any original or proposed amended or new claim of the patent.
(c) The appeal in a reexamination proceeding must identify the claim(s)
appealed, and must be signed by the patent owner or third party requester,
or their duly authorized attorney or agent.
(d) An appeal when taken must be taken from the rejection of all claims
under rejection in a Right of Appeal Notice which the patent owner proposes
to contest, or from the determination of patentability of all claims
indicated as patentable in a Right of Appeal Notice which the third party
requester proposes to contest. Questions relating to matters not affecting
the merits of the invention may be required to be settled before an appeal
can be considered.
(e) The time periods set forth in §§ 1.959 through 1.969 are subject to
the provisions of
§ 1.957(a) for reexamination proceedings. See § 1.304(a) for extensions of
time for filing a notice of appeal to the U.S. Court of Appeals for the
Federal Circuit.
§ 1.961 Jurisdiction over appeal.
Jurisdiction over the patent under reexamination passes to the Board of
Patent Appeals and Interferences upon transmittal of the file, including
all briefs and examiner's answers, to the Board. Prior to the entry of a
decision on the appeal, the Commissioner may sua sponte order the patent
remanded to the examiner, for action consistent with the Commissioner's
order.
§ 1.962 Appellant and respondent defined.
For the purposes of reexamination, appellant is any party filing a
notice of appeal. A respondent is any opposing party responding to the
appeal of the appellant. If more than one party appeals, each is an
appellant with respect to the claims to which his or her appeal is directed
and, to the extent each responds, each is a respondent with respect to the
claims to which his or her opponent's appeal is directed.
§ 1.963 Time for filing briefs.
(a) If a party files a notice of appeal or cross appeal, the party must
file an appellant brief within two months of the date of filing of their
notice of appeal or cross appeal. However, if another party files a notice
of appeal or cross appeal subsequent to that of the party, then the party
must file an appeal brief within two months of the date of filing of the
subsequent notice of appeal or cross appeal, so that the appellant briefs
of all parties filing a notice of appeal or cross appeal will be due no
later than two months after the last-filed notice.
(b) Once an appellant brief has been properly filed, an opposing party
may file a respondent brief within one month from the date of service of
the appellant brief. The examiner will consider both the appellant and
respondent briefs and prepare an examiner's answer.
(c) The third party requester and the patent owner may each file a
reply brief within one month of the date of the examiner's answer. No
further brief will be acknowledged or considered.
§ 1.965 Appellant brief.
(a) Appellant(s) shall, within time limits for filing set forth in §
1.963, file a brief in triplicate and serve the brief on all parties in
accordance with § 1.903. The brief must be accompanied by the requisite
fee set forth in § 1.17(f) and must set forth the authorities and arguments
on which appellant will rely to maintain the appeal. Any arguments or
authorities not included in the brief will be refused consideration by the
Board of Patent Appeals and Interferences, unless good cause is shown.
(b) On failure of a party to file the brief, accompanied by the
requisite fee, within the time allowed, the appeal shall stand dismissed
with respect to the claims appealed by that party.
(c) The brief shall contain the following items under appropriate
headings and in the order indicated below unless the brief is filed by a
party who is not represented by a registered practitioner:
(1) Real Party in Interest. A statement identifying the real party
in interest, if the party named in the caption of the brief is not the real
party in interest.
(2) Related Appeals and Interferences. A statement identifying by
number and filing date all other appeals or interferences known to the
appellant, the appellant's legal representative, or assignee which will
directly affect or be directly affected by or have a bearing on the Board's
decision in the pending appeal.
(3) Status of Claims. A statement of the status of all the claims,
pending or cancelled, and identifying the claims appealed.
(4) Status of Amendments. A statement of the status of any amendment
filed subsequent to final rejection.
(5) Summary of Invention. A concise explanation of the invention or
subject matter defined in the claims involved in the appeal, which shall
refer to the specification by column and line number, and to the
drawing(s), if any, by reference characters.
(6) Issues. A concise statement of the issues presented for review.
