[Federal Register Volume 60, Number 155 (Friday, August 11, 1995)]
[Proposed Rules]
[Pages 41035-41051]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-19488]



=======================================================================
-----------------------------------------------------------------------

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) 308-6919 with a confirmation copy mailed to the 
above address, or by electronic mail messages over the Internet to 
[email protected].

[[Page 41036]]

    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 
[email protected], 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 reexamination 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 Secs. 1.901-1.997.
    Section 1.6 is proposed to be amended so that paragraph (d)(5) 
includes Sec. 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 Sec. 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, Sec. 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 $1,1210.00 for other than small entity. 
The Office has proposed an increase in the fee set by Sec. 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 Sec. 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 reexamination 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, Sec. 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, 

[[Page 41037]]
1996. Paragraph (h) is proposed to be added to make it clear that for 
reexamination proceedings filed on or after January 1, 1996, Sec. 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, Sec. 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, Sec. 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, Secs. 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, Sec. 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, Sec. 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, Sec. 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, Sec. 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, Sec. 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, Sec. 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, Sec. 1.993 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 Sec. 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 Sec. 1.901 provides a system for citation of patents and 
printed publications to the Office for placement in the patent file by 
an 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 
lease 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 Sec. 1.902 provides for the processing of prior art 
citations during a reexamination proceeding.
    Proposed Sec. 1.903 provides for the service of papers on parties.
    Proposed Sec. 1.904 provides that the notices published in the 
Official Gazette will be considered to be constructive notice.
    Proposed Sec. 1.905 provides for submission of papers by the 
public.
    Proposed Sec. 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 Sec. 1.907 sets forth when reexamination is prohibited. 
Once an order to reexamine has been issued under Sec. 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 Sec. 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 reexamination requested by that 
party or its privies on the basis of such issues may not thereafter be 
maintained by the Office.
    Proposed Sec. 1.909 provides for estoppel of their party requesters 
from previous reexamination proceedings. A third party requester, or 
its privy, who, 

[[Page 41038]]
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 Sec. 1.911 provides factors for consideration of privies 
and persons bound. For the purposes of Sec. 1.907, a determination of 
whether 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 Secs. 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 Secs. 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 Sec. 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 Sec. 1.915(a) requires payment of the fee for requesting 
reexamination. Paragraph (b) of new Sec. 1.915 indicates what each 
request for reexamination must include. Paragraph (c) of new Sec. 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 Sec. 1.915(b)(10).
    Proposed Sec. 1.917 indicates what will be done if the request is 
incomplete.
    Proposed Sec. 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 Sec. 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 a fact by 
the examiner or a response of the patent owner.
    Proposed Sec. 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 Sec. 1.925 refers to the refund provisions.
    Proposed Sec. 1.927 provides for review by petition to the 
Commissioner of any decision refusing reexamination.
    Proposed Sec. 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 Sec. 1.931 provides for ordering reexamination where a 
substantial new question of patentability has been found pursuant to 
Secs. 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 Sec. 1.933 covers the duty of disclosure by a patent owner 
in a reexamination proceeding involving the owner's patent.
    Proposed Sec. 1.935 indicates that the initial Office action 
normally accompanies the reexamination order.
    Proposed Sec. 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 Sec. 1.939 provides that no paper shall be filed before 
the first Office action.
    Proposed Sec. 1.941 provides for proposed amendments provided for 
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 Sec. 1.997 and 35 U.S.C. 307 is issued.
    Proposed Sec. 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 Sec. 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 Sec. 1.9347 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 Sec. 1.949 provides when prosecution may be closed.
    Proposed Sec. 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 Sec. 1.953 provides that, following the responses or 
expiration of the time for response in Sec. 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 Sec. 1.955 relates to the conduct of interviews in 
reexamination proceedings. The third party requested is permitted to 
attend all interviews. Interviews are permitted before the first Office 
action only when initiated by the examiner.
    Proposed Sec. 1.957 relates to extensions of time and termination 
of 

