[Federal Register Volume 65, Number 67 (Thursday, April 6, 2000)]
[Proposed Rules]
[Pages 18154-18186]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-8284]



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Part II





Department of Commerce





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U.S. Patent and Trademark Office



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37 CFR Part 1



Rules To Implement Optional Inter Partes Reexamination Proceedings; 
Proposed Rule

  Federal Register / Vol. 65, No. 67 / Thursday, April 6, 2000 / 
Proposed Rules  

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DEPARTMENT OF COMMERCE

U.S. Patent and Trademark Office

37 CFR Part 1

[Docket No. 000308064-0064-01]
RIN 0651-AB04


Rules To Implement Optional Inter Partes Reexamination 
Proceedings

AGENCY: U.S. Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The U. S. Patent and Trademark Office (the Office) is 
proposing to amend its rules of practice in patent cases to provide 
revised procedures for the reexamination of patents and thereby 
implement certain provisions of ``the American Inventors Protection Act 
of 1999.'' ``The American Inventors Protection Act of 1999'' included 
an amendment to the Patent Act to authorize the extension of 
reexamination proceedings via an optional inter partes reexamination 
procedure in addition to the present ex parte reexamination procedure 
as a means for improving the quality of United States patents. The 
Office intends, through this amendment of its rules, to provide patent 
owners and the public with guidance on the procedures that the Office 
will follow in conducting optional inter partes reexamination 
proceedings in addition to the present ex parte reexamination 
proceedings.
    The American Inventors Protection Act of 1999'' also made other 
miscellaneous changes to the Patent Act which relate to reexamination, 
and it is intended that this amendment of the Office's rules will 
implement those changes relating to reexamination.

DATES: Comment Deadline Date: To ensure consideration of written 
comments, they must be received at the Office no later than June 12, 
2000. While comments may be submitted after this date, the Office 
cannot ensure that consideration will be given to such comments. No 
public hearing will be held.
    Public Inspection of Comments: Written comments will be available 
for public inspection on or about June 20, 2000.

ADDRESSES: Those interested in submitting written comments should send 
their written comments to the attention of Kenneth M. Schor, Senior 
Legal Advisor, by electronic mail message over the Internet addressed 
to [email protected] and titled ``Inter Partes Reexamination.'' 
Written comments may also be submitted by mail addressed to U.S. Patent 
and Trademark Office, Box Comments--Patents, Commissioner for Patents, 
Washington, DC 20231, marked to the attention of Kenneth M. Schor; or 
by facsimile transmission to (703) 872-9408, marked to the attention of 
Kenneth M. Schor. Although comments may be submitted by e-mail, mail, 
or facsimile, the Office prefers to receive comments via e-mail over 
the Internet. Where comments are submitted by mail, the Office would 
prefer that the comments be submitted on a DOS formatted 3\1/4\ inch 
disk accompanied by a paper copy.
    Written comments will be available for public inspection at the 
Patent Examination Policy Law Office, Office of the Deputy Assistant 
Commissioner for Patent Policy and Projects, located at Crystal Plaza 
Four, Room 3C23 (receptionist), 2201 South Clark Place, Arlington, 
Virginia. In addition, written comments in electronic form may be made 
available via the Office's World Wide Web site at http://www.uspto.gov.

FOR FURTHER INFORMATION CONTACT: Kenneth M. Schor or Gerald A. Dost, 
Senior Legal Advisors. Kenneth M. Schor may be contacted (a) by 
telephone at (703) 305-1616; (b) by mail addressed to: U.S. Patent and 
Trademark Office, Box Comments--Patents, Commissioner for Patents, 
Washington, DC 20231, marked to the attention of Kenneth M. Schor; (c) 
by facsimile transmission to (703) 872-9408, marked to the attention of 
Kenneth M. Schor; or (d) by electronic mail message over the Internet 
addressed to [email protected] and titled ``Inter Partes 
Reexamination.''
    Gerald A. Dost may be contacted (a) by telephone at (703) 305-1616; 
(b) by mail addressed to: U.S. Patent and Trademark Office, Box 
Comments--Patents, Commissioner for Patents, Washington, DC 20231, 
marked to the attention of Gerald A. Dost; (c) by facsimile 
transmission to (703) 308-6916, marked to the attention of Gerald A. 
Dost; or (d) by electronic mail message over the Internet addressed to 
[email protected] and titled ``Inter Partes Reexamination.''

SUPPLEMENTARY INFORMATION:

Background

    This proposed rulemaking sets forth distinct procedures directed 
toward determining and improving the quality and reliability of United 
States patents. The procedures provide for the optional inter partes 
reexamination procedures in addition to the present ex parte 
reexamination procedures for the reexamination of patents as provided 
for by the American Inventors Protection Act of 1999 as part of the 
conference report (H. Rep. 106-479) on H.R. 3194, Consolidated 
Appropriations Act, Fiscal Year 2000. The text of the American 
Inventors Protection Act of 1999, is contained in Title IV of S. 1948, 
the Intellectual Property and Communications Omnibus Reform Act of 1999 
(Pub. L. 106-113), the Act which is incorporated by reference in 
Division B of the conference report. The procedures also provide for 
implementation of other miscellaneous changes to the reexamination of 
patents also provided for in Public Law 106-113.
    In 1995, the Office published proposed rules in anticipation of 
H.R. 1732, 104th Cong., 1st Sess. (1995), a predecessor for the present 
inter partes reexamination statute. H.R. 1732 did not, however, mature 
into a statute. H.R. 1732 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. In response to H.R. 
1732, the Office issued a Notice of Proposed Rulemaking entitled 
``Rules of Practice in Patent Cases; Reexamination Proceedings,'' which 
Notice was published in the Federal Register at 60 FR 41035 (August 11, 
1995) and in the Official Gazette at 1177 Off. Gaz. Pat. Office 130 
(August 22, 1995). Sixteen written comments were received in response 
to the August 1995 Notice of Proposed Rulemaking. A public hearing was 
held at 9:30 a.m. on September 20, 1995. Eight individuals offered oral 
comments at the hearing. The sixteen written comments and a transcript 
of the hearing are available for public inspection in the Patent 
Examination Policy Law Office, Office of the Deputy Commissioner for 
Patent Examination Policy, located at Crystal Plaza Four, Room 3C23 
(receptionist), 2201 South Clark Place, Arlington, Virginia. The 
present proposed rulemaking addresses, and takes into consideration, 
the comments received in response to the 1995 proposed rules.

Discussion of General Issues Involved

    This proposed rulemaking is in response to Public Law 106-113, the 
Act which resulted from suggestions and comments to the Administration 
by the public, bar groups, and the August 1992 Advisory Commission on 
Patent Law Reform suggesting more participation in the reexamination 
proceeding by third-party requesters. Under the inter partes 
reexamination rules proposed herein, third-party

[[Page 18155]]

requesters will have greater opportunity to participate in 
reexamination proceedings in keeping with the spirit and intent of the 
new law. At the same time, participation will be limited to minimize 
the costs and other effects of reexamination requests on patentees, 
especially individuals and small businesses.
    Ex parte reexamination proceedings filed under Chapter 30 of 35 
U.S.C. (both before and after the effective date, November 29, 1999, of 
the new law) will continue to be governed by 37 CFR 1.501-1.570. The 
proposed rules for optional inter partes reexaminations under Chapter 
31 of 35 U.S.C. have been numbered 37 CFR 1.902-1.997.
    The effective date of the statute with respect to the optional 
inter partes reexamination proceedings as well as to the existing ex 
parte reexamination proceedings is complex. With the exception of the 
amendments to 35 U.S.C. 41(a)(7) directed to the revival of terminated 
ex parte and inter partes reexamination proceedings, the new statute 
and the conforming amendments to the present statute take effect on the 
date of enactment, November 29, 1999. The changes, however, only apply 
to a reexamination of a patent that issues from an original application 
which was filed in the United States on or after November 29, 1999. 
Thus, for inter partes reexaminations, the effective date language (in 
section 4608 of S. 1948) limits the applicability of the new inter 
partes reexamination Chapter 31 of 35 U.S.C., and that of the 
conforming amendments to 35 U.S.C. 134, 141, 143 and 145, to any patent 
that issues from an original application filed in the United States on 
or after November 29, 1999, the effective date of Public Law 106-113. 
For ex parte reexaminations filed under Chapter 30 of 35 U.S.C., the 
conforming amendments to 35 U.S.C. 134, 141, 143 and 145, only apply to 
those ex parte reexamination proceedings filed under Sec. 1.510 for 
patents that issue from an original application that is filed in the 
United States on or after November 29, 1999. The conforming amendments 
to 35 U.S.C. 134, 141, 143 and 145, correspondingly, will not apply to 
ex parte reexamination proceedings filed under Sec. 1.510 for patents 
that issue from an original application filed in the United States 
prior to November 29, 1999.
    The conforming amendments also amend 35 U.S.C. 41(a)(7) to include 
the words ``any reexamination proceeding'' under the ``unintentional'' 
revival provisions of the statute for an unintentionally delayed 
response by the patent owner in any reexamination proceeding. These 
words ``any reexamination proceeding'' clearly make this section 
applicable to both ex parte reexaminations and inter partes 
reexaminations. The effective date of the amendment to 35 U.S.C. 
41(a)(7), however, is one year after the date of enactment of the Act, 
or November 29, 2000. See section 4608 of S. 1948. Thus, as of November 
29, 2000, any ex parte or inter partes reexamination filed before, on, 
or after November 29, 2000, is subject to the ``unintentional'' revival 
provisions of the statute.
    Regarding the reexamination fee, 35 U.S.C. 41(d) requires the 
Director of the United States Patent and Trademark Office (the 
Director) to set the fee for the new optional inter partes 
reexamination at a level which will recover the estimated average cost 
of the reexamination proceeding to the Office. The estimated average 
cost is $8,800 for an inter partes reexamination proceeding. The 
difference in price between an ex parte reexamination ($2,520) and an 
inter partes reexamination ($8,800) takes into account that the Office 
will expend substantially more resources for examination, supervision, 
training, etc., where the third-party requester participates in an 
inter partes reexamination proceeding, and for the additional 
processing steps that are expected during an inter partes reexamination 
proceeding.

Considerations of the Comments Responding to the August 1995 Notice 
of Proposed Rulemaking

    In 1995 the Office published proposed rules in anticipation of a 
predecessor bill to the present inter partes reexamination statute, 
which bill did not mature into a statute. The Office issued a notice of 
proposed rulemaking entitled ``Rules of Practice in Patent Cases; 
Reexamination Proceedings,'' which was published in the Federal 
Register at 60 FR 41035 (August 11, 1995) and in the Official Gazette 
at 1177 Off. Gaz. Pat. Office 121 (August 22, 1995). Sixteen written 
comments were received in response to the August 1995 notice. Also, a 
public hearing was held on September 20, 1995, during which eight 
individuals offered oral comments. The following 28 issues summarize 
the comments, and the Office response.

Issue 1

    Eleven comments addressed the issue of the reexamination filing 
fees set in the August 11, 1995, Notice of Proposed Rulemaking. The 
fees set in 1995 were $4,500 for a request by a patent owner and 
$11,000 for a request by a third-party requester. The discussion below 
relates to the 1995 proposed fees. The current proposed $8,800 inter 
partes reexamination fee is the result of a reevaluation of the inter 
partes reexamination parameters, and how inter partes reexamination 
will be conducted in view of the comments.
    A first comment questioned why the reexamination filing fees set in 
the August 11, 1995, Notice of Proposed Rulemaking were many times 
those for original and reissue applications. A second comment 
questioned the disparity between fees for the patent owner and the 
third-party requester, suggesting that more reasonable fees be set 
initially until actual costs become known, since higher fees will 
discourage reexaminations. Further, it was urged that the distinction 
in the fees was inappropriately being based upon the legal positions of 
the parties (upholding or striking down a patent). Even further, it was 
pointed out that the fee structure provides a possibility of a windfall 
of $15,500 should both a patent owner and a third-party requester file 
a request for reexamination. A third comment asserted that the 
disparity was greater than a factor of two, whereas the reason given 
was that it would entail twice the effort. A fourth comment supported 
the fees, suggesting that the fee of $11,000 will discourage 
inappropriate requests and the harassing of individual inventors and 
small businesses. A fifth comment suggested that the cost of the 
reexamination proceedings be subsidized by fees collected from other 
services offered by the Office, that the fees should be apportioned in 
stages and charged as the reexamination progresses (e.g., higher fees 
for appeals), and that there should be legislation to permit small 
entity discounts for reexamination fees. A sixth comment also suggested 
that the fees should be apportioned and charged as the reexamination 
progresses. The sixth comment additionally suggested that if the higher 
fees are warranted, there should be a more thorough examination of all 
cited and searched prior art by an independent supervisory examiner or 
a board of three examiners. A seventh comment asserted that since no 
new search is required of the examiner in the reexamination proceeding, 
the time and effort expended in a reexamination do not warrant a fee 
that is 14 times that of a regular application, which is not consistent 
with Congressional intent to provide a low cost alternative to 
litigation, and in view of the alternative to prepare and file another 
patent application and where appropriate initiate a more costly 
interference

[[Page 18156]]

proceeding. An eighth comment suggested that there should be a special 
reduced fee for reexamination requested within a short period (e.g., 
six months) following the issuance of a patent, since the reexamination 
could be assigned to an examiner already familiar with the case, which 
fee should be the same as a continuing application for patent owners 
and double for third-party requesters. The ninth and tenth comments 
were directed to the impact of the $11,000 fee on independent inventors 
and small companies. The ninth comment suggested that the fees favored 
large businesses. The tenth comment suggested that a fee waiver system 
similar to that for Freedom of Information Act (FOIA) requests be 
adopted. In contrast, the eleventh comment stated that the fee was not 
a pivotal issue with respect to third parties participating in 
reexaminations, rather the pivotal issue is the perception today (under 
current rules) that the reexamination proceeding is not a level playing 
field. Accordingly, the fee should not be subsidized.
Response to Issue 1
    Initially, it is noted that the inter partes reexamination fee 
structure has been reevaluated by the Office. The estimated average 
cost is $8,800 for an inter partes reexamination. Accordingly, 
Sec. 1.20, as proposed in the present rule making, will require a 
filing fee of $8,800 for an inter partes reexamination under 
Sec. 1.915(a).
    As to the first and seventh comments asserting the disparity 
between costs for a regular patent application and an inter partes 
reexamination, it is not appropriate to compare these figures. Fees for 
filing an application are set by statute under 35 U.S.C. 41(a) and are 
not set at a cost recovery level. In fact, the statutory filing fee for 
an application is much lower than the average cost of the examination 
of the application. In contrast, the statutory patent maintenance fees 
set forth in 35 U.S.C. 41(b) are a significant source of income to the 
Office for very little actual work, which are, in effect, an offset for 
the application filing fee. On the other hand, the reexamination fees 
under 35 U.S.C. 41(d) must fully recover the cost of the reexamination. 
The submissions will be numerous in an inter partes reexamination 
proceeding, e.g., multiple responses and comments by the patent owner 
and third-party requester responsive to the Office and to each other. 
Further, these responses and comments are expected to be thorough and 
extensive which in turn must be analyzed by the examiner, requiring the 
expenditure of substantial time and resources. The additional 
examination hours, supervisory oversight, and other processing steps 
unique to inter partes reexamination have to be factored into the fees. 
The inter partes examination process is expected to require close 
policy oversight by legal advisors in the Patent Examination Policy Law 
Office, in addition to the extra resources needed to handle the 
anticipated increased number of submissions by the parties. The 
reexamination filing fee being set in the present rule package is 
$8,800 for filing a request for an inter partes reexamination under 
proposed Sec. 1.913(a). This fee is considered to be appropriate based 
on the Office projections of the amount of work that will be required.
    As to the second and third comments, directed to the disparity 
between fees for the patent owner and the third-party requester, it is 
noted that the current statute retains the current ex parte 
reexamination statute and provides an optional inter partes 
reexamination. It is anticipated that the expense of an inter partes 
reexamination will be substantially more than the expense of an ex 
parte reexamination and, consequently, the fees reflect this. Generally 
speaking, during the examination of an ex parte reexamination, the 
examiner applies the best art and normally limits the number of 
rejections made for a given claim to the best grounds. When responding 
to a third-party requester of an inter partes reexamination, the 
Office's preparation of an Office action will include responding to all 
of the multiple alleged grounds for rejections put forward (proposed) 
by the third-party requester. All of the grounds proposed by the third-
party requester must be addressed by the examiner, because any proposed 
ground of rejection not adopted is a decision favorable to 
patentability which is subject to appeal by the third-party requester 
to the Board of Patent Appeals and Interferences. Thus, the extra 
effort needed for an inter partes reexamination entails not merely 
responding to amendments and arguments of the patent owner, but the 
substantially higher burden of responding to the arguments of the 
third-party requester and the many multiple decisions as to why a 
particular rejection is or is not an appropriate one to make. As to the 
second comment in particular, the difference in the amount of the fees 
is based on these projected costs and not on the legal position of the 
parties. As to the fourth comment regarding the discouragement of 
inappropriate requests, the setting of the filing fees is strictly 
based on cost expectations and not for the purpose of discouraging 
inappropriate reexamination requests.
    Subsidizing of the cost of the reexamination proceedings (as 
suggested by the fifth comment and opposed by the eleventh comment) 
through increased costs to users of other services offered by the 
Office (as an alternative to pricing based on cost recovery) would 
naturally be viewed with disfavor by the users of other services. Also, 
the Office is not authorized to permit small entity reductions in 
reexamination filing fees. As to the suggestion regarding the 
apportionment of costs in stages as the proceeding evolves (e.g., 
higher fees at the appeal stage) (mentioned in the fifth and sixth 
comments), this is not practical since there would be no way to 
guarantee recovery of the total cost of reexamination. A third-party 
requester may decide to drop out of the reexamination and not pay the 
next required fee. The reexamination, however, would have to continue 
to resolve issues that had been raised. Moreover, appeal fees are set 
by statute under 35 U.S.C. 41(a)(6) and are not part of the 
reexamination filing fee. As to the utilization of a team of examiners 
to facilitate a review by a panel prior to forwarding the reexamination 
to the Board of Patent Appeals and Interferences, it is anticipated 
that appeal conferences will be made mandatory so that all work of an 
examiner will be thoroughly reviewed prior to the filing of an 
examiner's answer. Implementation of such review is better set by 
Office policy rather than by rule making.
    As to the suggestion in the eighth comment that the fees be reduced 
for filing a request for reexamination within a short period (e.g., six 
months) following the issuance of a patent, reexaminations are 
generally based upon new prior art raising new issues so that the 
benefits (if any) of filing a reexamination within a short time after 
issuance of a patent would not warrant a reduction in fees. The ninth 
and tenth comments were directed to the impact the $11,000 fee required 
in the August 11, 1995, Notice of Proposed Rulemaking (for all 
reexaminations) will have on independent inventors and small companies. 
With respect to this, it should be noted that, as the statute has now 
been drafted and passed into law (Pub. L. 106-113), the filing of an ex 
parte reexamination is still available to a third-party requester, and 
the filing fee for such is $2,520. Thus, a less costly ex parte 
reexamination will be available to members of the public who may not be 
able to afford a full scale inter partes

[[Page 18157]]

reexamination which has a currently proposed filing fee of $8,800.

Issue 2

    Two comments in response to the August 11, 1995, Notice of Proposed 
Rulemaking suggested that the Office reconsider the refund provisions. 
One comment suggested that the 75% refund of the fee should be reduced, 
since third parties who file unjustified requests should not be 
rewarded by so great a refund. Another comment suggested that the 
difference between the fees for a patent owner and a third-party 
requester varied by more than a factor of two and that it was difficult 
to rationalize why a refund of 75% would be provided for both instead 
of charging a flat fee of $1500 if the Director decides not to 
institute a reexamination proceeding (since the amount of work done in 
both cases should not differ).
Response to Issue 2
    The comments have been adopted. Section 1.26(c), as currently 
proposed, sets the amount of refund to provide for the retention of a 
uniform fee of $830, with the remainder of the filing fee being 
refunded, for all reexamination requests where the Director decides not 
to institute a reexamination proceeding. For the ex parte reexamination 
fee of $2,520, an amount of $1,690 will be returned, thus resulting in 
a retention of $830. For the inter partes reexamination fee of $8,800, 
an amount of $7,970 will be returned, again resulting in a retention of 
$830. The amount of $830 being retained by the Office is based on 
projected cost expectations and is not for the purposes of penalizing 
unwarranted requests, since it is neither desirable nor appropriate to 
penalize parties for whom requests for reexamination are denied.