(7) Grouping of Claims. For each ground of rejection, or, in the
case where the appeal is by a third party requester, each determination of
patentability or determination of inapplicability of a proposed rejection,
which appellant contests and which applies to a group of two or more
claims, the Board shall select a single claim from the group and shall
decide the appeal as to the ground of rejection on the basis of that claim
alone unless a statement is included that the claims of the group do not
stand or fall together and, in the argument under paragraph (c)(8) of this
section, appellant explains why the claims of this group are believed to be
separately patentable or unpatentable. Merely pointing out differences in
what the claims cover is not an argument as to why the claims are
separately patentable.
(8) Argument. The contentions of appellant with respect to each of
the issues presented for review in paragraph (c)(6) of this section, and
the basis therefor, with citations of the authorities, statutes, and parts
of the record relied on. Each issue should be treated under a separate
heading.
(i) For each rejection or, in the case where the appeal is by a
third party requester, any other determination under 35 U.S.C. 112, first
paragraph, the argument shall specify the errors in the rejection or other
determination and how the first paragraph of 35 U.S.C. 112 is or is not
complied with, including, as appropriate, how the specification and
drawings, if any,
(A) describe or fail to describe the subject matter defined by
each of the appealed claims, and
(B) enable or fail to enable any person skilled in the art
to make and use the subject matter defined by each of the appealed claims,
and
(ii) For each rejection, or in the case where the appeal is
filed by a third party requester, any determination, under 35 U.S.C. 112,
second paragraph, the argument shall specify the errors in the rejection or
other determination and how the claims do or do not particularly point out
and distinctly
claim the subject matter which appellant regards as the invention.
(iii) For each rejection or, in the case where the appeal is by
a third party requester, each determination of patentability, under 35
U.S.C. 102, the argument shall specify the errors in the rejection or
determination and why the appealed claims are or are not patentable under
35 U.S.C. 102, including any specific limitations in the appealed claims
which are not described in the prior art.
(iv) For each rejection or, in the case where the
appeal is by a third party requester, each determination of patentability
under 35 U.S.C. 103, the argument shall specify the errors in the rejection
or determination and, if appropriate, the specific limitations in the
appealed claims which are or are not described in the prior art, and shall
explain how such limitations render the claimed subject matter obvious or
unobvious over the prior art. If the rejection or determination is based
upon a combination of references, the argument shall explain why the
references, taken as a whole, do or do not suggest the claimed subject
matter, and shall include, as may be appropriate, an explanation of why
features disclosed in one reference may or may not properly be combined
with features disclosed in another reference. A general argument that all
the limitations are or are not described in a single reference does not
satisfy the requirements of this paragraph.
(v) For any rejection or, in the case where the appeal is by a
third party requester, any determination of patentability, other than those
referred to in paragraphs (c)(8)(i) to (iv) of this section, the argument
shall specify the errors in the rejection or other determination and the
specific limitations in the appealed claims, if appropriate, or other
reasons, which cause the rejection or other determination to be in error.
(9) Appendix. An appendix containing a copy of the claims involved
in the appeal.
(d) If a brief is filed which does not comply with all the requirements
of paragraph (c) of this section, appellant will be notified of the reasons
for non-compliance and provided with a period of one month within which to
file an amended brief. If the appellant does not file an amended brief
during the one-month period, or files an amended brief which does not
overcome all the reasons for non-compliance stated in the notification, the
appeal will stand dismissed as to that party.
§ 1.967 Respondent brief.
(a) The brief(s) of the respondent(s) specified in § 1.963 must be
filed in triplicate, served on all other parties in accordance with § 1.903
and be accompanied by the requisite fee set forth in
§ 1.17(f). Any arguments or authorities not included in the brief will be
refused consideration by the Board of Patent Appeals and Interferences,
unless good cause is shown. The respondent brief shall be limited to
issues raised in the appellant brief to which the respondent brief is
directed.
(b) The respondent brief shall contain the following items under
appropriate headings and in the order here indicated, and may include an
appendix containing portions of the record on which reliance is made:
(1) Real Party in Interest. A statement identifying the real party
in interest, if the party named as the respondent in the brief is not the
real party in interest.