[[Page 41039]]
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 type of lack 
of response contemplated by paragraphs (b) and (c) and, therefore, not 
grounds for termination or limiting prosecution.
    Proposed Sec. 1.958 relates to revival of terminated proceedings.
    Proposed Sec. 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 Sec. 1.961 relates to time of transfer of the jurisdiction 
of the appeal over to the Board of Patent Appeals and Interferences.
    Proposed Sec. 1.962 relates to the definition of appellant and 
respondent.
    Proposed Sec. 1.963 relates to the time periods for filing briefs.
    Proposed Sec. 1.965 relates to the appellant brief.
    Proposed Sec. 1.967 relates to the respondent brief.
    Proposed Sec. 1.969 relates to the examiner's answer.
    Proposed Sec. 1.971 relates to the reply brief.
    Proposed Sec. 1.973 relates to the oral hearing.
    Proposed Sec. 1.975 relates to affidavits or declarations after 
appeal.
    Proposed Sec. 1.977 relates to the decision by the Board of Patent 
Appeals and Interferences.
    Proposed Sec. 1.979 relates to the procedures following the 
decision by the Board of Patent Appeals and Interferences.
    Proposed Sec. 1.981 relates to the procedure for reopening 
prosecution following the decision by the Board of Patent Appeals and 
Interferences.
    Proposed Sec. 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 Sec. 1.985 relates to notification or prior or concurrent 
proceedings.
    Proposed Sec. 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 Sec. 1.989 relates to the merger of concurrent 
proceedings.
    Proposed Sec. 1.991 relates to the merger of a concurrent reissue 
application and a reexamination proceeding.
    Proposed Sec. 1.993 relates to the stay of a concurrent 
interference and reexamination proceeding.
    Proposed Sec. 1.995 relates to a third party requester's 
participation rights being preserved in merged proceeding.
    Proposed Sec. 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 in 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:


Sec. 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, Secs. 1.31 to 1.378; of international applications in 
Subpart C, Secs. 1.401 to 1.499; or reexamination of patents filed 
before January 1, 1996, in Subpart D, 

[[Page 41040]]
1.501 to 1.570, and of reexaminations filed on or after January 1, 
1996, in Subpart H, Secs. 1.901-1.997; of interferences in Subpart E; 
Secs. 1.601 to 1.690; of extension of patent term in Subpart F, 
Secs. 1.710 to 1.785; and of trademark applications Secs. 2.11 to 
2.189.
* * * * *
    3. Section 1.6(d)(5) is proposed to be revised to read as follows:


Sec. 1.6  Receipt of correspondence.

* * * * *
    (d) (5) A request for reexamination under Sec. 1.510 or Sec. 1.913.
* * * * *
    4. Section 1.11(c) is proposed to be revised to read as follows:


Sec. 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 of 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:


Sec. 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 (Sec. 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 (Sec. 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:


Sec. 1.20  Post issuance fees.

* * * * *
    (c) For filing a request for reexamination (Sec. 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:


Sec. 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 Secs. 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 charge to a 
deposit account the fee for a request for reexamination pursuant to 
Sec. 1.510 or Sec. 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:


Sec. 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:


Sec. 1.112  Reconsideration.

    After response by applicant or patent owner (Sec. 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 
Sec. 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:


Sec. 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 
(Sec. 1.191), or to amendment as specified in Sec. 1.116. Petition may 
be taken to the Commissioner in the case of objections or requirements 
not involved in the rejection of any claim (Sec. 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:


Sec. 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 Sec. 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 Secs. 1.510(e) and 
1.530(b) prior to reexamination, and during reexamination proceedings 
in accordance with Secs. 1.112 and 1.116. For reexaminations filed on 
or after January 1, 1996, the patent owner may amend in accordance with 
Sec. 1.915(c) prior to reexamination, and during reexamination 
proceedings in accordance with Secs. 1.941 and 1.945.
    12. Section 1.116(a) is proposed to be revised to read as follows:


Sec. 1.116  Amendments after final action.

    (a) After final rejection or action (Sec. 1.113) or action closing 
prosecution (Sec. 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 

[[Page 41041]]
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 Sec. 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 
Sec. 1.953.
* * * * *
    13. Section 1.136(a)(2) and (b) are proposed to be revised to read 
as follows:


Sec. 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 Sec. 1.136(b) for extensions of time 
relating to proceedings pursuant to Sec. 1.193(b), 1.194, 1.196 or 
1.197. See Sec. 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 
Sec. 1.550(c) for extension of time in reexamination proceedings filed 
before January 1, 1996, Sec. 1.957 for extension of time in 
reexamination proceedings filed on or after January 1, 1996, and 
Sec. 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 Sec. 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, 
Sec. 1.645 for extension of time in interference proceedings, 
Sec. 1.550(c) for extension of time in reexamination proceedings filed 
before January 1, 1996, and Sec. 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:


Sec. 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 revised 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 Sec. 1.17(1); 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 Sec. 1.958.
    15. Section 1.191(a) is proposed to be revised to read as follows:


Sec. 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 (Sec. 1.113), may, 
upon the payment of the fee set forth in Sec. 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, 
Sec. 1.959 et seq., is controlling.
* * * * *
    16. Section 1.192(a) is proposed to be revised to read as follows:


Sec. 1.192  Applicant's brief.

    (a) The appellant shall, within 2 months from the date of the 
notice of appeal under Sec. 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 Sec. 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, 
Sec. 1.965 is controlling.
* * * * *
    17. Section 1.193 is proposed to be amended by adding a paragraph 
(c) to read as follows:


Sec. 1.193  Examiner's answer.