Issue 3

    One comment in response to the August 11, 1995, Notice of Proposed 
Rulemaking suggested that the third-party requester should be required 
to certify that the request for reexamination contains all information 
that the requester regards as materially adverse to the patentability 
of the patent.
Response to Issue 3
    This suggestion has not been adopted since it is in the third-party 
requester's best interests to submit all information that the requester 
regards as materially adverse to patentability with the request for 
reexamination in order to increase the possibility of the request for 
reexamination being granted. Moreover, proposed Sec. 1.948 of the 
present rule package now provides that prior art submissions by the 
third-party requester filed after the inter partes reexamination order 
shall be limited to: (1) Any prior art which is necessary to rebut a 
finding of fact by the examiner or a response of the patent owner; or 
(2) any prior art which became known or available to the third-party 
requester after the filing of the inter partes reexamination 
proceeding. This is additional incentive to submit all known (and 
available) material prior art with the request.

Issue 4

    Four comments in response to the August 11, 1995, Notice of 
Proposed Rulemaking were directed to the selection of the examiner and/
or number of examiners. A first comment opined that it was Office 
practice to assign the reexamination to the examiner who originally 
examined and issued the patent and not on the basis of the 
classification of the art. The comment further noted the assignment to 
the same examiner defeats the underlying purpose of reexamination and 
petitioning for a transfer to a different art unit based on the 
classification of the art can also be unsuccessful, despite the 
``Transfer Procedure'' in MPEP Section 2237 for those times when a 
reexamination request should be assigned to a different group art unit. 
The comment suggested that if a third-party requester requests a 
reexamination, it should be conducted by a different examiner, and 
further, if appropriate, assigned to a different art unit. A second 
comment noted that Sec. 1.931(b) of the August 11, 1995, Notice of 
Proposed Rulemaking provides the only limitation placed on the 
selection of the examiner, namely that an examiner whose decision 
refusing reexamination has been reversed will not ordinarily conduct 
the reexamination. The comment suggested reevaluating the practice of 
assigning the same examiner who prosecuted the application which issued 
as a patent to conduct the reexamination, since many practitioners feel 
that the original examiner may have a bias against fully considering 
prior art during a reexamination proceeding. A third comment stated 
that since an inter partes reexamination proceeding is more complicated 
to manage than an ex parte reexamination proceeding, the inter partes 
reexamination proceeding is likely to require a higher degree of 
technical and legal competence in making a determination of 
patentability than is normally required in an ex parte reexamination 
proceeding. An examiner in an inter partes reexamination proceeding 
will be required to weigh and assess the credibility of often 
conflicting arguments, theories of operation, and evidence when making 
a determination of patentability. Although statistics appear to 
indicate that there is no inherent bias in the conduct of a 
reexamination proceeding when the proceeding is assigned to the same 
examiner who issued the patent, many perceive a bias (in favor of the 
patent owner) when the reexamination proceeding is assigned to the same 
examiner. The comment advocated assigning the reexamination proceeding 
to the best qualified examiner available, given the technical, legal, 
and procedural complexities that are likely to arise in the 
reexamination proceeding. The comment also suggested the formation of a 
separate unit of examiners to handle the new reexamination proceedings, 
or at least those which involve a third-party requester. The fourth 
comment suggested that the number of examiners be increased from one to 
three, including a supervisory primary examiner and a Group Director, 
in order to increase the probability of a ``correct'' decision and 
develop a higher degree of confidence in the reexamination process, and 
avoid situations where a third-party requester feels the examiner did 
not understand the prior art, the interview, or the declarations, etc. 
The comment suggested that the small increase in Office costs, and fees 
to be charged to participants, will probably be offset by having fewer 
appeals (and law suits) filed (which is of benefit to the public), and 
will still be a cost-effective means of resolving patent disputes, as 
compared to litigation. The fifth comment suggested that more than one 
examiner be responsible for issuing the Right of Appeal Notice, similar 
to the European Patent Office. Modification of the proposed rules to 
allow a decision from a panel of three capable examiners, would result 
in a higher degree of quality in the reexamination process and less 
ancillary issues later being raised (such as examiner bias or an 
examiner's lack of understanding of the relevant art or law). The 
comment suggested that the panel could include, for example, a legal 
specialist within the Examining Group, the original examiner of the 
application, and a primary examiner having knowledge of the relevant 
technical field and the record would reflect when a panel member 
concurs or dissents.
Response to Issue 4
    As to the selection of the examiner, studies conducted by the 
Office have not discovered any bias irrespective of whether the same or 
a different

[[Page 18158]]

examiner handles the reexamination. The same examiner should not be 
biased toward confirming patentability, because a reexamination is not 
a rehash of old issues, but rather, a new question of patentability. In 
spite of the above, the Office is, for the most part, adopting the 
comment suggesting assignment of the reexamination to an examiner other 
than the one who originally examined and issued the patent. The comment 
is being adopted in order to eliminate public perception of bias by the 
original examiner who handled the patent. The comment will be 
implemented as a matter of policy, rather than by rule change. The MPEP 
will be revised to set policy that unless a Group Director needs to 
make an exception, a reexamination will not be assigned to a 
Supervisory Patent Examiner, a primary examiner, or a junior examiner 
who was actually involved (by preparing/signing an action on the 
merits) in the examination and issuance of the patent undergoing 
reexamination.
    As to the Office personnel to be involved in the reexamination 
proceedings, the Office is considering the creation of a special group/
unit having legal advisors trained in inter partes reexamination 
procedures to oversee the examination of the inter partes reexamination 
by the patent examiner in the examining group. For technical expertise, 
an examiner selected from the groups will be assigned the 
reexamination. The advantage of such a special group/unit is that it 
will include the examiner most familiar with the technology to make the 
patentability decisions and legal advisors to provide uniformity of the 
reexamination practice and procedure.
    As to the comment suggesting that the number of examiners handling 
a reexamination proceeding be increased from one to three, the 
following is to be noted. In order to provide a thorough review by a 
team of examiners, a practice is being considered to hold a panel 
review just prior to the decision on the request for reexamination 
(order/denial) is issued and at the close of prosecution (i.e., just 
prior to ``allowance'' of the reexamination or just prior to issuing a 
right of appeal notice and final rejection). The panel review will be 
similar to the appeal conference review done in an application on 
appeal. It should further be noted that appeal conferences are already 
mandatory before a reexamination leaves the examiner for a decision by 
the Board of Patent Appeals and Interferences. If adopted, this will be 
implemented as a matter of policy, rather than by rule change.

Issue 5

    One comment responding to the August 11, 1995, Notice of Proposed 
Rulemaking suggested that the content of the ``prior art'' made 
available for review by the Office should also include inter partes 
sworn testimony of the inventor(s) and others associated with the 
implementation of the invention and any patent work thereon covering 
their knowledge of the known prior art, related industry practices, and 
the like, which evidence may also impeach the inventor(s) and others in 
the sense of withholding known prior art from the Office.
Response to Issue 5
    The Advisory Commission on Patent Law Reform: A Report to the 
Secretary of Commerce, August 1992, at page 117, recommended 
limitations on the scope of documentary prior art evidence and 
cautioned against reliance on testimonial evidence in light of the 
abuses of the process which occurred in the reissue protest proceedings 
under the Dann Amendments. The Commission found the Office to be an 
inappropriate forum for addressing all issues of validity. Affidavits 
or declarations which merely explain the contents or pertinent dates of 
prior patents or printed publications in more detail may be considered 
during reexamination, but any rejection must be in accordance with 
proposed Sec. 1.906(a) (Scope of reexamination in reexamination 
proceeding). Proposed Sec. 1.906(a) limits the scope of reexamination 
in that claims in an inter partes reexamination proceeding will be 
examined on the basis of patents or printed publications and, with 
respect to subject matter added or deleted in the reexamination 
proceeding, on the basis of the requirements of 35 U.S.C. 112.

Issue 6

    One comment in response to the August 11, 1995, Notice of Proposed 
Rulemaking suggested that when an examiner allows a claim, the decision 
of the examiner should be supported by a well-reasoned opinion 
establishing the examiner's reasons for allowance. The comment stated 
that although Sec. 1.109 provides that the examiner ``may set forth 
such reasoning'' for the allowance, this is rarely done and often with 
only a brief note. It was pointed out that well-reasoned opinions are 
critically important in inter partes reexamination procedure to third-
party requesters (or patent owners) who are actively participating and 
who need the reasons for allowance (or for final rejection) in deciding 
whether to appeal.
Response to Issue 6
    Office policy will direct the examiner to make a complete record of 
the reasons for allowing or rejecting a claim at various stages during 
the proceeding. Note further that, according to currently proposed 
Sec. 1.953 (Examiner's Right of Appeal Notice), the Right of Appeal 
Notice is required to include ``an identification of the status of each 
claim, and the reasons for patentability and/or the grounds of 
rejection for each claim.'' Thus, the examiner's reasons for 
patentability and/or the grounds of rejection will be available in 
inter partes reexamination procedure to the third-party requesters (and 
patent owners) who are actively participating and who need the reasons 
for allowance (or the grounds for final rejection) in deciding whether 
to appeal.

Issue 7

    One comment in responding to the August 11, 1995, Notice of 
Proposed Rulemaking questioned whether in view of the new fee 
structure, the examiner will be required to do a new search of the 
prior art.
Response to Issue 7
    The Office has chosen to rely upon the examiner's judgment and 
expertise in determining how much searching should be done in the 
reexamination proceeding. If the examiner believes that additional 
prior art patents and publications can be readily obtained by searching 
to supply any deficiencies in the prior art cited in a request, the 
examiner has the option of performing an additional search. The 
examiner is not required to, and will not routinely, make a full 
search.

Comments Directed to Specific Rules

Issue 8

    One comment stated the belief that Sec. 1.901 of the August 11, 
1995, Notice of Proposed Rulemaking (which relates to the submission of 
prior art) places an unnecessary burden on a person to cite art to be 
placed in the file of an issued patent. A patentee who obtains prior 
art as a result of a foreign search report or by a competitor may 
believe it to be irrelevant and should be encouraged to file it without 
any statement that the art is pertinent, since it may turn out to be 
relevant when combined with other unknown prior art.
Response to Issue 8
    Current Sec. 1.501 is being retained, and thus there is no need for 
proposed Sec. 1.901 of the August 11, 1995, Notice of Proposed 
Rulemaking which was to track and replace Sec. 1.501. Section 1.501

[[Page 18159]]

provides a system for citation of patents and printed publications to 
the Office for placement in the patent file by any person during the 
period of enforceability of the patent in accordance with 35 U.S.C. 
301. Section 1.501 requires the citation to state the pertinency and 
applicability of the cited documents to the patent and the bearing the 
documents have on the patentability of at least one claim of the patent 
pursuant to the same statutory requirement set forth in 35 U.S.C. 301.

Issue 9

    Two comments suggested clarification of the language of the third-
party estoppel provisions proscribed by Secs. 1.907 and 1.909 of the 
August 11, 1995, Notice of Proposed Rulemaking, specifically the 
language ``could have raised'' used in both rules. One comment 
recommended that the third-party requester have the same obligation to 
raise issues known to him as the patent owner has. Another comment 
opined that the phrase ``or could have raised during the prior 
reexamination proceeding'' could be construed broadly, so as to stop a 
third-party requester from challenging the invalidity of a claim based 
on prior art which was in the possession of the third-party requester 
at the time of a prior reexamination proceeding, but which was not 
discovered at that time. Thus, depending on how the expression ``could 
have'' is interpreted, this could place a substantial burden on a large 
corporation. It was also suggested that the duty of individuals to 
disclose information known to them to be material to patentability is 
another difficult provision, particularly the phrase ``and every other 
individual who is substantively involved on behalf of the patent owner 
in a reexamination proceeding.''
Response to Issue 9
    35 U.S.C. 315(c) and 317(b) of the Act use the phraseology ``could 
have raised'' with respect to issues of the third-party. The Office, as 
the sole agency that administers the patent statute, properly 
interprets statutory language in the first instance, subject to review 
by the courts. The question of whether an issue could have been raised 
must be decided on a case-by-case basis, evaluating all the facts and 
circumstances of each individual situation. It would not be appropriate 
at this time to provide an ``all encompassing'' definition, that might 
not account for facts which could arise in the future which cannot be 
anticipated. As to the duty of disclosure, proposed Sec. 1.933 is 
substantially unchanged from existing Sec. 1.555, which was formulated 
to balance the interests of the patent owner with the benefits to the 
public interest of the disclosure of material prior art.

Issue 10

    One comment suggested that Sec. 1.915(b)(7) of the August 11, 1995, 
Notice of Proposed Rulemaking be amended to specifically refer to 
reexaminations under the newly proposed regulations. As 
Sec. 1.915(b)(7) was drafted, the required certification that the 
person filing an additional reexamination during the pendency of an 
ongoing reexamination is not a privy of the patent owner or of the 
third-party requester of the ongoing reexamination would include an 
ongoing reexamination proceeding ordered under the old regulations. 
Since one of the purposes of the new reexamination legislation is to 
permit participation by a third-party requester, no useful or public 
purpose would be served by precluding a third-party requester from 
filing a request for reexamination under the new regulations where 
there was a pending reexamination initiated under the old regulations.
Response to Issue 10
    The language of proposed Sec. 1.915(b)(7) has been drafted to 
specifically refer to an inter partes reexamination; this should 
accurately track the statutory prohibition of a third-party requester 
of an ongoing (pending) inter partes reexamination from requesting 
another inter partes reexamination. Note, however, that the current 
proposed rules do not preclude an ex parte third-party requester from 
filing an inter partes reexamination request.

Issue 11

    Two comments responding to the August 11, 1995, Notice of Proposed 
Rulemaking were directed to the identification of the real party in 
interest. One comment suggested that as to the identification of the 
real party in interest, Sec. 1.915(b)(10) of the August 11, 1995, 
Notice needs to be clarified on the question of whether a third-party 
requester filing in the name of an attorney must be identified. A 
second comment suggested that the real party in interest should be 
identified at least by the time of filing of the notice of appeal to 
the Court of Appeals for the Federal Circuit.
Response to Issue 11
    The real party in interest must be set out in the request. 35 
U.S.C. 311(b)(1) requires that the request ``include the identity of 
the real party in interest.'' Proposed Sec. 1.915(b)(8) (previously 
Sec. 1.915(b)(10) in the 1995 rule package) tracks this provision of 
the statute and requires the requester to identify the real party in 
interest at the time of filing the request. If an attorney is filing a 
request for inter partes reexamination on behalf of another party, that 
other party must be identified. Thus, the third-party requester will be 
identified. As to the patent owner, proposed Sec. 1.965(c)(1) requires 
the identification of the real party in interest at the time of the 
filing of the appellant brief, and proposed Sec. 1.967(b)(1) requires 
the identification of the real party in interest at the filing of the 
respondent brief. Accordingly, the real parties in interest, for both 
the third-party requester and the patent owner, should be identified 
prior to an appeal to the Court of Appeals for the Federal Circuit by 
the patent owner (the current statute prohibits the third-party 
requester from appealing to the courts).

Issue 12

    One comment responding to the August 11, 1995, Notice of Proposed 
Rulemaking was concerned that active third-party requesters 
representing large businesses could mount a series of attacks through 
``fourth parties'' and ``tie up'' the invention of a small inventor for 
years.
Response to Issue 12
    The statute is structured to balance the interests of the patent 
owners (to reduce costs and prevent harassment) and the public interest 
in promoting the validity of patents. Proposed Sec. 1.907 tracks 35 
U.S.C. 317 and is intended to prevent repeated challenges to the patent 
by third parties and their privies. In accordance with 35 U.S.C. 
317(a), proposed Sec. 1.907(a) prohibits the filing of a subsequent 
inter partes request for reexamination of the patent by the third-party 
requester or its privies until a reexamination certificate has been 
issued. In accordance with 35 U.S.C. 317(b), Sec. 1.907(c) provides 
that if a final decision in an inter partes reexamination proceeding 
instituted by a third-party requester is favorable to patentability of 
a claim, the third-party requester and its privies may not later 
request another inter partes reexamination of any such patent claim on 
the basis of issues which that party, or its privies, raised or could 
have raised in such inter partes reexamination proceeding. Moreover, 
proposed Sec. 1.915(b)(8) (previously Sec. 1.915(b)(10) in the 1995 
rule package) tracks 35 U.S.C. 311(b)(1) and requires the requester to 
identify the real party

[[Page 18160]]

in interest at the time of filing of the inter partes request.

Issue 13

    One comment suggested that in regard to Secs. 1.921 and 1.945 of 
the August 11, 1995, Notice of Proposed Rulemaking, supplemental 
responses and new prior art submissions should be permitted by the 
patent owner in order to substantiate certain points at issue (e.g., 
secondary considerations). It was further suggested that 
supplementation of responses be permitted. It was also suggested that 
submission of new publications by the third-party requester should be 
permitted in response to any amendment made by the patent owner which 
reduces the scope of the original claims.
Response to Issue 13
    Proposed Sec. 1.945 permits the patent owner to respond to any 
Office action, which response may include arguments and proposed 
amendments. There is no proscription regarding the submission of 
evidence relating to secondary considerations. As to third-party 
requesters, proposed Sec. 1.948 provides that prior art submissions by 
the third-party requester filed after the inter partes reexamination 
order shall be limited to: (1) Any prior art which is necessary to 
rebut a finding of fact by the examiner or a response of the patent 
owner; or (2) any prior art which became known or available to the 
third-party requester after the filing of the inter partes 
reexamination proceeding. Accordingly, submission of new publications 
by the third-party requester in response to an amendment made by the 
patent owner which reduces the scope of the original claims would be 
permitted as a rebuttal of a ``response of the patent owner.''

Issue 14

    One comment stated that as to Sec. 1.927 of the August 11, 1995, 
Notice of Proposed Rulemaking, a determination by the Director refusing 
to initiate reexamination is final and nonappealable by a third-party. 
The rule should be amended to allow the third-party to appeal, since 
without an opportunity to appeal, a third-party's interests would be 
seriously jeopardized.
Response to Issue 14
    Proposed Sec. 1.927 of the present rule package (petition to review 
denial of the request for reexamination) has been drafted to track 35 
U.S.C. 312(c). Proposed Sec. 1.927 provides that ``[t]he third-party 
requester may seek review by a petition to the Director 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.'' 
Thus, although the third-party requester does not have an appeal right, 
it may obtain a review of the decision of the examiner refusing 
reexamination by filing a petition. If the decision on the petition, 
however, affirms that no substantial new question of patentability has 
been raised, the determination is final and nonappealable, as is 
statutorily required by 35 U.S.C. 312(c).

Issue 15

    Two comments were directed to the length of briefs specified in 
Sec. 1.943 of the August 11, 1995, Notice of Proposed Rulemaking. One 
comment suggested that the length of briefs would be more meaningful if 
the size of the paper and the type font were specified. A second 
comment stated that the page limitation on briefs in Sec. 1.943 is too 
restrictive, especially for patent owners, since there is no limitation 
on the number of issues which a third-party can raise, which may 
require a longer response from the patent owner. It was suggested that 
the rule should permit longer briefs upon a showing of good cause.
Response to Issue 15
    As to the first comment, this comment is being adopted. Section 
1.943, as proposed in the present rule package, has been drafted to set 
forth (by reference to Sec. 1.530(d)(5)) the requirements for 
responses, amendments, briefs, appendices and other documents including 
the size of the paper, the minimum size of the type font (11-point), 
the line spacing and the margin requirements.
    As to the second comment, the 50-page limit for amendments proposed 
to be set in Sec. 1.943 is considered to be sufficient to deal with the 
third-party requester's comments. Note that the 50-page limit excludes 
reference materials such as prior art references. Where an 
extraordinary situation arises where justice requires the 50-page limit 
to be exceeded, the patent owner may petition under Sec. 1.183 to 
suspend the page limit requirement of Sec. 1.943.
    The page limit set in proposed Sec. 1.943 of the present rule 
package for briefs is such that appellant briefs shall not exceed 30 
pages or 14,000 words in length (excluding appendices of claims and 
reference materials), and all other briefs by any party shall not 
exceed 15 pages or 7,000 words in length. These numbers of pages are in 
line with procedural rules of the Federal Courts; see for example Rule 
32(a)(7)(A) of the Federal Rules of Appellate Procedure or Rule 33 of 
the Rules of the Supreme Court of the United States (Practice & 
Procedure).