(2) Related Appeals and Interferences. A statement identifying by
number and filing date all other appeals or interferences known to the
respondent, the respondent's legal representative, or assignee (if any)
which will directly affect or be directly affected by or have a bearing on
the Board's decision in the pending appeal.
(3) Status of claims. A statement accepting or disputing
appellant's statement of the status of claims. If appellant's statement of
the status of claims is disputed, the errors in appellant's statement must
be specified with particularity.
(4) Status of amendments. A statement accepting or disputing
appellant's statement of the status of amendments. If appellant's
statement of the status of amendments is disputed, the errors in
appellant's statement must be specified with particularity.
(5) Summary of invention. A statement accepting or disputing
appellant's summary of the invention or subject matter defined in the
claims involved in the appeal. If appellant's summary of the invention or
subject matter defined in the claims involved in the appeal is disputed,
the errors in
appellant's summary must be specified with particularity. A counter
explanation of the invention may be made.
(6) Issues. A statement accepting or disputing appellant's
statement of the issues presented for review and identifying any examiner's
determination not to make a rejection proposed by the third party
requester. If appellant's statement of the issues presented for review is
disputed, the errors in appellant's statement must be specified with
particularity. A counter statement of the issues for review may be made.
(7) Grouping of claims. A statement accepting or disputing any
statement by appellant that allowed or rejected claims stand or fall
together. If appellant's statement is disputed, the errors in appellant's
statement must be specified with particularity. A counter statement may be
made.
(8) Argument. A statement accepting or disputing the contentions of
the appellant with respect to each of the issues. If a contention of the
appellant or a determination of the examiner not to make a rejection
proposed by the requester is disputed, the errors in appellant's argument
or examiner's determination must be specified with particularity, stating
the basis therefor, with citations of the authorities, statutes and parts
of the record relied on. Each issue should be treated under a separate
heading. An argument may be made with respect to each of the issues stated
in the counter statement of the issues, with each counter stated issue
being treated under a separate heading. The provisions of §§
1.965(c)(8)(iii) and (iv) of these regulations shall apply to any argument
raised under 35 U.S.C. 102 or 103.
(c) If a respondent brief is filed which does not comply with all the
requirements of paragraph (b) of this section, respondent will be notified
of the reasons for non-compliance and provided with a period of one month
within which to file an amended brief. If the respondent does not file an
amended brief during the one-month period, or files an amended brief which
does not overcome all the reasons for non-compliance stated in the
notification, the respondent brief will not be received into the record and
will not be considered.
§ 1.969 Examiner's answer.
The primary examiner may, within such time as may be directed by the
Commissioner, furnish a written statement in answer to the patent owner's
and/or third party requester's appellant brief or respondent brief
including such explanation of the invention claimed and of the references
and grounds of rejection or reasons for patentability as may be necessary,
supplying a copy to the patent owner and each third party requester, if
any. If the primary examiner shall find that the appeal is not regular in
form or does not relate to an appealable action, he or she shall so state
and a petition from such decision may be taken to the Commissioner as
provided in § 1.181.
§ 1.971 Reply brief.
(a) The patent owner and any third party requester may each file a
reply brief directed only to such new points of argument as may be raised
in the examiner's answer, within one month from the date of such answer.
The new points of argument shall be specifically identified in the reply
brief. If the examiner determines that the reply brief is not directed
only to new points of argument raised in the examiner's answer, the
examiner may refuse entry of the reply brief and will so notify the
appellant.
(b) If the examiner's answer expressly states that it includes a new
ground of rejection or allowance of claims not previously allowed, the
party adversely affected must file a reply thereto within one month from
the date of such answer to avoid dismissal of the appeal as to the claims
subject to the new ground of rejection or allowance; such reply may be
accompanied by any amendment (in the case of the patent owner) or material
appropriate to the new ground. See § 1.957 for extensions of time for
filing a reply brief.
§ 1.973 Oral hearing.
(a) An oral hearing should be requested only in those circumstances in
which the appellant, or a respondent who has filed a respondent brief under
§ 1.967, considers such a hearing necessary or desirable for a proper
presentation of the appeal. An appeal decided without an oral hearing will
receive the same consideration by the Board of Patent Appeals and
Interferences as an appeal decided after oral hearing.