* * * * *
    (c) Notwithstanding the above, for reexamination proceedings filed 
on or after January 1, 1996, Secs. 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:


Sec. 1.194  Oral hearing.

* * * * *
    (d) Notwithstanding the above, for reexamination proceedings filed 
on or after January 1, 1996, Sec. 1.973 is controlling.
    19. Section 1.195 is proposed to be revised to read as follows:


Sec. 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, Sec. 1.975 is controlling.
    20. Section 1.196 is proposed to be amended by adding a paragraph 
(g) to read as follows:


Sec. 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, Sec. 1.977 is controlling.
    21. Section 1.197 is proposed to be amended by adding a paragraph 
(d) to read as follows:

[[Page 41042]]



Sec. 1.197  Action following decision.

* * * * *
    (d) Notwithstanding the above, for reexamination proceedings filed 
on or after January 1, 1996, Sec. 1.979 is controlling.
    22. Section 1.198 is proposed to be revised to read as follows:


Sec. 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 Sec. 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, Sec. 1.981 is controlling.
    23. Section 1.301 is proposed to be revised to read as follows:


Sec. 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 Secs. 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, Sec. 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:


Sec. 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 (Sec. 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 Sec. 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:


Sec. 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 Secs. 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 Proceeding 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)

Sec.
1.901  Citation of prior art in patents file.
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 Patients

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 Including Same Patient as in Reexamination

1.985  Notification of prior or concurrent proceedings.
1.987  Stay of concurrent proceeding.
1.989  Merger of concurrent reexamination proceedings.

[[Page 41043]]

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 proceedings.

Certificate

1.997  Issuance of reexamination certificate after reexamination 
proceedings.
Sec. 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 expansion 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 in Sec. 1.33(c); or in the event 
service is not possible,
    (2) be filed with the Office in duplicate.
    (d) Except as provided in Sec. 1.902, citations submitted in 
accordance with this section will be placed and made of record in the 
patent file.


Sec. 1.902  Processing of prior art citations in patent files during a 
reexamination proceeding.

    Citations by the patent owner in accordance with Sec. 1.933 and by 
a reexamination third party requester under Sec. 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 
Sec. 1.931 will be delayed until the reexamination proceeding has been 
terminated.

Reexamination Proceedings


Sec. 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 Sec. 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.


Sec. 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 in the Official Gazette under Sec. 1.11(c) will be 
considered to be constructive notice of the reexamination proceeding 
and reexamination will proceed.


Sec. 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 Sec. 1.915 or entered in the patent file prior to the date of the 
order to reexamine pursuant to Sec. 1.931. Submissions by third 
parties, other than third party requesters, filed after the date of the 
order to reexamine pursuant to Sec. 1.931, must meet the requirements 
of Sec. 1.901 (a) through (c) and will be treated in accordance with 
Sec. 1.902.
Sec. 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.


Sec. 1.907  Reexamination prohibited.

    (a) Once an order to reexamine has been issued under Sec. 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 
Sec. 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.


Sec. 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 serving, 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's electing to participate.


Sec. 1.911  Privies and persons bound.

    (a) For the purposes of Sec. 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 Secs. 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 

[[Page 41044]]
affected by and/or potentially infringe the patent.
    (c) For the purposes of Secs. 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


Sec. 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 Sec. 1.901 or on the basis of the requirements of 35 U.S.C. 112 
except for the best mode requirement.


Sec. 1.915  Content of request.

    (a) The request must be accompanied by the fee for requesting 
reexamination set in Sec. 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 Sec. 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 Sec. 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 Sec. 1.34(a).


Sec. 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 Sec. 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 Sec. 1.901 and/or Sec. 1.902.


Sec. 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.


Sec. 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.


Sec. 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 used 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 Sec. 1.33(c) and to the 
person requesting reexamination.


Sec. 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 

[[Page 41045]]
reexamination will be made to the requester in accordance with 
Sec. 1.26(c).


Sec. 1.927  Petition to review denial of the request for reexamination.

    The requester may seek review by a petition to the Commissioner 
under Sec. 1.181 within one month of the mailing date of the examiner's 
determination refusing reexamination. Any such petition must comply 
with Sec. 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


Sec. 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 Sec. 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 Sec. 1.33(c).


Sec. 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 Sec. 1.927, the reexamination will ordinarily be conducted 
by an examiner other than the examiner responsible for the initial 
determination under Sec. 1.923.
Information Disclosure


Sec. 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 Sec. 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 
sooner 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 Sec. 1.906(c).

Office Actions and Responses (Before the Examiner)


Sec. 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.


Sec. 1.937  Conduct of Reexamination.

    (a) All reexamination proceedings, including any appeals to the 
Board of Patent Appeals and Interference, will be conducted with 
special dispatch within the Office, unless the Commissioner makes a 
determination that there is good cause for suspending the reexamination 
proceding. 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; Secs. 1.104 through 1.119, and will result in the 
issuance of a reexamination certificate under Sec. 1.997.