Issue 16

    Several comments were concerned with the time periods for response 
and extensions of time. Two comments suggested that the time periods 
for response for Sec. 1.945 (patent owner) and Sec. 1.947 (third-party 
requester) of the August 11, 1995, Notice of Proposed Rulemaking should 
be a minimum of two months for each party. A third comment suggested 
only that the patent owner be given two months to respond. The first 
comment suggested that the first month extension should be available 
upon payment of a fee (as in regular patent applications), with further 
requests requiring justification or cause. The second comment suggested 
that Secs. 1.945 and 1.947 should be made consistent with each other 
(30 days versus one month) to alleviate any confusion by stating the 
number in months. The second comment further suggested that the 
extension of time procedure is unworkable since the Office could not 
act on the request for an extension of time (if filed within the one-
month period of time) before the deadline for the response. Instead, 
the usual extension of time procedure used for regular patent 
applications should be available. The fourth comment stated that the 
time periods for submitting a response, a written comment, an appeal 
brief, and a respondent brief and for appealing or cross-appealing 
(Secs. 1.945, 1.947, 1.951, 1.953, 1.959, 1.963, 1.971, 1.973, 1.979, 
1.983, and 1.993) are too short, especially for residents outside of 
the United States (due to mailing delay).
Response to Issue 16
    Proposed Sec. 1.947 of the present rule package has been drafted to 
provide for a 30-day response period (from service of the patent 
owner's response on the third-party requester) for third-party 
requester comments. This tracks the requirement of 35 U.S.C. 314 that 
third-party requester comments be filed ``within 30 days after the date 
of service of the patent owner's response.'' Proposed Sec. 1.945 has 
been drafted to provide for an ``at least 30 days'' response period for 
the patent owner. This tracks the requirement of 35 U.S.C. 133 that the 
time for response to an Office action shall be ``not less than 30

[[Page 18161]]

days.'' A shortened statutory period of two months will generally be 
set for patent owner responses to Office actions on the merits; 
however, where litigation has been suspended pending a determination in 
the reexamination proceeding, or for a like reason, the period will be 
shortened to one month or 30 days as is appropriate.
    The suggestion that Secs. 1.945 and 1.947 be made consistent with 
each other has been adopted to the extent that the currently proposed 
rules (Secs. 1.945 and 1.947) recite both time periods in terms of days 
rather than months. The period for the patent owner response to an 
Office action will not, however, be made 30 days to correspond to the 
third-party comment period mandated by statute. While the statute 
limits the third-party requester to 30 days to comment on patent owner 
responses, a longer period for the patent owner to respond is 
appropriate in view of the potential need for counsel to consult with 
the patent owner, consider amendments, etc.
    As to extensions of time, 35 U.S.C. 305 provides that all 
reexamination proceedings will be conducted with special dispatch 
within the Office. Section 1.956 provides that extensions of time will 
be available to the patent owner upon a showing of sufficient cause. 
Third-party requester's 30-day time period for comments is statutory; 
thus, it cannot be extended. This is consistent with the recommendation 
(VII-B) of The Advisory Commission on Patent Law Reform: A Report to 
the Secretary of Commerce, August 1992 to provide for the opportunity 
for the third-party requester to submit written comments ``within 
strict time deadlines.''

Issue 17

    One comment suggested that, as to Sec. 1.949 of the August 11, 
1995, Notice of Proposed Rulemaking, a more flexible policy on closing 
prosecution be adopted in a reexamination proceeding than is currently 
applied by the Office in its final action practice. Specifically, this 
proposed section indicates that prosecution will not normally close if 
there is a new ground of rejection (not previously addressed by the 
patent owner) which was not necessitated by an amendment to the claims 
by the patent owner. There was particular concern in the comments about 
a situation where new prior art is relied on even if it was 
necessitated by an amendment to the claims. It was noted that the 
proposed practice may serve a useful purpose in the normal examination 
of patent applications, where an applicant always has the opportunity 
to file a continuing application to make any further amendments to the 
claims that may be desirable to address the new ground of rejection; 
however, in a reexamination proceeding, where the patent owner is 
precluded from having any right to amend the claims to address the new 
ground of rejection or to file another request for reexamination, the 
patent owner may be trapped with no effective way to address new prior 
art that has been introduced for the first time in the Office action 
that simultaneously closes the prosecution. It was urged that this 
could be fundamentally unfair to the patent owner. Where new prior art 
is asserted by the examiner, the patent owner should have the 
opportunity to amend the claims.
Response to Issue 17
    By weighing and balancing the interests of the parties, it is 
believed the rule as proposed is fair and reasonable. A rule which 
would prohibit an Office action from closing prosecution following a 
new art rejection responsive to a patent owner amendment would 
conceivably be subject to abuse, since patent owners could purposely 
add an amendment in each response to thus necessitate a new art 
rejection and thereby preclude the closing of prosecution for an 
unlimited number of cycles.

Issue 18

    Eight comments were directed to interviews (provided for in 
Sec. 1.955 of the August 11, 1995, Notice of Proposed Rulemaking). One 
comment suggested the need for a more accurate statement of why claims 
were found to be allowable as the result of an interview. A second 
comment suggested that the Office rules be modified to specifically 
require a means for more accurately recording what transpires at 
interviews, regardless of which party requests the interviews or 
whether all parties are present. The comment further stated that 
``recording'' did not imply physical recording by electronic means or 
by a court reporter, but by a more thorough method of reporting by an 
examiner as to what transpired at the interview (which would be 
particularly effective with a multi-examiner review system). The 
comment indicated that the reporting of the ``minutes'' should be done 
to all parties, including a brief, non-binding, and informal opinion by 
the examiner on the resolution of the issues presented, so as to give 
all parties the opportunity to respond to the issues raised at the 
interview. A third comment suggested that the proposed rules should be 
modified to achieve two objectives. The first objective would be to 
provide an opportunity to better communicate issues to examiners 
(particularly those issues which are difficult to express on paper and 
might be better demonstrated; e.g., by charts, tables, or physical 
demonstration) of what is purported to be the main technical aspect of 
an invention, and how that technical aspect is or is not suggested by 
the prior art, either before or after the formal submission, so that 
they will have a better understanding of what the data represents. A 
second objective should be to provide a complete record for later 
review for a judge or an attorney who reviews the file history for a 
decision on patentability or infringement assessment. The proposed 
Sec. 1.955 was stated to benefit the patent owner, who is the only 
party allowed to request an interview, thereby providing a tremendous 
advantage and, therefore, the rule should be modified to allow a third-
party requester the opportunity to initiate an interview. The comment 
further criticized the lack of a specific requirement for recording 
what transpires at interviews, on the basis that an Examiner Interview 
Summary Record would be of little value in an inter partes 
reexamination proceeding, since the record is too abbreviated to be of 
any real value in subsequent proceedings and it is unlikely that much 
detail could be put into any interview record if more than one party, 
as well as a senior level official (whose presence would be required 
under the proposed rule) are all present and are relying upon an 
examiner to hurriedly write a summary of the interview. The comment 
suggested modification of Sec. 1.955 to include an effective procedure 
for recording the details of what transpired at an interview. A fourth 
comment suggested that, in view of the criticality of the content of 
interviews in subsequent litigation, a mechanism should be made 
available for recording statements made at substantive interviews that 
occur during reexamination, whereby any party to a reexamination should 
be permitted to have a transcript of the substantive interviews made of 
record at their own expense. The comment further suggested that 
requesting parties would both supply the means for transcription and 
would bear the costs associated therewith. A fifth comment suggested 
that the third-party requester be allowed not only to participate but 
also initiate an interview, and that the third-party requester be 
provided, at a sufficient time prior to the interview, the particulars 
of the claim at issue at the

[[Page 18162]]

interview, the objective of the interview, and the specific data to be 
used at the interview, so that the third-party requester would be able 
to take substantial part in the discussion at the interview. A sixth 
comment was in favor of the third-party requesters having the right to 
participate in interviews but opposed giving third parties the right to 
initiate them. The reason given was that the rules need to balance the 
right to encourage third parties to participate with the need to keep 
reexamination quick and inexpensive. The comment further stated that in 
view of the expense, including the time required to review the 
transcript and the continuing attempts to make corrections and 
clarifications, a rule change to permit or require transcription of 
interviews is not recommended. Such a rule would make reexaminations 
more like court proceedings. A seventh comment suggested that 
Sec. 1.955 should be changed to permit the third-party requester to 
request an interview because the third-party requester, like the patent 
owner, may have experts and/or documentary evidence that is not 
suitable for written declarations. An eighth comment suggested that if 
interviews are to be recorded, consideration should be given as to 
whether participants would be under oath.
Response to Issue 18
    The Office has reconsidered its initial position (taken in the 
August 11, 1995, Notice of Proposed Rulemaking) to permit owner-
initiated interviews in which the patent owner and the third-party 
requester participate. The presence of a third-party requester will 
complicate the reexamination proceeding and delay it. There is no 
reason to further complicate and delay the proceeding with inter partes 
interviews, which past history has shown to be not only resource 
intensive, but unwieldy. Inter partes interviews are difficult to 
arrange, control, and conduct. There would be interaction between the 
patent owner's representative and its experts, the third-party's 
representative and its experts, the examiner, and the ``senior level 
official'' which would be difficult to regulate and control. It is 
difficult to record what happened, and cross-transcripts would result 
in delay and complications. In addition, the time to arrange and 
conduct the interview would greatly extend the inter partes proceeding 
time line, and this is clearly contrary to the ``special dispatch'' 
required by 35 U.S.C. 314(c) for the inter partes reexamination 
proceeding. As to the comments suggesting that the third-party should 
be permitted to initiate interviews, this would even further complicate 
the proceeding, adding undue cost to the parties and the Office and 
further delay to the proceeding.
    Accordingly, the Office has decided that the third-party requester 
of the inter partes reexamination should neither be permitted to 
initiate nor be permitted to participate in an interview which 
addresses the merits of the proceeding. If, however, the patent owner 
is permitted to initiate and participate in an interview which 
addresses the merits of the proceeding while the third-party requester 
is not, this will create an advantage to the patent owner which is 
contrary to the intent and purpose of the inter partes reexamination 
addition to the statute. Thus, to ``level the playing field'' in the 
Office, in accordance with the intent and purpose of the statute, the 
patent owner will neither be permitted to initiate nor be permitted to 
participate in an interview which addresses the merits of the 
proceeding. In other words, no interviews which address the merits of 
the proceeding will be permitted (or held) in an inter partes 
reexamination proceeding. This offers the additional advantage of 
further shortening the proceeding, pursuant to the dictates of 
``special dispatch'' in 35 U.S.C. 314(c). Even further, this deals with 
the comments which argued that the content of the inter partes 
interview cannot be adequately captured without the use of expensive 
and complex transcripts. Anything stated or decided in the proceeding 
will be on the record, in writing.
    As to the comments regarding improving the record of what 
transpired at interviews, clarity of the record is a concern to the 
Office. Accordingly, in Sec. 1.560(b) (Interviews in ex parte 
reexamination proceedings), it is required for interviews in ex parte 
reexamination proceedings that ``[i]n every instance of an interview 
with an examiner, a complete written statement of the reasons presented 
at the interview as warranting favorable action must be filed by the 
patent owner.'' (Emphasis added). The written statement must be filed 
as a separate part of a response to an Office action outstanding at the 
time of the ex parte reexamination interview, or as a separate paper 
within one month from the date of the ex parte reexamination interview, 
whichever is later. Regarding inter partes reexamination proceedings, 
there will be no interviews at all which address the merits of the 
inter partes reexamination proceeding, as discussed in the previous 
paragraph, thus the comments regarding improving the record of what 
transpired at interviews are moot as to inter partes reexamination 
proceedings.
    With respect to the suggestion of prior notice of what issues will 
be discussed (the specific objective of the interview and the materials 
to be presented), patent owners requesting interviews in ex parte 
reexamination proceedings are in fact expected to submit such materials 
prior to the interview with ample time for review. As to whether 
participants at recorded interviews (which are only permitted in 
special circumstances in ex parte reexamination proceedings) should be 
under oath, this is believed to be unnecessary in view of 18 U.S.C. 
1001, which provides ``[w]hoever, in any matter within the jurisdiction 
of any department or agency of the United States knowingly and 
willfully falsifies, conceals or covers up by any trick, scheme, or 
device a material fact, or makes any false, fictitious or fraudulent 
statements or representations, or makes or uses any false writing or 
document knowing the same to contain any false, fictitious or 
fraudulent statement or entry, shall be fined not more than $10,000 or 
imprisoned not more than five years, or both.''

Issue 19

    One comment stated that, as to Sec. 1.959(a)(2) of the August 11, 
1995, Notice of Proposed Rulemaking, the introduction of a right to 
appeal by a third-party requester who is dissatisfied with an 
examiner's favorable consideration of a claim is an important and 
beneficial aspect of the new reexamination proceedings. However, the 
apparent unqualified opportunity to file an appeal at this advanced 
stage in the proceedings raises a concern that the appeal procedure 
could be used to compromise the patent owner's ability to address the 
reasons and the evidence that the third-party requester might use in 
its appeal and to add (perhaps intentionally) considerable length to a 
proceeding that is to be conducted with special dispatch. The comment 
was concerned that the likelihood exists that the first time the patent 
owner will be made aware of the grounds of rejection to be relied upon 
by the third-party requester will be upon receiving the third-party's 
appeal brief, adding complexity and length to the proceeding. In spite 
of this, the provisions in Sec. 1.967(b) relating to the respondent 
brief apparently do not contemplate any opportunity for the patent 
owner to offer an amendment or material appropriate to the new ground 
of rejection, as is permitted when an

[[Page 18163]]

examiner makes a new ground of rejection in the examiner's answer (see 
proposed Sec. 1.971(b)). The comment suggested that consideration must 
be given to setting appropriate limits on the grounds of rejection that 
the third-party requester can rely upon in its appeal; including 
consideration to requiring the third party requester who files a notice 
of appeal under proposed Sec. 1.959(a)(2) to identify in this notice 
the grounds of rejection that it will rely upon in its appeal.
Response to Issue 19
    Third-party requester's prior art submissions in an inter partes 
reexamination (after reexamination is ordered) are limited by the 
currently proposed Sec. 1.948 to prior art: (1) Which is necessary to 
rebut a finding of fact by the examiner; (2) which is necessary to 
rebut a response of the patent owner; or (3) which became known or 
available to the third-party requester after the filing of the inter 
partes reexamination proceeding. Under Sec. 1.947 (Response by third-
party requester to patent owner's response), the third-party 
requester's comments shall be limited to issues raised by the action of 
the Office or the patent owner's response. Accordingly, the third-party 
requester could not advance a new ground of rejection based upon new 
prior art at the appeal stage. Although the notice of appeal does not 
require specific identification of the issues, the appellant's brief 
does. See currently proposed Secs. 1.965(c)(6) (appellant brief), 
1.967(b)(6) (respondent brief) and 1.971 (rebuttal brief), all of which 
specifically prohibit the third-party from introducing new grounds of 
rejection at each respective stage of the appeal.

Issue 20

    One comment submitted in response to the August 11, 1995, Notice of 
Proposed Rulemaking suggested that the enforcement role of the Office 
should be such that the examiner is obligated to issue an examiner's 
answer in every reexamination proceeding. The comment noted that 
present (1995) rules provide that an examiner may issue an examiner's 
answer. It was urged that when the Office decides that an invention is 
unpatentable, it is incumbent that the Office not rely upon the third-
party requester exclusively, and therefore, examiner's answers should 
be mandatory.
Response to Issue 20
    Although the currently proposed Sec. 1.969(a) (and 
Sec. 1.193(a)(1)) indicates that an examiner's answer may be furnished, 
common practice is to furnish an examiner's answer. This practice is 
implemented through procedures set forth in the MPEP. Moreover, the 
examiner cannot be obligated to issue an examiner's answer in every 
instance, since, in rare instances, it will become necessary to reopen 
prosecution for consideration of a recently discovered new ground of 
rejection or reason for patentability.

Issue 21

    One comment responding to the August 11, 1995, Notice of Proposed 
Rulemaking suggested that appellant should be given the opportunity to 
reply to both the opening brief of the respondent and the examiner's 
answer, either by filing briefs in response to each, or by a single 
reply brief after the examiner's answer.
Response to Issue 21
    The second option of the comment has been adopted. The currently 
proposed Sec. 1.971 (Rebuttal Brief) provides that, following the 
examiner's answer, any appellant may once submit a rebuttal brief. The 
rebuttal brief of the patent owner may be directed to the examiner's 
answer and/or any respondent brief. The rebuttal brief of any third-
party requester may be directed to the examiner's answer and/or the 
respondent brief of the patent owner. The rebuttal brief of a third-
party requester may not be directed to the respondent brief of any 
other third-party requester. No new ground of rejection can be proposed 
by a third-party requester appellant.

Issue 22

    One comment responsive to the August 11, 1995, Notice of Proposed 
Rulemaking suggested that because both the request for oral argument 
and the briefs replying to the examiner's answer are due within one 
month, the parties will likely not be able to consider each other's 
final written submissions before requesting oral argument and, 
therefore, the period for requesting an oral hearing be lengthened to 
45 days, thus giving the parties 15 days to consider each other's final 
written submissions.
Response to Issue 22
    This comment has been adopted as follows. Section 1.973(b) (Oral 
Hearing) as proposed provides that the parties have two months after 
the date of the examiner's answer to file a written request for oral 
hearing.

Issue 23

    One comment suggested that proposed Sec. 1.979(b) of the August 11, 
1995, Notice of Proposed Rulemaking provides an opportunity for each 
party to file a single request for rehearing (referred to as ``request 
for reconsideration'' in the comment) of the decision of the Board of 
Patent Appeals and Interferences. However, there is no apparent 
opportunity for the other party to provide comments on that request. 
The lack of this opportunity is not consistent with the general 
approach in the new reexamination process of providing an opportunity 
for both parties to provide comments before any action is taken by the 
Office, and it was suggested once a request for rehearing has been 
filed by either or both parties, that the other party have a one-month 
period to offer comments on the request for rehearing.
Response to Issue 23
    This comment has been adopted. The third-party requester, by virtue 
of the statute, has no opportunity to appeal the decision of the Board 
of Patent Appeals and Interferences to the U.S. Court of Appeals for 
the Federal Circuit. In addition, Sec. 1.979(d), as presently proposed, 
permits the party requesting rehearing (in addition to stating ``the 
points believed to have been misapprehended or overlooked in rendering 
the decision'') to also state ``all other grounds upon which rehearing 
is sought.'' It is only fair to give the third-party requester an 
opportunity to comment on newly provided ``other grounds upon which 
rehearing is sought.'' The patent owner should likewise be given the 
same opportunity to comment in order to create a level ``playing 
field'' in the Office. Accordingly, currently proposed Sec. 1.979(b) 
has been drafted to give both the patent owner and the third-party 
requester a right to comment on each other's request for rehearing of 
the decision of the Board of Patent Appeals and Interferences.

Issue 24

    One comment suggested that Sec. 1.985 of the August 11, 1995, 
Notice of Proposed Rulemaking, which permits any person to advise the 
Office about a concurrent proceeding involving the patent being 
reexamined, should be changed to require the patent owner to advise the 
Office (and therefore any third-party requester) of any concurrent 
proceeding involving the patent being reexamined. The comment also 
stated that similar mandatory requirements are contained in Sec. 1.660 
relating to the conduct of an interference proceeding involving an 
application or a patent.