(b) If appellant, or a respondent who has filed a respondent brief under
§ 1.967, desires an oral hearing, he or she must file a written request for
such hearing accompanied by the fee set forth in
§ 1.17(g) within one month after the date of the examiner's answer. If
appellant, or a respondent who has filed a respondent brief under § 1.967,
requests an oral hearing and submits therewith the fee set forth in
§1.17(g), an oral argument may be presented by, or on behalf of, the
primary examiner if considered desirable by either the primary examiner or
the Board. See § 1.957 for extensions of time in a reexamination
proceeding.
(c) If no request and fee for oral hearing have been timely filed by an
appellant or a respondent who has filed a respondent brief under § 1.967,
the appeal will be assigned for consideration and decision. If an appellant
or respondent who has filed a respondent brief under § 1.967 has
requested an oral hearing and has submitted the fee set forth in § 1.17(g),
a hearing date will be set, and notice thereof given to each appellant, to
the primary examiner and to each respondent who has filed a respondent
brief under § 1.967. The notice shall set a period within which all
requests for oral hearing shall be submitted. Hearing will be held as
stated in the notice, and oral argument will be limited to twenty minutes
for each appellant and respondent, and fifteen minutes for the primary
examiner unless otherwise ordered before the hearing begins.
§ 1.975 Affidavits or declarations after appeal.
Affidavits, declarations, or exhibits submitted after the case has been
appealed will not be admitted without a showing of good and sufficient
reasons why they were not earlier presented.
§ 1.977 Decision by the Board of Patent Appeals and Interferences.
(a) The Board of Patent Appeals and Interferences, in its decision, may
affirm or reverse the decision of the examiner in whole or in part on the
grounds and on the claims specified by the examiner, or on the grounds
presented by a third party requester, or remand the reexamination
proceeding to the examiner for further consideration. The affirmance of the
rejection or allowance of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed or otherwise stated.
A rejection of claims by the examiner may also be affirmed on the basis of
the arguments presented by the third party requester.
(b) Should the Board of Patent Appeals and Interferences have knowledge
of any grounds for rejecting any appealed claim not raised in the appeal,
it may include in the decision a statement to that effect with its reasons
for so holding, which statement shall constitute a new rejection of the
claims. A new rejection shall not be considered final for purposes of
judicial review. When the Board of Patent Appeals and Interferences makes a
new rejection of an appealed claim, the patent owner may exercise one of
the following two options with respect to the new ground:
(1) The patent owner may submit an appropriate amendment of the
claims so rejected or a showing of facts, or both, and have the matter
reconsidered by the examiner in which event the patent will be remanded to
the examiner. The statement of the Board of Patent Appeals and
Interferences shall be binding upon the examiner unless an amendment or
showing of facts not previously of record be made which, in the opinion of
the examiner, overcomes the new ground for rejection stated in the
decision. Should the examiner again reject the claims, the patent owner may
again appeal to the Board of Patent Appeals and Interferences.
(2) The patent owner may have the case reconsidered under § 1.979(b)
by the Board of Patent Appeals and Interferences upon the same record. The
request for reconsideration shall address the new ground for rejection and
state with particularity the points believed to have been misapprehended or
overlooked in rendering the decision and also state all other grounds upon
which reconsideration is sought. Where request for such reconsideration is
made, the Board of Patent Appeals and Interferences shall reconsider the new
ground for rejection and, if necessary, render a new decision which shall
include all grounds upon which a patent is refused. The decision on
reconsideration is deemed to incorporate the earlier decision, except for
those portions specifically withdrawn on reconsideration, and is final for
the purpose of judicial review.
(c) Should the decision of the Board of Patent Appeals and Interferences
include an explicit statement that a claim may be allowed in amended form,
patent owner shall have the right to amend in conformity with such statement
which shall be binding on the examiner in the absence of new references or
grounds of rejection.