Sec. 1.939  Unauthorized papers.

    Unless authorized by the reexamination regulations (Secs. 1.901-

[[Page 41046]]
    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 
Sec. 1.923 and will be returned.
Sec. 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 Sec. 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.


Sec. 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.


Sec. 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.


Sec. 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.


Sec. 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.


Sec. 1.951  Responses after Office action closing prosecution.

    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 Sec. 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.


Sec. 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 Sec. 1.997 in 
accordance with the last action of the Office.

Interviews


Sec. 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 Sec. 1.111.
Extensions of Time and Revival of Proceedings


Sec. 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 Sec. 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 Sec. 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, 

[[Page 41047]]
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.


Sec. 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 Sec. 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 Sec. 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 
paragraph (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 Sec. 1.957(a).
Appeal to the Board of Patent Appeals and Interferences


Sec. 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 Sec. 1.953 and 
paying the fee set forth in Sec. 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 Sec. 1.953 and paying the 
fee set forth in Sec. 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 
Sec. 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 Sec. 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 Secs. 1.959 through 1.969 are 
subject to the provisions of Sec. 1.957(a) for reexamination 
proceedings. See Sec. 1.304(a) for extensions of time for filing a 
notice of appeal of the U.S. Court of Appeals for the Federal Circuit.


Sec. 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.


Sec. 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.


Sec. 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.


Sec. 1.965  Applellant brief.

    (a) Appellant(s) shall, within time limits for filing set forth in 
Sec. 1.963, file a brief in triplicate and serve the brief on all 
parties in accordance with Sec. 1.903. The brief must be accompanied by 
the requisite fee set forth in Sec. 1.17(f) and must set forth the 
authorities and 

[[Page 41048]]
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 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, statues, and 
parts of the record relief 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.
Sec. 1.967  Respondent brief.

    (a) The brief(s) if the respondent(s) specified in Sec. 1.963 must 
be filed in triplicate, served on all other parties in accordance with 
Sec. 1.903 and be accompanied by the requisite fee set forth in 
Sec. 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 

[[Page 41049]]
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 Secs. 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.


Sec. 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 Sec. 1.181.
Sec. 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 
directly 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 Sec. 1.957 for 
extensions of time for filing a reply brief.


Sec. 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 Sec. 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 Sec. 1.967, desires an oral hearing, he or she must file a 
written request for such hearing accompanied by the fee set forth in 
Sec. 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 
Sec. 1.967, requests an oral hearing and submits therewith the fee set 
forth in Sec. 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 Sec. 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 
Sec. 1.967, the appeal will be assigned for consideration and decision. 
If an appellant or respondent who has filed a respondent brief under 
Sec. 1.967 has requested an oral hearing and has submitted the fee set 
forth in Sec. 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 Sec. 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.


Sec. 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.


Sec. 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 

[[Page 41050]]
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 
Sec. 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, rendered 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 Sec. 1.957(a) for extensions of time to take action under 
this section.


Sec. 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, the 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 Sec. 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 
Commission will issue a certificate under Sec. 1.997.


Sec. 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 Sec. 1.979 without the written 
authority of the Commissioner, and then only for the reconsideration 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 Sec. 1.967 may again present comments pursuant to 
Sec. 1.947 and may appeal or participate in an appeal by the patent 
owner pursuant to Sec. 1.959.

Appeal to the United States Court of Appeals for the Federal Circuit


Sec. 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 

[[Page 41051]]
to the Commissioner (see Secs. 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 Sec. 1.909, unless within 
twenty days after the patent owner has filed notice of appeal pursuant 
to Sec. 1.983(a), the third party requester files notice with the 
Commissioner electing to participate.

Proceedings Involving Same Patent as in Reexamination


Sec. 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.


Sec. 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.


Sec. 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 Sec. 1.997.
    (b) A reexamination proceeding filed under Sec. 1.915 which is 
merged with a reexamination proceeding filed under Sec. 1.510 will 
result in the merged proceeding being governed by Secs. 1.901-1.997.


Sec. 1.991  Merger of concurrent reissue application and reexamination 
proceeding.

    If a reissue application and a reexamination proceeding on which an 
order pursuant to Sec. 1.931 has been mailed are pending on a patent, a 
decision may be made to merge the two proceedings or to stay one of the 
two proceedings. Where merger is a reissue application and a 
reexamination proceeding is ordered, the merged examination will be 
conducted in accordance with Secs. 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 reissue patent.


Sec. 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 (Sec. 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.


Sec. 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


Sec. 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 Sec. 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 Sec. 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 Sec. 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.

    Dated: August 1, 1995.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 95-19488 Filed 8-10-95; 8:45 am]
BILLING CODE 3510-16-M