[[Page 18164]]

Response to Issue 24
    The suggestion has been adopted. Currently proposed Sec. 1.985(a) 
(Notification of prior or concurrent proceedings) is drafted to direct 
that in any inter partes reexamination proceeding, the patent owner 
shall call the attention of the Office to any prior or concurrent 
proceedings in which the patent is or was involved such as 
interferences, reissue, reexaminations, or litigation and the results 
of such proceeding.

Issue 25

    Regarding Sec. 1.989 of the August 11, 1995, Notice of Proposed 
Rulemaking, one comment stated that the merger of multiple 
reexamination proceedings on unrelated issues by unrelated parties will 
result in undue complications of the proceedings, particularly during 
interviews and hearings.
Response to Issue 25
    As pointed out above in the response to Comment 18, the Office has 
reconsidered its initial position (taken in the August 11, 1995, Notice 
of Proposed Rulemaking) and will not permit any interview which 
addresses the merits in an inter partes reexamination proceeding. Thus, 
the comment is moot as to complications caused by an inter partes 
interview. Although multiple parties can, to some degree, increase the 
complexity of the proceeding even in areas other than the interviews 
focused upon by the commenter, the general policy of the Office is that 
concurrent reexamination proceedings will not be conducted separately 
at the same time on the same patent. The reasons for this policy is to 
prevent inconsistent, and possibly conflicting, amendments from being 
introduced into the two proceedings on behalf of the patent owner. 
Normally the proceedings will be merged whenever it is desirable to do 
so in the interest of expediting the prosecution of all proceedings.

Issue 26

    One comment responding to the August 11, 1995, Notice of Proposed 
Rulemaking suggested that it would be beneficial for the rules to 
provide specific procedures for consolidating multiple reexamination 
requests of the same patent, since the procedure is too complicated for 
the public to simply rely upon internal Office policy.
Response to Issue 26
    Section 1.989, as proposed in the present rule package, provides 
for the merging of multiple reexaminations. As to the details of the 
merger procedure, it is believed to be more appropriate to incorporate 
same in the MPEP, because it is less cumbersome and easier to revise 
the details via the MPEP as needed to react to input as the practice 
evolves, than it would be to revise the rules. Further, where it 
becomes known that an area of the merger procedure is not being 
understood by the public, it will be easier to add more explanation to 
the MPEP, than to make the rules more comprehensive. Accordingly, the 
MPEP will contain the detailed discussion of the merger procedure.

Issue 27

    One comment stated that as to Sec. 1.991 of the August 11, 1995, 
Notice of Proposed Rulemaking, a merged reissue/reexamination 
proceeding will be conducted according to provisions applicable to the 
reissue application except that the participation by a third-party 
requester shall be limited to issues within the scope of reexamination. 
Since a third-party requester has a right to inspect a reissue 
application and file a protest involving any issue considered in a 
reissue application, consideration should be given to permitting 
participation by a third-party requester in the full scope of issues 
addressed under the reissue statute. It was urged that the right of 
appeal and participation in the appeal process by the third-party 
requester should be limited to the scope permitted under the 
reexamination statute. The comment further questioned how the third-
party requester will be notified of its right to appeal within the 
scope of the reexamination proceeding, since typically there would be 
no separate action closing prosecution and right to appeal in a reissue 
proceeding.
Response to Issue 27
    When an inter partes reexamination proceeding is merged with a 
reissue application, the participation by the third-party requester 
shall be limited to issues within the scope of the inter partes 
reexamination. This is consistent with the recommendations of The 
Advisory Commission on Patent Law Reform: A Report to the Secretary of 
Commerce, August 1992 at page 117, ``that a full inter partes 
proceeding, even with certain restrictions, would lead to abuses of the 
process much as occurred in the reissue protests under the Dann 
amendments * * * [and] the USPTO is not an appropriate forum for an 
inter partes adversarial proceeding addressing all potential issues of 
validity.'' [Emphasis added]
    As to how the third-party requester will be notified (in the merged 
proceeding) of its right to appeal within the scope of the 
reexamination proceeding, since there is no provision in the reissue 
rules for a separate action closing prosecution and right to appeal, 
currently proposed Sec. 1.995 provides that when a third-party 
requester is involved in one or more proceedings including an inter 
partes reexamination proceeding, the merger of such proceedings will be 
accomplished so as to preserve a third-party requester's right to 
participate to the extent specifically provided for in these 
regulations. Due to the complexity of the merged reissue/reexamination 
proceedings and the varying issues presented as a result of the merger, 
the decision merging the reissue and reexamination proceedings will set 
forth the framework for various courses of action by the parties, 
including appeal notification and rights.

Issue 28

    One comment asked what relationship will there be between the 
Sec. 1.993 request to stay an interference (of the August 11, 1995, 
Notice of Proposed Rulemaking) and the Sec. 1.644(a) petition in 
interference, since the Sec. 1.993 ``request to stay an interference'' 
is really a form of a petition and should be covered or cross-
referenced in Sec. 1.644(a).
Response to Issue 28
    The request to stay an interference under Sec. 1.993 as currently 
proposed, and under present Sec. 1.565(e) is not an exact fit under any 
of subsections (1)-(3) of Sec. 1.644(a); thus, it provides an 
additional aspect of relief to the public. While subsection (2) of 
Sec. 1.644(a) might appear to overlap the Sec. 1.565(e) and Sec. 1.993 
request to stay an interference, Sec. 1.644(b) states that ``[a] 
petition under paragraph (a)(2) of this section shall not be filed 
prior to the party's brief for final hearing (see Sec. 1.656).'' Just 
as petitions under Sec. 1.644 are decided by the Chief Administrative 
Patent Judge of the Board of Patent Appeals and Interferences, a 
request to stay an interference under Sec. 1.565(e) and Sec. 1.993 will 
likewise be decided by the Chief Administrative Patent Judge of the 
Board of Patent Appeals and Interferences. The decision of Shaked v. 
Taniguchi, 21 USPQ2d 1289 (Comm'r Pat. 1991) should be noted, where it 
was pointed out that neither the reexamination nor the interference 
will ordinarily be stayed in this situation.

Discussion of the Major Specific Issues Involved (1999 Statute)

    The proposed rules relating to inter partes reexamination 
proceedings are directed to the provisions set forth in Chapter 31 of 
Title 35 of the United

[[Page 18165]]

States Code (35 U.S.C. 311-318). This Chapter provides for the filing 
of requests for inter partes reexamination, decisions on such requests, 
inter partes reexamination, appeal from inter partes reexamination 
decisions, and the issuance of a certificate at the termination of the 
inter partes reexamination proceedings.

Discussion of Specific Rules

    Section 1.4 is proposed to be amended so that paragraph (a)(2) 
includes the inter partes reexamination under Secs. 1.902--1.997.
    Section 1.6 is proposed to be amended so that paragraph (d)(5) 
includes filing a request for inter partes reexamination under 
Sec. 1.913 as an exception to the use of facsimile transmission.
    Section 1.17 is proposed to be amended so that the title includes a 
reference to reexamination to clearly indicate that the enumerated fees 
may apply to reexaminations as well as to patent applications. Section 
1.17 is proposed to be amended so that paragraph (l) reflects the fact 
that in the case of reexaminations, petitions for revival of a 
reexamination proceeding terminated for an unavoidable failure of the 
patent owner to respond will require the fees of $55 for a small entity 
and $110 for a large entity. Also, Sec. 1.17 is proposed to be amended 
so that paragraph (m) reflects the fact that in the case of 
reexaminations, petitions for revival of a reexamination proceeding 
terminated for an unintentional failure to respond will require the 
fees of $605 for a small entity and $1,210 for a large entity. Note, 
however, that the unintentional revival provisions of the statute are 
not effective in any reexamination until November 29, 2000.
    Section 1.20 is proposed to be amended so that paragraph (c) 
reflects the fact that a request for an ex parte reexamination under 
Sec. 1.510(a) will require a filing fee of $2,520; and that a request 
for an inter partes reexamination under Sec. 1.915(a) will require a 
filing fee of $8,800.
    Section 1.25, which provides for charging fees to deposit accounts, 
is proposed to be amended so that paragraph (b) includes a reference to 
inter partes reexaminations under Sec. 1.913.
    Section 1.26 is proposed to be amended so as to reflect the refund 
to the reexamination requester where the Director decides not to 
institute a reexamination proceeding. For ex parte reexaminations filed 
under Sec. 1.510, a refund of $1,690 will be made to the reexamination 
requester. For inter partes reexaminations filed under Sec. 1.913, a 
refund of $7,970 will be made to the reexamination requester. In both 
cases $830 of the filing fee will be retained, which amount reflects 
the cost of the reexamination proceeding through the denial of the 
reexamination request.
    Section 1.112 is proposed to be amended so that the last sentence 
reflects the fact that in the case of inter partes reexaminations, the 
right to reply may be limited by an action closing prosecution under 
Sec. 1.949 (prior to the final action) or by a right of appeal notice 
under Sec. 1.953 (which is a final action).
    Section 1.113, which provides for a final rejection or action, is 
proposed to be amended to limit its applicability to applications and 
ex parte reexaminations filed under Sec. 1.510. For final rejections or 
actions in an inter partes reexamination filed under Sec. 1.913, new 
Sec. 1.953 will control.
    Section 1.116 is proposed to be amended so that the title includes 
a reference to an action closing prosecution and a right of appeal 
notice in inter partes reexaminations. Paragraph (a), which provides 
for amendments after final action, is proposed to be amended to apply 
to amendments after an action closing prosecution by patent owners in 
inter partes reexaminations filed under Sec. 1.913. Also Sec. 1.116(a) 
is proposed to be amended to preclude amendments after the right of 
appeal notice under Sec. 1.953 except as provided for in Sec. 1.116(c). 
Paragraph (c), which provides for amendments after the decision on 
appeal, is proposed to be amended to provide for amendments after the 
decision on appeal in an inter partes reexamination.
    Section 1.121(c), which provides for the manner of making 
amendments to the description and claims in reexamination proceedings, 
is proposed to be amended to specify that such amendments are made in 
accordance with Sec. 1.530(d) in both ex parte reexaminations filed 
under Sec. 1.510 and inter partes reexaminations filed under 
Sec. 1.913.
    Parts (a)(2) and (b) of Sec. 1.136, which provide for filing of 
timely replies with petitions for extensions of time, are proposed to 
be amended to make it clear that Sec. 1.956 is controlling for 
extensions of time in inter partes reexaminations.
    Section 1.137, which provides for revival of abandoned applications 
or lapsed patents, is proposed to be amended to provide for revival of 
ex parte reexamination proceedings terminated under Sec. 1.550(d), for 
revival of inter partes reexamination proceedings terminated under 
Sec. 1.957(b), or for revival of rejected claims terminated under 
Sec. 1.957(c) in an inter partes reexamination proceeding where further 
prosecution has been limited to claims found allowable at the time of 
the failure to respond. The title is being amended to include a 
terminated reexamination proceeding. Paragraph (a) is being amended to 
include revival of unavoidably terminated reexamination proceedings. 
The unavoidable delay provisions of 35 U.S.C. 133 are imported into and 
are applicable to reexamination proceedings by 35 U.S.C. 305 and 314. 
See In re Katrapat, 6 USPQ2d 1863 (Comm'r Pats. 1988). Paragraph (b) is 
being amended to provide for revival of unintentionally terminated 
reexamination proceedings. The unintentional delay fee provisions of 35 
U.S.C. 41(a)(7) are imported into and are applicable to all 
reexamination proceedings by section 4605 of S. 1948. Note that these 
changes pertain to all reexaminations (i.e., both ex parte 
reexaminations filed under Sec. 1.510 and inter partes reexaminations 
filed under Sec. 1.913) and become effective on November 29, 2000 (one 
year after enactment of statute). Paragraph (d) is being amended to 
provide that extensions of time for requesting reconsideration of a 
decision dismissing or denying a petition requesting revival of a 
terminated reexamination proceeding under subsections (a) or (b) must 
be filed under Sec. 1.550(c) for a terminated ex parte reexamination 
proceeding, or under Sec. 1.956 for a terminated inter partes 
reexamination proceeding.
    Section 1.181, is proposed to be amended so that paragraphs (a) and 
(c) reflect the fact that such a petition may be filed in a 
reexamination proceeding.
    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 
applications and ex parte reexaminations filed under Sec. 1.510, but 
not to inter partes reexamination proceedings filed under Sec. 1.913. 
Specifically, proposed Sec. 1.191 would point out that appeals to the 
Board of Patent Appeals and Interferences in inter partes reexamination 
proceedings filed under Sec. 1.913 are controlled by Secs. 1.959 
through 1.981, and that Secs. 1.191 through 1.198 are not applicable to 
appeals in inter partes reexamination proceedings filed under 
Sec. 1.913.
    Section 1.191 is further proposed to be amended to distinguish 
between ex parte reexamination proceedings filed under Sec. 1.510 for 
patents that issued

[[Page 18166]]

from an original application filed in the United States prior to 
November 29, 1999 (where an appeal is permitted when claims have been 
twice or finally rejected), and ex parte reexamination proceedings 
filed for patents that issued from an original application filed in the 
United States on or after November 29, 1999 (where an appeal is only 
possible when claims have been finally rejected). This date distinction 
is necessitated by the conforming amendments to 35 U.S.C. 134 in S. 
1948 and the effective date of the changes to the statute which are 
keyed to the original filing date of the application which issued as 
the patent under reexamination. The effective date language in section 
4608 of S. 1948 limits the applicability of the new inter partes 
reexamination Chapter 31, and the conforming amendments to 35 U.S.C. 
134, 141, 143 and 145, to a reexamination of any patent that issues 
from an original application which is filed in the United States on or 
after November 29, 1999. Thus, for ex parte reexaminations filed under 
Chapter 30, the conforming amendments to 35 U.S.C. 134, 141, 143 and 
145 only apply to those ex parte reexamination proceedings filed under 
Sec. 1.510 for patents that issue from an original application which is 
filed in the United States on or after November 29, 1999. The 
conforming amendments will not apply to ex parte reexamination 
proceedings filed under Sec. 1.510 for patents that have issued or will 
issue from an original application which was filed in the United States 
prior to November 29, 1999.
    Section 1.301, which provides for appeal by the patent owner in a 
reexamination proceeding to the U.S. Court of Appeals for the Federal 
Circuit, is proposed to be amended so as to be applicable to ex parte 
reexamination proceedings filed under Sec. 1.510 and to indicate, for 
inter partes reexamination proceedings filed under Sec. 1.913, that 
Sec. 1.983 is controlling.
    Parts (a) and (b) of section 1.303, which provide for remedy by 
civil action under 35 U.S.C. 145 for the patent owner in a 
reexamination proceeding, are proposed to be amended so as to be 
applicable in reexamination only to ex parte reexaminations filed under 
Sec. 1.510 for patents that issue from an original application which is 
filed in the United States prior to November 29, 1999. This date 
distinction is necessitated by the conforming amendments to 35 U.S.C. 
141 and the effective date of the statute which is keyed to the 
original filing date of the application which issues as the patent 
under reexamination. See sections 4605 and 4608 of S. 1948. The 
effective date language limits the applicability of the new inter 
partes reexamination Chapter 31, and the conforming amendments to 35 
U.S.C. 141, to any patent that issues from an original application 
which is filed in the United States on or after November 29, 1999. 
Thus, for ex parte reexaminations filed under Chapter 30, the 
conforming amendments to 35 U.S.C. 141, which limit the patent owner to 
an appeal only to the U.S. Court of Appeals for the Federal Circuit, 
only apply to those ex parte reexamination proceedings filed under 
Sec. 1.510 for patents that issue from an original application which is 
filed in the United States on or after November 29, 1999. The 
conforming amendments in section 4605 of S. 1948 will not apply to ex 
parte reexamination proceedings filed under Sec. 1.510 for patents that 
issue from an original application which is filed in the United States 
prior to November 29, 1999. It is further proposed to amend Sec. 1.303 
by adding a new subsection (d) to clearly note that no remedy by civil 
action under 35 U.S.C. 145 is available to the patent owner for ex 
parte reexamination proceedings filed under Sec. 1.510 for patents that 
issue from an original application which is filed in the United States 
on or after November 29, 1999, and for any inter partes reexamination 
proceedings filed under Sec. 1.913.
    Section 1.304, which provides for the time for appeal by the patent 
owner in a reexamination proceeding to the U.S. Court of Appeals for 
the Federal Circuit, is proposed to be amended so as to be applicable 
to inter partes reexamination proceedings filed under Sec. 1.913.
    The section heading (title) to Subpart D is proposed to be amended 
by inserting ``Ex Parte'' before Reexamination to provide that the 
reexamination rules in this part generally apply to ex parte 
reexamination proceedings. Since some of the rules also apply to inter 
partes reexamination, they are specifically incorporated into the inter 
partes reexamination rules, e.g., Sec. 1.933 (patent owner duty of 
disclosure) incorporates Sec. 1.555; and Sec. 1.943 (manner of making 
amendments) incorporates Sec. 1.530(d)(5). Unless specifically stated 
otherwise, in this subpart the term ``reply'' shall also mean 
``response.''
    The titles of Secs. 1.501-1.570 and the undesignated center 
headings for Subpart D are proposed to be amended by revising them to 
be limited to ex parte reexamination except as specifically stated 
otherwise (e.g., Secs. 1.530, 1.555 and 1.565).
    Proposed section 1.501, which provides for citations of prior art 
in patent files, sets forth the procedure that citations shall be 
entered in the patent file unless a reexamination proceeding is pending 
and reexamination has been ordered. In this situation, only citations 
by the patent owner under Sec. 1.555 and by a third-party requester 
under either Sec. 1.510 or Sec. 1.535 will be entered during the 
pendency of the reexamination proceeding. Citations by other parties 
filed during the pendency of the reexamination proceeding will not be 
entered into the patent file or the reexamination file until the 
reexamination proceeding is concluded. The section is further amended 
to indicate that processing of prior art citations in patent files 
during an inter partes reexamination proceeding filed under Sec. 1.913 
is controlled by Sec. 1.902.
    Section 1.510, which relates to the contents of the reexamination 
request, is proposed to be amended to limit the section to ex parte 
reexamination proceedings. In addition, Sec. 1.510(b)(4) is proposed to 
be amended to delete the requirement of mounting the copy of the patent 
to be reexamined in single column format. Instead, a copy of the entire 
patent including the front face, drawings, and specification/claims (in 
double column format) for which reexamination is requested, and a copy 
of any disclaimer, certificate of correction, or reexamination 
certificate issued in the patent will be required. All copies must have 
each page plainly written on only one side of a sheet of paper.
    It is proposed to amend Secs. 1.515, 1.520, 1.525, 1.530, 1.535, 
and 1.540 to recite the reexamination as ``ex parte'' reexamination 
where appropriate, to eliminate any potential for confusion. Further, 
Sec. 1.530(d) is proposed to be revised so that it applies to both ex 
parte reexamination and inter partes reexamination proceedings.
    Section 1.550, which provides for the conduct of the reexamination 
proceeding, is proposed to be amended to limit the section to ex parte 
reexamination proceedings filed under Sec. 1.510. In addition, 
Sec. 1.550(d) is proposed to be amended to clarify that the failure to 
file a written statement of an interview required under Sec. 1.560(b) 
shall be the basis for terminating a reexamination proceeding. Proposed 
Sec. 1.550(e)(1) specifically provides for the revival of terminated ex 
parte reexamination proceedings under the unavoidable delay provisions 
of Sec. 1.137(a). The unavoidable delay provisions of 35 U.S.C. 133 are 
imported into and are applicable to ex parte reexamination proceedings 
by 35 U.S.C. 305. Proposed Sec. 1.550(e)(2) provides for the revival of 
terminated ex parte reexamination proceedings under the