(d) Although the Board of Patent Appeals and Interferences normally will
confine its decision to a review of rejections and allowances made by the
examiner and/or arguments of the third party requester, should it have
knowledge of any grounds for rejecting any allowed claim not advanced by the
examiner or third party requester, it may recommend a rejection of the claim
in its decision and remand the case to the examiner. In such event, the
Board shall set a period, not less than one month, within which the patent
owner may submit to the examiner an appropriate amendment, a showing of facts
or reasons, or both, in order to avoid any grounds for rejection set forth in
the recommendation of the Board of Patent Appeals and Interferences. The
examiner shall be bound by any such recommended rejection and shall enter and
maintain the recommended rejection unless an amendment or showing of facts
not previously of record is filed which, in the opinion of the examiner,
overcomes the recommended rejection. Should the examiner make the
recommended rejection final the patent owner may again appeal to the Board of
Patent Appeals and Interferences.
(e) Whenever a decision of the Board of Patent Appeals and Interferences
includes a remand, that decision shall not be considered a final decision.
When appropriate, upon conclusion of proceedings on remand before the
examiner, the Board of Patent Appeals and Interferences may enter an order
otherwise making its decision final.
(f) See § 1.957(a) for extensions of time to take action under this
section.
§ 1.979 Action following decision.
(a) After decision by the Board of Patent Appeals and Interferences, the
case shall be returned to the examiner, subject to a right of appeal or
other review by the appellant or respondent, for such further action by the
patent owner or by the examiner, as the condition of the case may require,
to carry into effect the decision.
(b) Each party may file a single request for reconsideration or
modification of the decision if filed within one month from the date of the
original decision, unless that decision is so modified by the decision on
reconsideration as to become, in effect, a new decision, and the Board of
Patent Appeals and Interferences so states. The request for reconsideration
shall state with particularity the points believed to have been
misapprehended or overlooked in rendering the decision and also state all
other grounds upon which reconsideration is sought. See § 1.957(a) for
extensions of time for seeking reconsideration.
(c) The appeal proceedings are considered terminated by the dismissal of
an appeal or the failure to timely file an appeal to the U.S. Court of
Appeals for the Federal Circuit. The date of termination of proceedings is
the date on which the appeal is dismissed or the date on which the time for
appeal to the Federal Circuit expires. If an appeal to the Federal Circuit
has been filed, proceedings are considered terminated when the appeal is
terminated. An appeal to the Federal Circuit is terminated when the mandate
is received by the Office. Upon termination of the reexamination
proceeding, the Commissioner will issue a certificate under § 1.997.
§ 1.981 Reopening after decision.
(a) Cases which have been decided by the Board of Patent Appeals and
Interferences will not be reopened or reconsidered by the primary examiner
except under the provisions of § 1.979 without the written authority of the
Commissioner, and then only for the consideration of matters not already
adjudicated, sufficient cause being shown.
(b) In the event prosecution is reopened or the case is reconsidered by
the primary examiner after decision by the Board of Patent Appeals and
Interferences or by the U.S. Court of Appeals for the Federal Circuit, any
third party requester who appealed or responded under § 1.967 may again
present comments pursuant to § 1.947 and may appeal or participate in an
appeal by the patent owner pursuant to § 1.959.
APPEAL TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
§ 1.983 Appeal to the United States Court of Appeals for the Federal
Circuit.
Any third party requester or patent owner involved in a reexamination
proceeding who is a party to any appeal to the Board of Patent Appeals and
Interferences and who is dissatisfied with the decision of the Board of
Patent Appeals and Interferences may appeal to the U.S. Court of Appeals for
the Federal Circuit and may be a party to any appeal thereto taken from a
reexamination decision of the Board of Patent Appeals and Interferences.
The appellant must take the following steps in such an appeal:
(a) in the Patent and Trademark Office file a written notice of
appeal directed to the Commissioner (see §§ 1.302 and 1.304); and
(b) in the Court, file a copy of the notice of appeal and pay the
fee, as provided for in the rules of the Court. A third party requester is
deemed not to have participated as a party to an appeal by the patent owner,
and thereby not subject to § 1.909, unless, within twenty days after the
patent owner has filed notice of appeal pursuant to § 1.983(a), the third
party requester files notice with the Commissioner electing to participate.
PROCEEDINGS INVOLVING SAME PATENT AS IN REEXAMINATION
§ 1.985 Notification of prior or concurrent proceedings.