[[Page 18167]]

unintentional provisions of Sec. 1.137(b). The unintentional delay fee 
provisions of 35 U.S.C. 41(a)(7) are imported into and are applicable 
to ex parte and inter partes reexamination proceedings by section 4605 
of S. 1948. Note, however, the unintentional delay fee provisions of 35 
U.S.C. 41(a)(7) only become effective in reexamination proceedings on 
November 29, 2000 (one year after enactment of statute).
    Section 1.560, which provides for interviews in reexamination 
proceedings, is proposed to be amended to limit the section to ex parte 
reexamination proceedings filed under Sec. 1.510. Note, however, that 
there will be no interviews which address the issues of the proceeding 
permitted in inter partes reexamination proceedings under Sec. 1.913. 
See Sec. 1.955.
    In addition, Sec. 1.560(b) is proposed to be amended to clarify 
that the patent owner must file a written statement of an interview 
after an interview is held. The written statement may be filed either 
as a separate paper or as a separate part of a response to an 
outstanding Office action, whichever is later.
    Section 1.565, which provides for concurrent Office proceedings, is 
proposed to be amended to limit the section to ex parte reexamination 
proceedings filed under Sec. 1.510. In addition, Sec. 1.565(e) is 
proposed to be amended to change ``examiner-in-chief'' to 
``administrative patent judge'' to reflect their current title. Also, 
the appropriate references for concurrent ex parte and inter partes 
reexamination situations have been added. Section 1.565(c) is proposed 
to be amended to make it clear that after prosecution has been 
terminated in a pending reexamination proceeding (e.g., by the issuance 
of a Notice of Intent to Issue a Reexamination Certificate) there is no 
right of merger of any subsequently filed reexamination request.
    It is proposed to amend Sec. 1.570 to recite the reexamination as 
``ex parte'' reexamination where appropriate, to eliminate any 
potential for confusion.
    In the current rules, or portions of the rules, that are amended in 
this package, ``Commissioner,'' has been revised to read ``Director'' 
in accordance with section 4732 of S. 1948. As to the rules, or portion 
of the rules, not being revised in this package, it is anticipated that 
the technical correction of ``Commissioner'' to ``Director'' will be 
effected in a future rule package directed to technical corrections 
that will be issued in due course.
    The proposed title to Subpart H provides that the reexamination 
rules in this part generally apply to inter partes reexamination 
proceedings. Some of the inter partes reexamination rules specifically 
incorporate ex parte reexamination rules, e.g., Sec. 1.943 (manner of 
making amendments) incorporates Sec. 1.530(d)(5), and Sec. 1.933 
(patent owner duty of disclosure) incorporates Sec. 1.555. Unless 
specifically stated otherwise, in this subpart the term ``reply'' shall 
also mean ``response.''
    Proposed Sec. 1.902 provides for the processing of prior art 
citations during an inter partes reexamination proceeding and is 
consistent with the provisions of Sec. 1.501 which deals with prior art 
citations in patent files and in ex parte reexamination proceedings.
    Proposed Sec. 1.903 provides that the patent owner and the third-
party requester shall be sent copies of all Office actions, and that 
the patent owner and the third-party requester must serve copies of all 
papers on all other parties in the inter partes reexamination 
proceeding or they may be refused consideration by the Office. This is 
analogous to the provisions of Sec. 1.550(e).
    Proposed Sec. 1.904 provides that the notices of filing of inter 
partes reexamination requests will be published in the Official Gazette 
under Sec. 1.11(c) and that such a notice will be considered to be 
constructive notice to the patent owner.
    Proposed Sec. 1.905 provides that, unless otherwise provided for, 
submission of papers by the public other than third-party requesters in 
an inter partes reexamination proceeding will not be considered in the 
proceeding and will be treated in accordance with the requirements of a 
prior art submission under Sec. 1.902. Submissions not in accordance 
with Sec. 1.902 will be returned to the sender.
    Proposed Sec. 1.906 covers the scope of reexamination in an inter 
partes reexamination proceeding. While it is not intended that the 
examiners will routinely complete a new search when conducting an inter 
partes reexamination, the examiners may conduct additional searches and 
cite and apply additional prior patents and printed publications when 
they consider it appropriate and beneficial to do so. Paragraph (a) 
provides that 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 with respect to subject matter added or deleted during the inter 
partes reexamination. Paragraph (b) provides that claims in a 
reexamination proceeding must not enlarge the scope of the claims of 
the patent and must not introduce new matter. Paragraph (c) provides 
that issues relating to matters other than those indicated in 
paragraphs (a) and (b) of this section (e.g., on sale, public use, duty 
of disclosure, etc.) will not be resolved in a reexamination 
proceeding, but will be noted by the examiner as being an open issue in 
the record. The examiner should only raise an issue under Sec. 1.906(c) 
with caution after careful consideration, and should only raise the 
issue once. Patent owners could then file a reissue application if they 
wish such issues to be resolved.
    Proposed Sec. 1.907 sets forth prohibitions on the filing of an 
inter partes reexamination request. The basis for this section is 35 
U.S.C. 317. Under Sec. 1.907(a), once an order for inter partes 
reexamination has been issued, neither the third-party requester, nor 
any of its privies, may file a subsequent request for an inter partes 
reexamination of the patent until an inter partes reexamination 
certificate is issued, unless authorized by the Director. Under 
subsection (b) once a final decision has been entered against a party 
in a civil action that the party has not sustained its burden of 
proving invalidity of any patent claim in suit, then that party, and 
its privies, are thereafter precluded from requesting an inter partes 
reexamination of any such patent claim on the basis of issues which 
that party, or its privies, raised or could have raised in such civil 
action, and an inter partes reexamination requested by that party, or 
its privies, on the basis of such issues may not thereafter be 
maintained by the Office. Under subsection (c) if a final decision in 
an inter partes reexamination proceeding instituted by a third-party 
requester is favorable to patentability of any patent claim, then that 
party, or its privies, may not thereafter request inter partes 
reexamination of any such patent claim on the basis of issues which 
that party, or its privies, raised or could have raised in such inter 
partes reexamination proceeding.
    Proposed Sec. 1.913 provides for any third-party requester (except 
if the estoppel provisions of Sec. 1.907 apply) to file a request under 
35 U.S.C. 311 for an inter partes reexamination of a patent which 
issued from an original application filed in the United States on or 
after November 29, 1999. The time period for filing such a request is 
limited to the period of enforceability of the patent for which the 
request is filed.
    Proposed Sec. 1.915(a) requires payment of the fee for requesting 
an inter partes reexamination which is set forth in Sec. 1.20(c)(2). 
Paragraph (b) of Sec. 1.915 indicates what each request for inter 
partes reexamination must include. The requirements are analogous to 
the

[[Page 18168]]

requirements of Sec. 1.510(b) for filing an ex parte reexamination 
request with the most notable difference being that the third-party 
requester must be identified in an inter partes reexamination request. 
Paragraph (c) indicates that requests for an inter partes reexamination 
may be filed by attorneys or agents on behalf of a third-party 
requester, but it is noted that the real party in interest must be 
identified. Paragraph (d) provides that if the request for inter partes 
reexamination does not meet all the requirements of paragraph (b), the 
third-party requester may be given an opportunity to complete the inter 
partes reexamination request to avoid having the proceeding vacated.
    Proposed Sec. 1.919 indicates that the date on which the entire fee 
for a request for inter partes reexamination is received will be 
considered to be the filing date of the request for inter partes 
reexamination.
    Proposed Sec. 1.923 provides for a determination by the examiner as 
to whether the request has presented a substantial new question of 
patentability under 35 U.S.C. 312 and requires that the determination 
be made within 3 months of the filing date of the request.
    Proposed Sec. 1.925 provides for a refund under Sec. 1.26(c) of a 
portion of the filing fee if inter partes reexamination is not ordered. 
See the discussion of Sec. 1.26(c) above as to the amount of the 
refund.
    Proposed Sec. 1.927 provides for review by petition to the Director 
of a decision refusing inter partes reexamination.
    Proposed Sec. 1.931 provides for ordering inter partes 
reexamination where a substantial new question of patentability has 
been found pursuant to Sec. 1.923. Under paragraph (b), the only 
limitation placed on the selection of the examiner by the Office is 
that the same examiner whose decision refusing inter partes 
reexamination was reversed on petition filed under Sec. 1.927 
ordinarily will not conduct the inter partes reexamination ordered in 
the decision granting the petition.
    Proposed Sec. 1.933 covers the duty of disclosure by a patent owner 
in an inter partes reexamination proceeding. The rule provides that the 
duty in an inter partes reexamination proceeding is the same as the 
patent owner's duty in an ex parte reexamination proceeding as set 
forth in Sec. 1.555 (a) and (b), and is satisfied by filing a paper in 
compliance with Sec. 1.555 (a) and (b).
    Proposed Sec. 1.935 indicates that the initial Office action on the 
merits usually accompanies the inter partes reexamination order as 
expressly provided for as an option in 35 U.S.C. 313. It is 
contemplated that the initial paper from the examiner will comprise two 
parts. The first part will address the issue as to whether the prior 
art raises a substantial new question of patentability (SNQ). If the 
examiner determines that the prior art does not raise an SNQ, 
reexamination is denied. No patentability question would be addressed 
by the examiner. If the examiner determines that the prior art does 
raise an SNQ, reexamination will be ordered. In this situation, a 
second part of the initial Office action will usually be issued which 
would address the patentability issues and will constitute the first 
Office action on the merits.
    Proposed Sec. 1.937 would cover the basic items relating to the 
conduct of inter partes reexamination proceedings. Paragraph (a) 
provides that, in accordance with 35 U.S.C. 314(c), unless otherwise 
provided by the Director for good cause, all inter partes reexamination 
proceedings will be conducted with special dispatch. Paragraph (b) 
provides that all inter partes reexamination proceedings will be 
conducted according to the procedures established for initial 
examination under Secs. 1.104-1.116. These proceedings will basically 
follow the procedures for examining patent applications. Paragraph (c) 
provides that all communications between the Office and the parties to 
the inter partes reexamination which are directed to the merits of the 
proceeding must be in writing and filed with the Office for entry into 
the record of the proceeding.
    Proposed Sec. 1.939 provides for the return of unauthorized papers 
filed by any party in an inter partes reexamination, and that unless 
otherwise authorized, no paper shall be filed in an inter partes 
reexamination before the initial Office action on the merits.
    Proposed Sec. 1.941 provides that amendments made by the patent 
owner in an inter partes reexamination must be made in accordance with 
the requirements of Secs. 1.530(d) and 1.943.
    Proposed Sec. 1.943, paragraph (a) provides that the form of 
responses, briefs, appendices, and other papers must be in accordance 
with Sec. 1.530(d)(5). Paragraph (b) provides for page limits for 
responses by the patent owner and written comments by the third-party 
requester (other than briefs). Amendments, appendices of claims, and 
reference materials such as prior art references would not be included 
in this total. Paragraph (c) provides for page limits or total word 
limits for briefs.
    Proposed Sec. 1.945 provides that a patent owner will be given at 
least thirty days to respond to any Office action on the merits. 
Although problems may arise in certain cases and extensions of time may 
be granted under Sec. 1.956, it is felt that relatively short response 
times are necessary in order to process reexaminations with ``special 
dispatch.'' While the Office intends to set a two-month period for 
patent owner to respond to an Office action on the merits in usual 
situations, the minimum period will always be at least 30 days.
    Proposed Sec. 1.947 provides that each time a patent owner files a 
response to any Office action on the merits, the third-party requester 
may once file written comments within a period of 30 days from the date 
of service of the patent owner's response. Since 35 U.S.C. 314(b)(3) 
statutorily imposes this period for third-party requester comments, 
this time may not be extended. Thus, any third-party comments, 
including any supplemental comments, filed after expiration of 30 days 
from the date of service of the patent owner's response shall be 
considered to be untimely filed and unauthorized, and shall be returned 
to the third-party in accordance with Sec. 1.939.
    Proposed Sec. 1.948 provides that additional third-party requester 
prior art submissions as defined under Sec. 1.501 may be filed after 
the inter partes reexamination order only if they are submitted as part 
of a comments submission under Sec. 1.947 (written comments to a patent 
owner response to an Office action on the merits) and limited to: (1) 
Any prior art which is necessary to rebut a finding of fact by the 
examiner; (2) any prior art which is necessary to rebut a response of 
the patent owner; or (3) any prior art which became known or available 
to the third-party requester after the filing of the inter partes 
request for reexamination where a discussion of the pertinency of each 
reference to the patentability of at least one claim is included. The 
purpose of this rule is twofold. First, the third-party requester may 
cite any prior art needed to rebut a position taken by the examiner or 
the patent owner. Second, the third-party requester may submit prior 
art newly discovered or newly available since the filing of the inter 
partes reexamination request provided a discussion of the pertinency of 
each reference to the patentability of at least one claim is included. 
The only limitation is that the prior art may only be submitted along 
with written comments filed by the third-party requester under 
Sec. 1.947 in response to a patent owner response to an Office action 
on the merits. Limiting prior art submissions to newly discovered or

[[Page 18169]]

newly available prior art (except when used for rebuttal purposes) will 
encourage the third-party requester to submit all known pertinent prior 
art along with the initial request for inter partes reexamination. 
Later submission of previously known or available prior art would only 
be permissible to rebut a position taken by the examiner or the patent 
owner, or through the filing of an ex parte reexamination request 
(which, if ordered, would be merged with the inter partes reexamination 
proceeding). Permitting the third-party requester to timely submit 
newly discovered or previously unavailable prior art, however, will 
obviate the need for the third-party requester to have to file an ex 
parte request for reexamination. To prevent harassment of the patent 
owner due to frequent submissions of prior art citations during a 
reexamination proceeding, such submissions may only be filed along with 
written comments filed by the third-party requester in response to a 
patent owner response to an Office action on the merits or after an 
action closing prosecution.
    Proposed Sec. 1.949 provides for the close of prosecution on the 
second or subsequent Office action, as opposed to a final rejection or 
a final action which would be issued in an ex parte reexamination 
proceeding. The distinction between a final action (including a final 
rejection) and an action closing prosecution is important as appeal 
rights to the Board of Patent Appeals and Interferences under 35 U.S.C. 
134 (b) and (c) mature only with a final action (as opposed to ``twice 
rejected'' in an application under 35 U.S.C. 134(a)). The statute 
permits the patent owner to appeal finally rejected claims, and the 
third-party requester to appeal final decisions favorable to 
patentability to the Board of Patent Appeals and Interferences. The 
rules were drafted to provide for both the patent owner and the third-
party requester to submit comments on the examiner's patentability 
findings prior to making such findings final. The action closing 
prosecution (in lieu of a final action) is needed to preclude one party 
from filing a notice of appeal while another party is filing comments 
seeking reconsideration of an examiner's decision. It is only after the 
examiner has considered all the comments submitted by all the parties 
that a final rejection and final decision favorable to patentability 
will be issued by way of the Right of Appeal Notice under Sec. 1.953. 
At that time, both the patent owner and the third-party requester may 
appeal to the Board of Patent Appeals and Interferences.
    Proposed Sec. 1.951 provides the options available to the parties 
after an Office action closing prosecution. Both the patent owner and 
the third-party requester may once file a response limited to issues 
raised in the action closing prosecution. The patent owner may also 
submit proposed amendments (subject to the criteria of Sec. 1.116 as to 
whether or not the amendments shall be admitted). If one party files a 
response, the other party may once file written comments on the other's 
response. The time periods within which the patent owner and the third-
party requester may act (as provided for by this section) may run 
concurrently. In this manner all parties are provided an equal 
opportunity to contest the examiner's patentability findings before the 
findings are made final and ripe for appeal.
    Proposed Sec. 1.953(a) 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 
and/or final decision favorable to patentability in accordance with 35 
U.S.C. 134. The intent of limiting the appeal rights until after the 
examiner issues a ``Right of Appeal Notice'' is to specifically 
preclude the possibility of one party attempting to appeal prematurely 
while prosecution before the examiner is being continued by the other 
party.
    Proposed Sec. 1.953(b) provides that any time after the initial 
Office action on the merits in an inter partes reexamination, the 
patent owner and all third-party requesters may stipulate that the 
issues are appropriate for a final action, which would include a final 
rejection and/or a final determination favorable to patentability, and 
may request the issuance of a Right of Appeal Notice. If the examiner 
determines that no other issues are present or should be raised, a 
Right of Appeal Notice limited to the identified issues shall be 
issued. The request for an expedited notice will enable the parties to 
accelerate the inter partes reexamination proceeding. Proposed 
Sec. 1.953(c) provides that the Right of Appeal Notice shall be a final 
action, which would include a final rejection and/or final decision 
favorable to patentability, and that no amendment under Sec. 1.116 can 
be made in response to the Right of Appeal Notice. The Right of Appeal 
Notice shall set a one-month time period for either party to appeal. If 
no appeal is filed, the reexamination proceeding will be terminated, 
and the Director will proceed to issue a certificate under Sec. 1.997 
in accordance with the Right of Appeal Notice.
    Proposed Sec. 1.955 provides that interviews between the examiner 
and the patent owner and/or the third-party requester which discuss the 
merits of the proceeding will not be permitted in inter partes 
reexamination proceedings. Thus, no separate ex parte interviews will 
be permitted, and no inter partes interviews will be permitted. All 
communications between the Office and the patent owner which are 
directed to the merits of the proceeding must be in writing and filed 
with the Office for entry into the record of the proceeding. An 
informal amendment will not be accepted, as that would amount to an 
informal ex parte interview. The Office has reconsidered its initial 
position taken in the August 11, 1995, Notice of Proposed Rulemaking 
which proposed to permit owner-initiated interviews in which the patent 
owner and the third-party requester participate. Thus, in the present 
rule package, no interviews will be held, nor be permitted, in inter 
partes reexamination cases which discuss the merits of the proceeding. 
In other words, neither the patent owner nor the third-party requester 
will be able to initiate, nor participate in, an ex parte nor an inter 
partes interview which discusses the merits of the proceeding in an 
inter partes reexamination proceeding. The rationale for this is 
discussed above in Issue 18 of the consideration of the comments 
responsive to the August 11, 1995, Notice of Proposed Rulemaking.
    Proposed Sec. 1.956 relates to patent owner extensions of time for 
responding to a requirement of the Office in inter partes reexamination 
proceedings. As in ex parte reexamination practice, a patent owner may 
only obtain an extension of time for sufficient cause, and the request 
for such extension must be filed on or before the end of the period for 
response. Note that the time for the third-party requester to file 
comments to patent owner responses may not be extended, as set forth in 
Sec. 1.947.
    Proposed Sec. 1.957(a) provides that a third-party requester's 
submission in inter partes reexamination may be refused consideration 
if it is untimely or is inappropriate. Proposed Sec. 1.957(b) and (c) 
relate to the patent owner's failure to timely or appropriately respond 
in inter partes reexamination proceedings. In this event, if no claims 
are found patentable, the proceeding shall be terminated and a 
reexamination certificate shall be issued. If claims are found 
patentable, further prosecution shall be limited to the patentable 
claims, and any additional claims that do not expand the scope of the 
patentable claims. Proposed Sec. 1.957(d) provides