Any person at any time may file a paper in a reexamination proceeding
notifying the Office of a prior or concurrent proceeding in which the same
patent is or was involved, such as interferences, reissues, reexaminations,
or litigation and the results of such proceedings. Such paper must be
limited to merely providing notice of the other proceeding without
discussion of issues of the current reexamination proceeding.
§ 1.987 Stay of concurrent proceeding.
If a patent in the process of reexamination is or becomes involved in
litigation or a reissue application for the patent is filed or pending, the
Commissioner shall determine whether or not to stay the reexamination or
reissue proceeding.
§ 1.989 Merger of concurrent reexamination proceedings.
(a) If reexamination is ordered while a prior reexamination proceeding
is pending for the same patent, the reexamination proceedings will be merged
and result in the issuance of a single certificate under § 1.997.
(b) A reexamination proceeding filed under § 1.915 which is merged with
a reexamination proceeding filed under § 1.510 will result in the merged
proceeding being governed by §§ 1.901 - 1.997.
§ 1.991 Merger of concurrent reissue application and reexamination
proceeding.
If a reissue application and a reexamination proceeding on which an
order pursuant to § 1.931 has been mailed are pending concurrently on a
patent, a decision may be made to merge the two proceedings or to stay
one of the two proceedings. Where merger of a reissue application and a
reexamination proceeding is ordered, the merged examination will be
conducted in accordance with
§§ 1.171 through 1.179 and the patent owner will be required to place
and maintain the same claims in the reissue application and the
reexamination proceeding during the pendency of the merged proceeding.
In a merged proceeding, participation by the third party requester shall
be limited to issues within the scope of reexamination. The examiner's
actions and any responses by the patent owner or third party requester
in a merged proceeding will apply to both the reissue application and
the reexamination proceeding and be physically entered into both files.
Any reexamination proceeding merged with a reissue application shall be
terminated by the grant of the reissued patent.
§ 1.993 Stay of concurrent interference and reexamination proceeding.
If a patent in the process of reexamination is or becomes involved in
an interference, the Commissioner may stay reexamination or the
interference. The Commissioner will not consider a request to stay an
interference unless a motion (§ 1.635) to stay the interference has been
presented to and denied by an administrative patent judge and the
request is filed within ten (10) days of a decision by an administrative
patent judge denying the motion for a stay or such other time as the
administrative patent judge may set.
§ 1.995 Third party requester's participation rights preserved in merged
proceeding.
When a third party requester is involved in one or more proceedings
including a reexamination proceeding, the merger of such proceedings
will be accomplished so as to preserve the third party requester's right
to participate to the extent specifically provided for in these
regulations. In merged proceedings involving different requesters, any
paper filed by one party in the merged proceeding shall be served on all
other parties of the merged proceeding.
CERTIFICATE
§ 1.997 Issuance of reexamination certificate after reexamination
proceedings.
(a) Upon the conclusion of a reexamination proceeding, the
Commissioner will issue a certificate in accordance with 35 U.S.C. 307
setting forth the results of the reexamination proceeding and the
content of the patent following the reexamination proceeding.
(b) A certificate will be issued in each patent in which a
reexamination proceeding has been ordered under § 1.931. Any statutory
disclaimer filed by the patent owner will be made part of the
certificate.
(c) The certificate will be mailed on the day of its date to the
patent owner at the address as provided for in § 1.33(c). A copy of the
certificate will also be mailed to the requester of the reexamination
proceeding.
(d) If a certificate has been issued which cancels all of the claims
of the patent, no further Office proceedings will be conducted with
regard to that patent or any reissue applications or reexamination
requests relating thereto.
(e) If the reexamination proceeding is terminated by the grant of a
reissued patent as provided in § 1.965(d), the reissued patent will
constitute the reexamination certificate required by this section and 35
U.S.C. 307.
(f) A notice of the issuance of each certificate under this section
will be published in the Official Gazette on its date of issuance.
Date: August 1, 1995 Bruce A. Lehman
Assistant Secretary of Commerce
and
Commissioner of Patents and Trademarks