[[Page 18170]]

that when the action by the patent owner is a bona fide attempt to 
respond and to advance the case, and is substantially a complete 
response to the Office action, but consideration of some matter or 
compliance with some requirement has been inadvertently omitted, an 
opportunity to explain and supply the omission may be given.
    Proposed Sec. 1.958(a) provides for the revival of terminated inter 
partes reexamination proceedings under the unavoidable delay provisions 
of Sec. 1.137(a). The unavoidable delay provisions of 35 U.S.C. 133 are 
imported into and are applicable to inter partes reexamination 
proceedings under 35 U.S.C. 314. Proposed Sec. 1.958(b) provides for 
the revival of terminated inter partes reexamination proceedings under 
the unintentional provisions of Sec. 1.137(b). The unintentional delay 
fee provisions of 35 U.S.C. 41(a)(7) are imported into and are 
applicable to inter partes reexamination proceedings under section 4605 
of S. 1948. Note, however, the unintentional delay fee provisions of 35 
U.S.C. 41(a)(7) only become effective in reexamination proceedings on 
November 29, 2000 (one year after enactment of statute).
    Proposed Sec. 1.959 relates to appeals and cross appeals to the 
Board of Patent Appeals and Interferences in inter partes reexamination 
proceedings. Both patent owners and third-party requesters are given 
appeal rights in accordance with 35 U.S.C. 315.
    Proposed Sec. 1.961 relates to time of transfer of the jurisdiction 
of the appeal over to the Board of Patent Appeals and Interferences in 
inter partes reexamination proceedings.
    Proposed Sec. 1.962 relates to the definition of appellant and 
respondent in inter partes reexamination proceedings.
    Proposed Sec. 1.963 relates to the time periods for filing briefs 
in inter partes reexamination proceedings.
    Proposed Sec. 1.965 relates to the requirements of the appellant 
brief in inter partes reexamination proceedings.
    Proposed Sec. 1.967 relates to the requirements of the respondent 
brief in inter partes reexamination proceedings.
    Proposed Sec. 1.969 relates to the examiner's answer. An examiner's 
answer may not include a new ground of rejection nor a new decision 
favorable to patentability. In either case (if there is to be a new 
ground of rejection or a new decision favorable to patentability), 
prosecution should be reopened.
    Proposed Sec. 1.971 gives any appellant one opportunity to file a 
rebuttal brief following the examiner's answer. The rebuttal brief 
filed by an appellant who is the patent owner is limited to the issues 
raised in the examiner's answer and/or in any respondent brief. The 
rebuttal brief filed by an appellant who is a third-party requester is 
limited to the issues raised in the examiner's answer and/or in the 
patent owner's respondent brief. The rebuttal brief of a third-party 
requester may not be directed to the respondent brief of any other 
third-party requester. No new ground of rejection can be proposed by a 
third-party requester appellant.
    Proposed Sec. 1.973 relates to the oral hearing in inter partes 
reexamination proceedings.
    Proposed Sec. 1.975 relates to affidavits or declarations after 
appeal in inter partes reexamination proceedings.
    Proposed Sec. 1.977 relates to the decision by the Board of Patent 
Appeals and Interferences in inter partes reexamination proceedings. A 
reversal of an examiner's decision favorable to patentability (i.e., a 
decision not to make a rejection proposed by the third-party requester) 
constitutes a decision adverse to patentability which will be set forth 
as a new ground of rejection under Sec. 1.977(b).
    Proposed Sec. 1.979 relates to the procedure following the decision 
or dismissal by the Board of Patent Appeals and Interferences in inter 
partes reexamination proceedings.
    Proposed Sec. 1.981 relates to the procedure for the reopening of 
prosecution following the decision by the Board of Patent Appeals and 
Interferences in inter partes reexamination proceedings.
    Proposed Sec. 1.983 relates to the patent owner's right to appeal 
to the United States Court of Appeals for the Federal Circuit in inter 
partes reexamination proceedings. Under section 141, the patent owner 
in inter partes reexamination proceedings may appeal the decision of 
the Board of Patent Appeals and Interferences only to the United States 
Court of Appeals for the Federal Circuit. Under section 134(c), the 
third-party requester in inter partes reexamination proceedings may not 
appeal the decision of the Board of Patent Appeals and Interferences.
    Proposed Sec. 1.985 relates to notification of prior or concurrent 
proceedings in inter partes reexamination proceedings. Paragraph (a) 
requires the patent owner to notify the Office of any prior or 
concurrent proceeding involving the patent under inter partes 
reexamination. Paragraph (b) permits any member of the public to notify 
the Office of any prior or concurrent proceeding involving the patent 
under inter partes reexamination. Such notice, however, must be limited 
to merely providing notice without discussion of the issues in the 
inter partes reexamination. Any notice that includes a discussion of 
the issues will be returned to the sender.
    Proposed Sec. 1.987 provides that when a patent involved in an 
inter partes reexamination is concurrently involved in litigation, the 
Director shall determine whether or not to suspend the inter partes 
reexamination proceeding.
    Proposed Sec. 1.989 relates to the merger of concurrent 
reexamination proceedings.
    Proposed Sec. 1.991 relates to the merger of a concurrent reissue 
application and an inter partes reexamination proceeding.
    Proposed Sec. 1.993 relates to the suspension of a concurrent 
interference or an inter partes reexamination proceeding.
    Proposed Sec. 1.995 relates to the third-party requester's 
participation rights being preserved in a merged proceeding.
    Proposed Sec. 1.997 provides for the issuance of the reexamination 
certificate under 35 U.S.C. 316 after conclusion of an inter partes 
reexamination proceeding. The certificate will cancel any patent claims 
determined to be unpatentable, confirm any patent claims determined to 
be patentable, and incorporate into the patent any amended or new 
claims determined to be patentable. Once all of the claims have been 
canceled from the patent, the patent ceases to be enforceable for any 
purpose. Accordingly, any pending reissue proceeding or other Office 
proceeding relating to a patent for which a certificate that cancelled 
all of the patent claims has been issued will be terminated. This 
provides a degree of assurance to the public that patents with all the 
claims canceled via inter partes reexamination proceedings will not 
again be asserted.

Classification

Regulatory Flexibility Act

    The Chief Counsel for Regulation of the Department of Commerce 
certified to the Chief Counsel for Advocacy, Small Business 
Administration, that the changes proposed in this notice, if adopted, 
would not have a significant impact on a substantial number of small 
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). This rulemaking 
implements the provisions of Title IV, subtitle F (sections 4601 
through 4608) of the ``American Inventors Protection Act of 1999,'' 
which permits a third-party requester to participate more extensively 
during the reexamination proceeding as well as giving them appeal 
rights. The changes proposed in

[[Page 18171]]

this notice (if adopted) would provide procedures for a third-party to 
request optional inter partes reexamination of a patent. The new inter 
partes proceedings are similar to the ex parte proceedings, although 
they are more complicated procedurally to accommodate the presence of 
the third-party.
    Taking into account the overall similarities and additional 
complexity, it is reasonable to assume that a similar proportion of 
small entities will request inter partes reexamination as have 
requested ex parte reexamination. Furthermore, it is anticipated that 
inter partes reexamination requests will be filed by third-party 
requesters, while patent owners will continue to file ex parte 
reexamination requests. Approximately 400 ex parte reexamination 
filings have been received each year since 1992, of which 55% or 220 
have been filed by third-party requesters. Since the beginning of the 
reexamination procedure, about 22.5% of the ex parte reexamination 
requesters have been small entities. If all 220 of the third-party 
filed reexamination requests were filed as requests for inter partes 
reexaminations, approximately 50 requests (22.5%) would come from small 
entities. The higher cost of the inter partes reexamination fee 
($8,800) compared to the ex parte reexamination fee ($2,520) reflects 
the greatly expanded participation available to the third-party 
requester. In the inter partes proceeding, the third party requester 
has the right to comment on every response by the patent owner to the 
PTO, to be a party to any appeal by the patent owner to the Board of 
Patent Appeals and Interferences, and to appeal any determination of 
patentability to the Board. In the ex parte proceeding, the third-party 
requester's role is limited to the request for reexamination and a 
single reply to the patent owner's response. The third party requester 
also has no appeal rights in an ex parte reexamination. Therefore, the 
number of small businesses affected by these proposed optional inter 
parte reexamination rules is not significant, and the impact on each 
business, considering the benefits of greater participation throughout 
the inter partes proceeding, is not significant.

Executive Order 13132

    This rulemaking does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (August 4, 1999).

Executive Order 12866

    This rulemaking has been determined to be not significant for 
purposes of Executive Order 12866 (September 30, 1993).

Paperwork Reduction Act

    This notice of proposed rulemaking involves information collection 
requirements which are subject to review by the Office of Management 
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 
3501 et seq.). The collection of information involved in this notice of 
proposed rulemaking has been reviewed and previously approved by OMB 
under OMB control number 0651-0033.
    As required by the Paperwork Reduction Act of 1995 (44 U.S.C. 
3507(d)), the Patent and Trademark Office has submitted an information 
collection package to OMB for its review and approval of the proposed 
information collections under OMB control number 0651-0033. The Patent 
and Trademark Office is submitting this information collection to OMB 
for its review and approval because this notice of proposed rulemaking 
will add the request for optional inter partes reexamination of a 
patent to that collection.
    The title, description and respondent description of the 
information collection is shown below with an estimate of the annual 
reporting burdens. Included in this estimate is the time for reviewing 
instructions, gathering and maintaining the data needed, and completing 
and reviewing the collection of information. The principal impact of 
the changes in this notice of proposed rulemaking is to implement the 
changes to Office practice necessitated by Title IV, subtitle F 
(sections 4601 through 4608) of the ``American Inventors Protection Act 
of 1999'' (enacted into law by Sec. 1000(a)(9), Division B, of Pub. L. 
106-113).
    OMB Number: 0651-0033.
    Title: Post Allowance and Refiling.
    Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
    Type of Review: Approved through September of 2000.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal 
Government.
    Estimated Number of Respondents: 172,475.
    Estimated Time Per Response: 0.3 hour.
    Estimated Total Annual Burden Hours: 51,593.5 hours.
    Needs and Uses: This collection of information is required to 
administer the patent laws pursuant to title 35, U.S.C., concerning the 
issuance of patents and related actions including correcting errors in 
printed patents, refiling of patent applications, requesting 
reexamination of a patent, and requesting a reissue patent to correct 
an error in a patent. The affected public includes any individual or 
institution whose application for a patent has been allowed or who 
takes action as covered by the applicable rules.
    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Robert J. Spar, Director, Patent Examination Policy Law 
Office, Patent and Trademark Office, Washington, D.C. 20231, or to the 
Office of Information and Regulatory Affairs of OMB, New Executive 
Office Building, 725 17th St. NW, Room 10235, Washington, DC 20503, 
Attention: Desk Officer for the Patent and Trademark Office.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects 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 Director of Patents and Trademarks by 35 U.S.C. 6, Part 1 
of Title 37 CFR is amended as set forth below.

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR Part 1 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:

[[Page 18172]]

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; of ex parte reexaminations of patents 
in Subpart D, Secs. 1.501 to 1.570; 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; of inter partes reexaminations of patents in 
Subpart H, Secs. 1.902 to 1.997; 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. Sections 1.17(l) and (m) are proposed to be revised to read as 
follows:


Sec. 1.17  Patent application and reexamination processing fees.

* * * * *
    (l) For filing a petition for the revival of an unavoidably 
abandoned application under 35 U.S.C. 111, 133, 364, or 371, for the 
delayed payment of the issue fee under 35 U.S.C. 151, or for the 
revival of an unavoidably terminated reexamination proceeding under 35 
U.S.C. 133 (Sec. 1.137(a)):


By a small  $55.00
     entity
 (Sec.  1.
      9(f))
  By other  110.00
     than a
      small
     entity
 


    (m) For filing a petition for revival of an unintentionally 
abandoned application, for the unintentionally delayed payment of the 
fee for issuing a patent, or for the revival of an unintentionally 
terminated reexamination proceeding under 35 U.S.C. 41(a)(7) 
(Sec. 1.137(b)):


By a small entity (Sec.  1.9(f))...........................      $605.00
By other than a small entity...............................     1,210.00
 

* * * * *
    5. Section 1.20(c) is proposed to be revised to read as follows:


Sec. 1.20  Post-issuance and reexamination fees.

* * * * *
    (c) In reexamination proceedings

(1) For filing a request for ex parte reexamination (Sec.      $2,520.00
 1.510(a)).................................................
(2) For filing a request for inter partes reexamination         8,800.00
 (Sec.  1.915(a))..........................................
 

* * * * *
    6. 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 to charge to a 
deposit account the fee for a request for reexamination pursuant to 
Sec. 1.510 or Sec. 1.913 and any other fees required in a reexamination 
proceeding of a patent may also be filed. 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.
    7. Section 1.26(c) is proposed to be revised to read as follows:


Sec. 1.26  Refunds.

* * * * *
    (c) If the Director decides not to institute a reexamination 
proceeding, for ex parte reexaminations filed under Sec. 1.510 a refund 
of $1,690.00 will be made to the reexamination requester. For inter 
partes reexaminations filed under Sec. 1.913, a refund of $7,970 will 
be made to the reexamination requester. Reexamination requester should 
indicate the form in which any refund should be made (e.g., by check, 
electronic funds transfer, credit to a deposit account, etc.). 
Generally, reexamination refunds will be issued in the form that the 
original payment was provided.
    8. Section 1.112 is proposed to be revised to read as follows:


Sec. 1.112  Reconsideration before final action.

    After reply by applicant or patent owner (Sec. 1.111) to a non-
final action, the application or the patent under reexamination will be 
reconsidered and again examined. The applicant, or in the case of a 
reexamination proceeding the patent owner and any third-party 
requester, will be notified if claims are rejected, objections or 
requirements made, or decisions favorable to patentability are made, in 
the same manner as after the first examination. Applicant or patent 
owner may reply to such Office action in the same manner provided in 
Sec. 1.111, with or without amendment, unless such Office action 
indicates that it is made final (Secs. 1.113), or in an inter partes 
reexamination, that it is an action closing prosecution (Sec. 1.949) or 
a right of appeal notice (Sec. 1.953).
    9. 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 by 
the examiner the rejection or other action may be made final, whereupon 
applicant's, or for ex parte reexaminations filed under Sec. 1.510 
patent owner's, reply 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 Director in the case of objections or 
requirements not involved in the rejection of any claim (Sec. 1.181). 
Reply 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 reply to a final rejection or action must comply with any 
requirements or objections as to form. For final actions in an inter 
partes reexamination filed under Sec. 1.913, see Sec. 1.953.
* * * * *
    10. Sections 1.116(a) and (c) are proposed to be revised to read as 
follows:


Sec. 1.116  Amendments after final action, action closing prosecution, 
right of appeal notice, or appeal.

    (a) After a final rejection or other final action (Sec. 1.113) in 
an application or in an ex parte reexamination filed under Sec. 1.510, 
or an action closing prosecution (Sec. 1.949) in an inter partes 
reexamination filed under Sec. 1.913, amendments may be made canceling 
claims or complying with any requirement of form expressly set forth in 
a previous Office action. Amendments presenting rejected claims in 
better form for consideration on appeal may be admitted. The admission 
of, or refusal to admit, any amendment after a final rejection, a final 
action, an action closing prosecution or any related proceedings, will 
not operate to relieve the application or patent under reexamination 
from its condition as subject to appeal or to save the application from 
abandonment under Sec. 1.135, or the reexamination from termination. No 
amendment can be

[[Page 18173]]

made in an inter partes reexamination proceeding after the right of 
appeal notice under Sec. 1.953 except as provided for in paragraph (c) 
of this section.
* * * * *
    (c) No amendment can be made as a matter of right in appealed 
cases. After decision on appeal, amendments can only be made as 
provided in Secs. 1.198 and 1.981, or to carry into effect a 
recommendation under Secs. 1.196 or 1.977.
    11. Section 1.121(c) is proposed to be revised to read as follows:


Sec. 1.121  Manner of making amendments.

* * * * *
    (c) Amendments in reexamination proceedings. Any proposed amendment 
to the description and claims in patents involved in reexamination 
proceedings in both ex parte reexaminations filed under Sec. 1.510 and 
inter partes reexaminations filed under Sec. 1.913 must be made in 
accordance with Sec. 1.530(d).
    12. Section 1.136(a) (2) and (b) are proposed to be revised to read 
as follows:


Sec. 1.136  Extensions of time.

    (a) * * *
    (2) The date on which the petition and the fee have been filed is 
the date for purposes of determining the period of extension and the 
corresponding amount of the fee. The expiration of the time period is 
determined by the amount of the fee paid. A reply must be filed prior 
to the expiration of the period of extension to avoid abandonment of 
the application (Sec. 1.135), but in no situation may an applicant 
reply later than the maximum time period set by statute, or be granted 
an extension of time under paragraph (b) of this section when the 
provisions of this paragraph are available. See Sec. 1.136(b) for 
extensions of time relating to proceedings pursuant to Secs. 1.193(b), 
1.194, 1.196 or 1.197; Sec. 1.304 for extensions of time to appeal to 
the U.S. Court of Appeals for the Federal Circuit or to commence a 
civil action; Sec. 1.550(c) for extensions of time in ex parte 
reexamination proceedings, Sec. 1.956 for extensions of time in inter 
partes reexamination proceedings; and Sec. 1.645 for extensions of time 
in interference proceedings.
* * * * *
    (b) When a reply cannot be filed within the time period set for 
such reply and the provisions of paragraph (a) of this section are not 
available, the period for reply will be extended only for sufficient 
cause and for a reasonable time specified. Any request for an extension 
of time under this paragraph must be filed on or before the day on 
which such reply is due, but the mere filing of such a request will not 
effect any extension under this paragraph. In no situation can any 
extension carry the date on which reply is due beyond the maximum time 
period set by statute. See Sec. 1.304 for extensions of time to appeal 
to the U.S. Court of Appeals for the Federal Circuit or to commence a 
civil action; Sec. 1.645 for extensions of time in interference 
proceedings; Sec. 1.550(c) for extensions of time in ex parte 
reexamination proceedings; and Sec. 1.956 for extensions of time in 
inter partes reexamination proceedings.
    13. Section 1.137 is proposed to be amended by revising its 
heading, the introductory text of paragraph (a), the introductory text 
of paragraph (b), and paragraph (d) to read as follows:


Sec. 1.137  Revival of abandoned application, lapsed patent, or 
terminated reexamination proceeding.

    (a) Unavoidable. Where the delay in reply was unavoidable, a 
petition may be filed to revive an abandoned application, a 
reexamination proceeding terminated under Secs. 1.550(d) and 1.957(b) 
and (c), or a lapsed patent pursuant to this paragraph. A grantable 
petition pursuant to this paragraph must be accompanied by:
* * * * *
    (b) Unintentional. Where the delay in reply was unintentional, a 
petition may be filed to revive an abandoned application, a 
reexamination proceeding terminated under Secs. 1.550(d) and 1.957(b) 
and (c), or a lapsed patent pursuant to this paragraph. A grantable 
petition pursuant to this paragraph must be accompanied by:
* * * * *
    (d) Any request for reconsideration or review of a decision 
refusing to revive an abandoned application, a terminated reexamination 
proceeding, or lapsed patent upon petition filed pursuant to this 
section, to be considered timely, must be filed within two months of 
the decision refusing to revive or within such time as set in the 
decision. Unless a decision indicates otherwise, this time period may 
be extended under the provisions of Sec. 1.136 for an abandoned 
application or lapsed patent; under the provisions of Sec. 1.550(c) for 
a terminated ex parte reexamination proceeding filed under Sec. 1.510; 
and under the provisions of Sec. 1.956 for a terminated inter partes 
reexamination proceeding filed under Sec. 1.913.
* * * * *
    14. Sections 1.181(a) and (c) are proposed to be revised to read as 
follows:


1.181  Petition to the Director.

    (a) Petition may be taken to the Director:
    (1) From any action or requirement of any examiner in the ex parte 
prosecution of an application, or in the ex parte or inter partes 
prosecution of a reexamination proceeding which is not subject to 
appeal to the Board of Patent Appeals and Interferences or to the 
court;
    (2) In cases in which a statute or the rules specify that the 
matter is to be determined directly by or reviewed by the Director; and
    (3) To invoke the supervisory authority of the Director in 
appropriate circumstances.
    (4) For petitions in interferences, see Sec. 1.644.
* * * * *
    (c) When a petition is taken from an action or requirement of an 
examiner in the ex parte prosecution of an application, or in the ex 
parte or inter partes prosecution of a reexamination proceeding, it may 
be required that there have been a proper request for reconsideration 
(Sec. 1.111) and a repeated action by the examiner. The examiner may be 
directed by the Director to furnish a written statement, within a 
specified time, setting forth the reasons for his or her decision upon 
the matters averred in the petition, supplying a copy thereof to the 
petitioner.
* * * * *
    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, and 
every owner of a patent under ex parte reexamination filed under 
Sec. 1.510 for a patent that issued from an original application filed 
in the United States before November 29, 1999, any of whose claims has 
been twice or finally (Sec. 1.113) rejected, may appeal from the 
decision of the examiner to the Board of Patent Appeals and 
Interferences by filing a notice of appeal and the fee set forth in 
Sec. 1.17(b) within the time period provided under Secs. 1.134 and 
1.136 for reply. Notwithstanding the above, for an ex parte 
reexamination proceeding filed under Sec. 1.510 for a patent that 
issued from an original application filed in the United States on or 
after November 29, 1999, no appeal may be filed until the claims have 
been finally rejected (Sec. 1.113). Appeals to the Board of Patent 
Appeals and Interferences in inter partes reexamination proceedings 
filed under Sec. 1.913 are controlled by Secs. 1.959 through 1.981. 
Sections 1.191 through

[[Page 18174]]

1.198 are not applicable to appeals in inter partes reexamination 
proceedings filed under Sec. 1.913.
    16. 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 any ex parte 
reexamination proceeding filed under Sec. 1.510, dissatisfied with the 
decision of the Board of Patent Appeals and Interferences, and any 
party to an interference dissatisfied with the decision of the Board of 
Patent Appeals and Interferences, may appeal to the U.S. Court of 
Appeals for the Federal Circuit. The appellant must take the following 
steps in such an appeal: In the U.S. Patent and Trademark Office, file 
a written notice of appeal directed to the Director (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. For inter 
partes reexamination proceedings filed under Sec. 1.913, Sec. 1.983 is 
controlling.
    17. Section 1.303 is proposed to be amended by revising paragraphs 
(a) and (b) and by 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 an ex parte 
reexamination proceeding filed under Sec. 1.510 for a patent that 
issues from an original application filed in the United States before 
November 29, 1999, dissatisfied with the decision of the Board of 
Patent Appeals and Interferences, and any party to an interference 
dissatisfied with the decision of the Board of Patent Appeals and 
Interferences may, instead of appealing to the U.S. Court of Appeals 
for the Federal Circuit (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 an ex parte reexamination proceeding filed under Sec. 1.510 
for a patent that issues from an original application filed in the 
United States before November 29, 1999, has taken an appeal to the U.S. 
Court of Appeals for the Federal Circuit, he or she thereby waives his 
or her right to proceed under 35 U.S.C. 145.
* * * * *
    (d) For an ex parte reexamination proceeding filed under Sec. 1.510 
for a patent that issues from an original application filed in the 
United States on or after November 29, 1999, and for an inter partes 
reexamination proceeding filed under Sec. 1.913, no remedy by civil 
action under 35 U.S.C. 145 is available.
    18. Sections 1.304(a)(1) and (a)(2) are proposed to be revised to 
read as follows:


Sec. 1.304  Time for appeal or civil action.

    (a)(1) The time for filing the notice of appeal to the U.S. Court 
of Appeals for the Federal Circuit (Sec. 1.302) or for commencing a 
civil action (Sec. 1.303) is two months from the date of the decision 
of the Board of Patent Appeals and Interferences. If a request for 
rehearing or reconsideration of the decision is filed within the time 
period provided under Sec. 1.197(b), Sec. 1.658(b), or Sec. 1.979(a), 
the time for filing an appeal or commencing a civil action shall expire 
two months after action on the request. In interferences the time for 
filing a cross-appeal or cross-action expires:
    (i) 14 days after service of the notice of appeal or the summons 
and complaint; or
    (ii) Two months after the date of decision of the Board of Patent 
Appeals and Interferences, whichever is later.
    (2) The time periods set forth in this section are not subject to 
the provisions of Secs. 1.136, 1.550(c), 1.956, or Sec. 1.645 (a) or 
(b).
* * * * *
    19. The heading for Subpart D is proposed to be revised to read as 
follows:

Subpart D--Ex Parte Reexamination of Patents

* * * * *
    20. Section 1.501 is proposed to be amended by revising its heading 
and paragraph (a) to read as follows:


Sec. 1.501  Citation of prior art in patent and ex parte reexamination 
files.

    (a) At any time during the period of enforceability of a patent, 
any person may cite to the Office in writing prior art consisting of 
patents or printed publications which that person states to be 
pertinent and applicable to the patent and believes to have a bearing 
on the patentability of any claim of the patent. If the citation is 
made by the patent owner, the explanation of pertinency and 
applicability may include an explanation of how the claims differ from 
the prior art. Such citations shall be entered in the patent file 
except as set forth in this section. Citations by the patent owner 
under Sec. 1.555 and by an ex parte reexamination requester under 
either Sec. 1.510 or Sec. 1.535 will be entered in the reexamination 
file during a reexamination proceeding. The entry in the patent file of 
citations submitted after the date of an order to reexamine pursuant to 
Sec. 1.525 by persons other than the patent owner, or an ex parte 
reexamination requester under either Sec. 1.510 or Sec. 1.535, will be 
delayed until the reexamination proceeding has been terminated. See 
Sec. 1.902 for processing of prior art citations in patent files and 
the reexamination file during an inter partes reexamination proceeding 
filed under Sec. 1.913.
* * * * *
    21. The undesignated center heading following Sec. 1.501 is 
proposed to be revised to read as follows:

Request for Ex Parte Reexamination

    22. Section 1.510 is proposed to be amended by revising its heading 
and the text of paragraphs (a) and (b)(4) to read as follows:


Sec. 1.510  Request for ex parte reexamination.

    (a) Any person may, at any time during the period of enforceability 
of a patent, file a request for an ex parte reexamination by the Office 
of any claim of the patent on the basis of prior art patents or printed 
publications cited under Sec. 1.501. The request must be accompanied by 
the fee for requesting reexamination set in Sec. 1.20(c)(1).
    (b) Any request for ex parte reexamination must include the 
following parts:
* * * * *
    (4) A copy of the entire patent including the front face, drawings, 
and specification/claims (in double column format) for which 
reexamination is requested, and a copy of any disclaimer, certificate 
of correction, or reexamination certificate issued in the patent. All 
copies must have each page plainly written on only one side of a sheet 
of paper.
* * * * *
    23. Section 1.515 is proposed to be revised to read as follows:


Sec. 1.515  Determination of the request for ex parte reexamination.

    (a) Within three months following the filing date of a request for 
an ex parte reexamination, an examiner will consider the request and 
determine whether or not a substantial new question of patentability 
affecting any claim of the patent is raised by the request and the 
prior art cited therein, with or without consideration of other patents 
or printed publications. The examiner's determination will be based on 
the claims in effect at the time of the determination and will become a 
part of the official file of the patent and will be mailed to the 
patent owner at the

[[Page 18175]]

address as provided for in Sec. 1.33(c) and to the person requesting 
reexamination.
    (b) Where no substantial new question of patentability has been 
found, a refund of a portion of the fee for requesting ex parte 
reexamination will be made to the requester in accordance with 
Sec. 1.26(c).
    (c) The requester may seek review by a petition to the Director 
under Sec. 1.181 within one month of the mailing date of the examiner's 
determination refusing ex parte 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.
    24. Section 1.520 is proposed to be revised to read as follows:


Sec. 1.520  Ex parte reexamination at the initiative of the Director.

    The Director, 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 Director or which have been brought to the 
Director's attention even though no request for reexamination has been 
filed in accordance with Sec. 1.510 or Sec. 1.913. The Director may 
initiate ex parte reexamination without a request for reexamination 
pursuant to Sec. 1.510 or Sec. 1.913. Normally requests from outside 
the Office that the Director undertake reexamination on his own 
initiative will not be considered. Any determination to initiate ex 
parte reexamination under this section will become a part of the 
official file of the patent and will be mailed to the patent owner at 
the address as provided for in Sec. 1.33(c).
    25. The undesignated center heading following Sec. 1.520 is 
proposed to be revised to read as follows:

Ex Parte Reexamination

    26. Section 1.525 is proposed to be revised to read as follows:


Sec. 1.525  Order for ex parte reexamination.

    (a) If a substantial new question of patentability is found 
pursuant to Sec. 1.515 or Sec. 1.520, the determination will include an 
order for ex parte reexamination of the patent for resolution of the 
question. If the order for ex parte reexamination resulted from a 
petition pursuant to Sec. 1.515(c), the ex parte reexamination will 
ordinarily be conducted by an examiner other than the examiner 
responsible for the initial determination under Sec. 1.515(a).
    (b) The notice published in the Official Gazette under Sec. 1.11(c) 
will be considered to be constructive notice and ex parte reexamination 
will proceed.
    27. Section 1.530 is proposed to be amended by revising its heading 
and paragraphs (a), (b), (c) and (d), introductory text, to read as 
follows:


Sec. 1.530  Statement by patent owner in ex parte reexamination; 
amendment by patent owner in ex parte reexamination or inter partes 
reexamination.

    (a) Except as provided in Sec. 1.510(e), no statement or other 
response by the patent owner in an ex parte reexamination proceeding 
shall be filed prior to the determinations made in accordance with 
Sec. 1.515 or Sec. 1.520. If a premature statement or other response is 
filed by the patent owner it will not be acknowledged or considered in 
making the determination.
    (b) The order for ex parte reexamination will set a period of not 
less than two months from the date of the order within which the patent 
owner may file a statement on the new question of patentability 
including any proposed amendments the patent owner wishes to make.
    (c) Any statement filed by the patent owner shall clearly point out 
why the subject matter as claimed is not anticipated or rendered 
obvious by the prior art patents or printed publications, either alone 
or in any reasonable combinations. Where the reexamination request was 
filed by a third-party requester, any statement filed by the patent 
owner must be served upon the ex parte reexamination requester in 
accordance with Sec. 1.248.
    (d) Amendments in reexamination proceedings. Amendments in both ex 
parte and inter partes reexamination proceedings are made by filing a 
paper, in compliance with paragraph (d)(5) of this section, directing 
that specified amendments be made.
* * * * *
    28. Section 1.535 is proposed to be revised to read as follows:


Sec. 1.535  Reply by third-party requester in ex parte reexamination.

    A reply to the patent owner's statement under Sec. 1.530 may be 
filed by the ex parte reexamination requester within two months from 
the date of service of the patent owner's statement. Any reply by the 
ex parte requester must be served upon the patent owner in accordance 
with Sec. 1.248. If the patent owner does not file a statement under 
Sec. 1.530, no reply or other submission from the ex parte 
reexamination requester will be considered.
    29. Section 1.540 is proposed to be revised to read as follows:


Sec. 1.540  Consideration of responses in ex parte reexamination.

    The failure to timely file or serve the documents set forth in 
Sec. 1.530 or in Sec. 1.535 may result in their being refused 
consideration. No submissions other than the statement pursuant to 
Sec. 1.530 and the reply by the ex parte reexamination requester 
pursuant to Sec. 1.535 will be considered prior to examination.
    30. Section 1.550 is proposed to be revised to read as follows:


Sec. 1.550  Conduct of ex parte reexamination proceedings.

    (a) All ex parte reexamination proceedings, including any appeals 
to the Board of Patent Appeals and Interferences, will be conducted 
with special dispatch within the Office. After issuance of the ex parte 
reexamination order and expiration of the time for submitting any 
responses thereto, the examination will be conducted in accordance with 
Secs. 1.104 through 1.116, and will result in the issuance of an ex 
parte reexamination certificate under Sec. 1.570.
    (b) The patent owner in an ex parte reexamination proceeding will 
be given at least thirty days to respond to any Office action. Such 
response may include further statements in response to any rejections 
or proposed amendments or new claims to place the patent in a condition 
where all claims, if amended as proposed, would be patentable.
    (c) The time for taking any action by a patent owner in an ex parte 
reexamination proceeding will be extended only for sufficient cause and 
for a reasonable time specified. Any request for such extension must be 
filed on or before the day on which action by the patent owner is due, 
but in no case will the mere filing of a request affect 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 or for commencing 
a civil action.
    (d) If the patent owner fails to file a timely and appropriate 
response to any Office action or any written statement of an interview 
required under Sec. 1.560(b), the ex parte reexamination proceeding 
will be terminated and the Director will proceed to issue a certificate 
under Sec. 1.570 in accordance with the last action of the Office.
    (e) If a response by the patent owner is not timely filed in the 
Office,
    (1) The delay in filing such response may be excused if it is shown 
to the satisfaction of the Director that the delay was unavoidable; a 
petition to accept an

[[Page 18176]]

unavoidably delayed response must be filed in compliance with 
Sec. 1.137(a); or
    (2) The response may nevertheless be accepted if the delay was 
unintentional; a petition to accept an unintentionally delayed response 
must be filed in compliance with Sec. 1.137(b).
    (f) The reexamination requester will be sent copies of Office 
actions issued during the ex parte reexamination proceeding. After 
filing of a request for ex parte reexamination by a third-party 
requester, any document filed by either the patent owner or the third-
party requester must be served on the other party in the reexamination 
proceeding in the manner provided by Sec. 1.248. The document must 
reflect service or the document may be refused consideration by the 
Office.
    (g) The active participation of the ex parte reexamination 
requester ends with the reply pursuant to Sec. 1.535, and no further 
submissions on behalf of the reexamination requester will be 
acknowledged or considered. Further, no submissions on behalf of any 
third parties will be acknowledged or considered unless such 
submissions are:
    (1) In accordance with Secs. 1.510 or 1.535; or
    (2) Entered in the patent file prior to the date of the order for 
ex parte reexamination pursuant to Sec. 1.525.
    (h) Submissions by third parties, filed after the date of the order 
for ex parte reexamination pursuant to Sec. 1.525, must meet the 
requirements of and will be treated in accordance with Sec. 1.501(a).
    31. Section 1.552 is proposed to be revised to read as follows:


Sec. 1.552  Scope of reexamination in ex parte reexamination 
proceedings.

    (a) Claims in an ex parte reexamination proceeding will be examined 
on the basis of patents or printed publications and, with respect to 
subject matter added or deleted in the reexamination proceeding, on the 
basis of the requirements of 35 U.S.C. 112.
    (b) Claims in an ex parte reexamination proceeding will not be 
permitted to enlarge the scope of the claims of the patent.
    (c) Issues other than those indicated in paragraphs (a) and (b) of 
this section will not be resolved in a reexamination proceeding. If 
such issues are raised by the patent owner or third-party requester 
during a reexamination proceeding, the existence of such issues will be 
noted by the examiner in the next Office action, in which case the 
patent owner may desire to consider the advisability of filing a 
reissue application to have such issues considered and resolved.
    32. Section 1.555 is proposed to be amended by revising its heading 
to read as follows:


Sec. 1.555  Information material to patentability in ex parte 
reexamination and inter partes reexamination proceedings.

* * * * *
    33. Section 1.560 is proposed to be revised to read as follows:


Sec. 1.560  Interviews in ex parte reexamination proceedings.

    (a) Interviews in ex parte reexamination proceedings pending before 
the Office between examiners and the owners of such patents or their 
attorneys or agents of record must be conducted in the Office at such 
times, within Office hours, as the respective examiners may designate. 
Interviews will not be permitted at any other time or place without the 
authority of the Director. Interviews for the discussion of the 
patentability of claims in patents involved in ex parte reexamination 
proceedings will not be conducted prior to the first official action 
thereon. Interviews should be arranged for in advance. Requests that 
reexamination requesters participate in interviews with examiners will 
not be granted.
    (b) In every instance of an interview with an examiner in an ex 
parte reexamination proceeding, a complete written statement of the 
reasons presented at the interview as warranting favorable action must 
be filed by the patent owner. An interview does not remove the 
necessity for response to Office actions as specified in Sec. 1.111. 
Patent owner's response to an outstanding Office action after the 
interview does not remove the necessity for filing the written 
statement. The written statement must be filed as a separate part of a 
response to an Office action outstanding at the time of the interview, 
or as a separate paper within one month from the date of the interview, 
whichever is later.
    34. Section 1.565 is proposed to be revised to read as follows:


Sec. 1.565  Concurrent office proceedings which include an ex parte 
reexamination proceeding.

    (a) In an ex parte reexamination proceeding before the Office, the 
patent owner shall call the attention of the Office to any prior or 
concurrent proceedings in which the patent is or was involved such as 
an interference, reissue, ex parte reexamination, inter partes 
reexamination, or litigation and the results of such proceedings. See 
Sec. 1.985 for notification of prior or concurrent proceedings in an 
inter partes reexamination proceeding.
    (b) If a patent in the process of ex parte reexamination is or 
becomes involved in litigation, the Director shall determine whether or 
not to suspend the reexamination. See Sec. 1.987 for inter partes 
reexamination proceedings.
    (c) If ex parte reexamination is ordered while a prior ex parte 
reexamination proceeding is pending and prosecution has not been 
terminated, the ex parte reexamination proceedings will be consolidated 
and result in the issuance of a single certificate under Sec. 1.570. 
For merger of inter partes reexamination proceedings, see 
Sec. 1.989(a). For merger of ex parte reexamination and inter partes 
reexamination proceedings, see Sec. 1.989(b).
    (d) If a reissue application and an ex parte reexamination 
proceeding on which an order pursuant to Sec. 1.525 has been mailed are 
pending concurrently on a patent, a decision will normally be made to 
merge the two proceedings or to suspend one of the two proceedings. 
Where merger of a reissue application and an ex parte reexamination 
proceeding is ordered, the merged examination will be conducted in 
accordance with 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 ex parte reexamination proceeding during the 
pendency of the merged proceeding. The examiner's actions and responses 
by the patent owner in a merged proceeding will apply to both the 
reissue application and the ex parte reexamination proceeding and be 
physically entered into both files. Any ex parte reexamination 
proceeding merged with a reissue application shall be terminated by the 
grant of the reissued patent. For merger of a reissue application and 
an inter partes reexamination, see Sec. 1.991.
    (e) If a patent in the process of ex parte reexamination is or 
becomes involved in an interference, the Director may suspend the 
reexamination or the interference. The Director will not consider a 
request to suspend an interference unless a motion (Sec. 1.635) to 
suspend the interference has been presented to, and denied by, an 
administrative patent judge and the request is filed within ten (10) 
days of a decision by an administrative patent judge denying the motion 
for suspension or such other time as the administrative patent judge 
may set. For concurrent inter partes reexamination and interference of 
a patent, see Sec. 1.993.
    35. The undesignated center heading following Sec. 1.565 is 
proposed to be revised to read as follows:

[[Page 18177]]

Ex Parte Reexamination Certificate

    36. Section 1.570 is proposed to be revised to read as follows:


Sec. 1.570  Issuance of ex parte reexamination certificate after ex 
parte reexamination proceedings.

    (a) Upon the conclusion of ex parte reexamination proceedings, the 
Director will issue an ex parte reexamination certificate in accordance 
with 35 U.S.C. 307 setting forth the results of the ex parte 
reexamination proceeding and the content of the patent following the ex 
parte reexamination proceeding.
    (b) An ex parte reexamination certificate will be issued in each 
patent in which an ex parte reexamination proceeding has been ordered 
under Sec. 1.525 and has not been merged with any inter partes 
reexamination proceeding pursuant to Sec. 1.989(a). Any statutory 
disclaimer filed by the patent owner will be made part of the ex parte 
reexamination certificate.
    (c) The ex parte reexamination certificate will be mailed on the 
day of its date to the patent owner at the address as provided for in 
Sec. 1.33(c). A copy of the ex parte reexamination certificate will 
also be mailed to the requester of the ex parte reexamination 
proceeding.
    (d) If an ex parte reexamination certificate has been issued which 
cancels all of the claims of the patent, no further Office proceedings 
will be conducted with regard to that patent or any reissue 
applications or any reexamination requests relating thereto.
    (e) If the ex parte reexamination proceeding is terminated by the 
grant of a reissued patent as provided in Sec. 1.565(d), the reissued 
patent will constitute the ex parte reexamination certificate required 
by this section and 35 U.S.C. 307.
    (f) A notice of the issuance of each ex parte reexamination 
certificate under this section will be published in the Official 
Gazette on its date of issuance.
    37. Subpart H is proposed to be added to read as follows:
Subpart H--Inter Partes Reexamination of Patents

Prior Art Citations

Sec.
1.902   Processing of prior art citations during an inter partes 
reexamination proceeding.

Requirements for Inter partes Reexamination Proceedings

1.903   Service of papers on parties in inter partes reexamination.
1.904   Notice of inter partes reexamination in Official Gazette.
1.905   Submission of papers by public in inter partes 
reexamination.
1.906   Scope of reexamination in inter partes reexamination 
proceeding.
1.907   Inter partes reexamination prohibited.
1.913   Persons eligible to file request for inter partes 
reexamination.
1.915   Content of request for inter partes reexamination.
1.919   Filing date of request for inter partes reexamination.
1.923   Examiner's determination on the request for inter partes 
reexamination.
1.925   Partial refund if request for inter partes reexamination is 
not ordered.
1.927   Petition to review refusal to order inter partes 
reexamination.

Inter Partes Reexamination of Patents

1.931   Order for inter partes reexamination.

Information Disclosure in Inter Partes Reexamination

1.933   Patent owner duty of disclosure in inter partes 
reexamination proceedings.

Office Actions and Responses (Before the Examiner) in Inter partes 
Reexamination

1.935   Initial Office action usually accompanies order for inter 
partes reexamination.
1.937   Conduct of inter partes reexamination.
1.939   Unauthorized papers in inter partes reexamination.
1.941   Amendments by patent owner in inter partes reexamination.
1.943   Requirements of responses, written comments, and briefs in 
inter partes reexamination.
1.945   Response to Office action by patent owner in inter partes 
reexamination.
1.947   Comments by third-party requester to patent owner's response 
in inter partes reexamination.
1.948   Limitations on submission of prior art by third-party 
requester following the order for inter partes reexamination.
1.949   Examiner's Office action closing prosecution in inter partes 
reexamination.
1.951   Options after Office action closing prosecution in inter 
partes reexamination.
1.953   Examiner's Right of Appeal Notice in inter partes 
reexamination.

Interviews Prohibited in Inter Partes Reexamination

1.955   Interviews prohibited in inter partes reexamination 
proceedings.

Extensions of Time, Termination of Proceedings, and Petitions to Revive 
in Inter Partes Reexamination

1.956   Patent owner extensions of time in inter partes 
reexamination.
1.957   Failure to file a timely, appropriate or complete response 
or comment in inter partes reexamination.
1.958   Petition to revive terminated inter partes reexamination or 
claims terminated for lack of patent owner response.

Appeal to the Board of Patent Appeals and Interferences in  Inter 
Partes Reexamination

1.959   Notice of appeal and cross appeal to Board of Patent Appeals 
and Interferences in inter partes reexamination.
1.961   Jurisdiction over appeal in inter partes reexamination.
1.962   Appellant and respondent in inter partes reexamination 
defined.
1.963   Time for filing briefs in inter partes reexamination.
1.965   Appellant brief in inter partes reexamination.
1.967   Respondent brief in inter partes reexamination.
1.969   Examiner's answer in inter partes reexamination.
1.971   Rebuttal brief in inter partes reexamination.
1.973   Oral hearing in inter partes reexamination.
1.975   Affidavits or declarations after appeal in inter partes 
reexamination.
1.977   Decision by the Board of Patent Appeals and Interferences; 
remand to examiner in inter partes reexamination.
1.979   Action following decision by the Board of Patent Appeals and 
Interferences or dismissal of appeal in inter partes reexamination.
1.981   Reopening after decision by the Board of Patent Appeals and 
Interferences in inter partes reexamination.

Patent Owner Appeal to the United States Court of Appeals for the 
Federal Circuit in Inter Partes Reexamination

1.983   Patent owner appeal to the United States Court of Appeals 
for the Federal Circuit in inter partes reexamination.

Concurrent Proceedings Involving Same Patent in Inter Partes 
Reexamination

1.985   Notification of prior or concurrent proceedings in inter 
partes reexamination.
1.987   Suspension of inter partes reexamination proceeding due to 
litigation.
1.989   Merger of concurrent reexamination proceedings.
1.991   Merger of concurrent reissue application and inter partes 
reexamination proceeding.
1.993   Suspension of concurrent interference and inter partes 
reexamination proceeding.
1.995   Third-party requester's participation rights preserved in 
merged proceeding.

Reexamination Certificate in Inter Partes Reexamination

1.997   Issuance of inter partes reexamination certificate.

Prior Art Citations


Sec. 1.902  Processing of prior art citations during an inter partes 
reexamination proceeding.

    Citations by the patent owner in accordance with Sec. 1.933 and by 
an inter partes reexamination third-party requester under Secs. 1.915 
or 1.948 will be entered in the inter partes

[[Page 18178]]

reexamination file. The entry in the patent file of other citations 
submitted after the date of an order for reexamination pursuant to 
Sec. 1.931 by persons other than the patent owner, or the third-party 
requester under either Sec. 1.915 or Sec. 1.948, will be delayed until 
the inter partes reexamination proceeding has been terminated.

Requirements for Inter Partes Reexamination Proceedings


Sec. 1.903  Service of papers on parties in inter partes reexamination.

    The patent owner and the third-party requester will be sent copies 
of Office actions issued during the inter partes reexamination 
proceeding. After filing of a request for inter partes reexamination by 
a third-party requester, any document filed by either the patent owner 
or the third-party requester must be served on every other party in the 
reexamination proceeding in the manner provided in Sec. 1.248. Any 
document must reflect service or the document may be refused 
consideration by the Office. The failure of the patent owner or the 
third-party requester to serve documents may result in their being 
refused consideration.


Sec. 1.904  Notice of inter partes reexamination in Official Gazette.

    A notice of the filing of an inter partes reexamination request 
will be published in the Official Gazette. The notice published in the 
Official Gazette under Sec. 1.11(c) will be considered to be 
constructive notice of the inter partes reexamination proceeding and 
inter partes reexamination will proceed.


Sec. 1.905  Submission of papers by public in inter partes 
reexamination.

    Unless specifically provided for, no submissions on behalf of any 
third parties other than third-party requesters as defined in 35 U.S.C. 
100(e) will be considered unless such submissions are in accordance 
with Sec. 1.915 or entered in the patent file prior to the date of the 
order for reexamination pursuant to Sec. 1.931. Submissions by third 
parties, other than third-party requesters, filed after the date of the 
order for reexamination pursuant to Sec. 1.931, must meet the 
requirements of Sec. 1.501 and will be treated in accordance with 
Sec. 1.902. Submissions which do not meet the requirements of 
Sec. 1.501 will be returned.


Sec. 1.906  Scope of reexamination in inter partes reexamination 
proceeding.

    (a) Claims in an inter partes reexamination proceeding will be 
examined on the basis of patents or printed publications and, with 
respect to subject matter added or deleted in the reexamination 
proceeding, on the basis of the requirements of 35 U.S.C. 112.
    (b) Claims in an inter partes reexamination proceeding will not be 
permitted to enlarge the scope of the claims of the patent.
    (c) Issues other than those indicated in paragraphs (a) and (b) of 
this section will not be resolved in an inter partes reexamination 
proceeding. If such issues are raised by the patent owner or the third-
party requester during a reexamination proceeding, the existence of 
such issues will be noted by the examiner in the next Office action, in 
which case the patent owner may desire to consider the advisability of 
filing a reissue application to have such issues considered and 
resolved.


Sec. 1.907  Inter partes reexamination prohibited.

    (a) Once an order to reexamine has been issued under Sec. 1.931, 
neither the third-party requester, nor its privies, may file a 
subsequent request for inter partes reexamination of the patent until 
an inter partes reexamination certificate is issued under Sec. 1.997, 
unless authorized by the Director.
    (b) Once a final decision has been entered against a party in a 
civil action arising in whole or in part under 28 U.S.C. 1338 that the 
party has not sustained its burden of proving invalidity of any patent 
claim in suit, then neither that party nor its privies may thereafter 
request inter partes reexamination of any such patent claim on the 
basis of issues which that party, or its privies, raised or could have 
raised in such civil action, and an inter partes reexamination 
requested by that party, or its privies, on the basis of such issues 
may not thereafter be maintained by the Office.
    (c) If a final decision in an inter partes reexamination proceeding 
instituted by a third-party requester is favorable to patentability of 
any original, proposed amended, or new claims of the patent, then 
neither that party nor its privies may thereafter request inter partes 
reexamination of any such patent claims on the basis of issues which 
that party, or its privies, raised or could have raised in such inter 
partes reexamination proceeding.


Sec. 1.913  Persons eligible to file request for inter partes 
reexamination.

    Except as provided for in Sec. 1.907, any person other than the 
patent owner or its privies may, at any time during the period of 
enforceability of a patent which issued from an original application 
filed in the United States on or after November 29, 1999, file a 
request for inter partes reexamination by the Office of any claim of 
the patent on the basis of prior art patents or printed publications 
cited under Sec. 1.501.


Sec. 1.915  Content of request for inter partes reexamination.

    (a) The request must be accompanied by the fee for requesting inter 
partes reexamination set in Sec. 1.20(c)(2).
    (b) A request for inter partes reexamination must include the 
following parts:
    (1) An identification of the patent by patent number and every 
claim for which reexamination is requested.
    (2) A citation of the patents and printed publications which are 
presented to provide a substantial new question of patentability.
    (3) A statement pointing out each substantial new question of 
patentability based on the cited patents and printed publications, and 
a detailed explanation of the pertinency and manner of applying the 
patents and printed publications to every claim for which reexamination 
is requested.
    (4) A copy of every patent or printed publication relied upon or 
referred to in paragraphs (b)(1)-(3) of this section, accompanied by an 
English language translation of all the necessary and pertinent parts 
of any non-English language document.
    (5) A copy of the entire patent including the front face, drawings, 
and specification/claims (in double column format) for which 
reexamination is requested, and a copy of any disclaimer, certificate 
of correction, or reexamination certificate issued in the patent. All 
copies must have each page plainly written on only one side of a sheet 
of paper.
    (6) A certification by the third-party requester that a copy of the 
request has been served in its entirety on the patent owner at the 
address 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 of the request must be supplied to the Office.
    (7) A certification by the third-party requester that the estoppel 
provisions of Sec. 1.907 do not prohibit the inter partes 
reexamination.
    (8) A statement identifying the real party in interest to the 
extent necessary for a subsequent person filing an inter partes 
reexamination request to determine whether that person is a privy.
    (c) If an inter partes request is filed by an attorney or agent 
identifying another party on whose behalf the request is being filed, 
the attorney or agent must

[[Page 18179]]

have a power of attorney from that party or be acting in a 
representative capacity pursuant to Sec. 1.34(a).
    (d) If the inter partes request does not meet all the requirements 
of Sec. 1.915(b), the person identified as requesting inter partes 
reexamination may be so notified and given an opportunity to complete 
the formal requirements of the request within a specified time. Failure 
to comply with the notice may result in the inter partes reexamination 
proceeding being vacated.


Sec. 1.919  Filing date of request for inter partes reexamination.

    (a) The filing date of a request for inter partes reexamination is 
the date on which the request satisfies the fee requirement of 
Sec. 1.915(a).
    (b) If the request is not granted a filing date, the request will 
be placed in the patent file as a citation of prior art if it complies 
with the requirements of Sec. 1.501.


Sec. 1.923  Examiner's determination on the request for inter partes 
reexamination.

    Within three months following the filing date of a request for 
inter partes reexamination under Sec. 1.919, the examiner will consider 
the request and determine whether or not a substantial new question of 
patentability affecting any claim of the patent is raised by the 
request and the prior art citation. The examiner's determination will 
be based on the claims in effect at the time of the determination 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 third-party requester. If the examiner 
determines that no substantial new question of patentability is 
present, the examiner shall refuse the request and shall not order 
inter partes reexamination.


Sec. 1.925  Partial refund if request for inter partes reexamination is 
not ordered.

    Where inter partes reexamination is not ordered, a refund of a 
portion of the fee for requesting inter partes reexamination will be 
made to the requester in accordance with Sec. 1.26(c).


Sec. 1.927  Petition to review refusal to order inter partes 
reexamination.

    The third-party requester may seek review by a petition to the 
Director under Sec. 1.181 within one month of the mailing date of the 
examiner's determination refusing to order inter partes reexamination. 
Any such petition must comply with 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.

Inter Partes Reexamination of Patents


Sec. 1.931  Order for inter partes reexamination.

    (a) If a substantial new question of patentability is found, the 
determination will include an order for inter partes reexamination of 
the patent for resolution of the question.
    (b) If the order for inter partes reexamination resulted from a 
petition pursuant to Sec. 1.927, the inter partes reexamination will 
ordinarily be conducted by an examiner other than the examiner 
responsible for the initial determination under Sec. 1.923.

Information Disclosure in inter partes Reexamination


Sec. 1.933  Patent owner duty of disclosure in inter partes 
reexamination proceedings.

    (a) Each individual associated with the patent owner in an inter 
partes reexamination proceeding has a duty of candor and good faith in 
dealing with the Office, which includes a duty to disclose to the 
Office all information known to that individual to be material to 
patentability in a reexamination proceeding as set forth in 
Sec. 1.555(a) and (b). The duty to disclose all information known to be 
material to patentability in an inter partes reexamination proceeding 
is deemed to be satisfied by filing a paper in compliance with the 
requirements set forth in Sec. 1.555(a) and (b).
    (b) The responsibility for compliance with this section rests upon 
the individuals designated in paragraph (a) of this section, and no 
evaluation will be made by the Office in the reexamination proceeding 
as to compliance with this section. If questions of compliance with 
this section are 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) in inter partes 
Reexamination


Sec. 1.935  Initial Office action usually accompanies order for inter 
partes reexamination.

    The order for inter partes reexamination will usually be 
accompanied by the initial Office action on the merits of the 
reexamination.


Sec. 1.937  Conduct of inter partes reexamination.

    (a) All inter partes reexamination proceedings, including any 
appeals to the Board of Patent Appeals and Interferences, will be 
conducted with special dispatch within the Office, unless the Director 
makes a determination that there is good cause for suspending the 
reexamination proceeding.
    (b) The inter partes reexamination proceeding will be conducted in 
accordance with Secs. 1.104 through 1.116, the sections governing the 
application examination process, and will result in the issuance of an 
inter partes reexamination certificate under Sec. 1.997, except as 
otherwise provided.
    (c) All communications between the Office and the parties to the 
inter partes reexamination which are directed to the merits of the 
proceeding must be in writing and filed with the Office for entry into 
the record of the proceeding.


Sec. 1.939  Unauthorized papers in inter partes reexamination.

    (a) If an unauthorized paper is filed by any party at any time 
during the inter partes reexamination proceeding it will not be 
considered and may be returned.
    (b) Unless otherwise authorized, no paper shall be filed prior to 
the initial Office action on the merits of the inter partes 
reexamination.


Sec. 1.941  Amendments by patent owner in inter partes reexamination.

    Amendments by patent owner in inter partes reexamination 
proceedings are made by filing a paper in compliance with 
Secs. 1.530(d) and 1.943.


Sec. 1.943  Requirements of responses, written comments, and briefs in 
inter partes reexamination.

    (a) The form of responses, written comments, briefs, appendices, 
and other papers must be in accordance with the requirements of 
Sec. 1.530(d)(5).
    (b) Responses by the patent owner and written comments by the 
third-party requester shall not exceed 50 pages in length, excluding 
amendments, appendices of claims, and reference materials such as prior 
art references.
    (c) Appellant briefs by the patent owner and the third-party 
requester shall not exceed 30 pages or 14,000 words in length, 
excluding appendices of claims and reference materials such as prior 
art references. All other briefs by any party shall not exceed 15 pages 
in length or 7,000 words. If the page limit for any brief is exceeded, 
a certificate is required stating the number of words contained in the 
brief.


Sec. 1.945  Response to Office action by patent owner in inter partes 
reexamination.

    The patent owner will be given at least 30 days to file a response 
to any Office action on the merits of the inter partes reexamination.

[[Page 18180]]

Sec. 1.947  Comments by third-party requester to patent owner's 
response in inter partes reexamination.

    Each time the patent owner files a response to an Office action on 
the merits, a third-party requester may once file written comments 
within a period of 30 days from the date of service of the patent 
owner's response. These comments shall be limited to issues raised by 
the Office action or the patent owner's response. The time for 
submitting comments by the third-party requester may not be extended.


Sec. 1.948  Limitations on submission of prior art by third-party 
requester following the order for inter partes reexamination.

    After the inter partes reexamination order, the third-party 
requester may only cite additional prior art as defined under 
Sec. 1.501 if it is filed as part of a comments submission under 
Secs. 1.947, 1.951(a) and 1.951(d), and is limited to prior art:
    (a) Which is necessary to rebut a finding of fact by the examiner;
    (b) Which is necessary to rebut a response of the patent owner; or,
    (c) Which became known or available to the third-party requester 
after the filing of the request for inter partes reexamination 
proceeding where a discussion of the pertinency of each reference to 
the patentability of at least one claim is included. Prior art 
submitted under this paragraph (c) must be accompanied by a statement 
as to when the prior art first became known or available to the third-
party requester.


Sec. 1.949  Examiner's Office action closing prosecution in inter 
partes reexamination.

    Upon consideration of the issues a second or subsequent time, or 
upon allowance of all claims, the examiner shall issue an Office action 
treating all claims present in the inter partes reexamination, which 
may be an action closing prosecution. The Office action shall set forth 
all rejections and determinations not to make a proposed rejection, and 
the grounds therefor. An Office action will not usually close 
prosecution if it 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  Options after Office action closing prosecution in inter 
partes reexamination.

    (a) After an action closing prosecution in an inter partes 
reexamination, a third-party requester may once file 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 Office 
action closing prosecution.
    (b) When a third-party requester does file comments, the patent 
owner may once file comments responsive to the third-party requester's 
comments within 30 days from the date of service of the third-party 
requester's comments on the patent owner.
    (c) After an Office action closing prosecution in an inter partes 
reexamination, the patent owner may once file comments limited to the 
issues raised in the Office action closing prosecution. The comments 
can include a proposed amendment to the claims, which amendment will be 
subject to the criteria of Sec. 1.116 as to whether or not it shall be 
admitted. The comments must be filed within the time set for response 
in the Office action closing prosecution.
    (d) When the patent owner does file comments, a third-party 
requester may once file comments responsive to the patent owner's 
comments within 30 days from the date of service of patent owner's 
comments on the third-party requester.


Sec. 1.953  Examiner's Right of Appeal Notice in inter partes 
reexamination.

    (a) Upon considering the comments of the patent owner and the 
third-party requester subsequent to the Office action closing 
prosecution in an inter partes reexamination, or upon expiration of the 
time for submitting such comments, the examiner shall issue a Right of 
Appeal Notice, unless the examiner reopens prosecution and issues 
another Office action on the merits.
    (b) Expedited Right of Appeal Notice: At any time after the patent 
owner's response to the initial Office action on the merits in an inter 
partes reexamination, the patent owner and all third-party requesters 
may stipulate that the issues are appropriate for a final action, which 
would include a final rejection and/or a final determination favorable 
to patentability, and may request the issuance of a Right of Appeal 
Notice. The request must have the concurrence of the patent owner and 
all third-party requesters present in the proceeding and must identify 
all the appealable issues, and the positions of the patent owner and 
all third-party requesters on those issues. If the examiner determines 
that no other issues are present or should be raised, a Right of Appeal 
Notice limited to the identified issues shall be issued. Any appeal by 
the parties shall be conducted in accordance with Secs. 1.959-1.983.
    (c) The Right of Appeal Notice shall be a final action, which 
includes a final rejection setting forth each ground of rejection and/
or final decision favorable to patentability including each 
determination not to make a proposed rejection, an identification of 
the status of each claim, and the reasons for decisions favorable to 
patentability and/or the grounds of rejection for each claim. No 
amendment can be made in response to the Right of Appeal Notice. The 
Right of Appeal Notice shall set a one-month time period for either 
party to appeal. If no notice of appeal is filed, the inter partes 
reexamination proceeding will be terminated, and the Director will 
proceed to issue a certificate under Sec. 1.997 in accordance with the 
Right of Appeal Notice.

Interviews Prohibited in Inter Partes Reexamination


Sec. 1.955  Interviews prohibited in inter partes reexamination 
proceedings.

    There will not be any interviews in an inter partes reexamination 
proceeding which discuss the merits of the proceeding.

EXTENSIONS OF TIME, TERMINATION OF PROCEEDINGS, AND PETITIONS TO 
REVIVE IN inter partes REEXAMINATION


Sec. 1.956  Patent owner extensions of time in inter partes 
reexamination.

    The time for taking any action by a patent owner in an inter partes 
reexamination proceeding will be extended only for sufficient cause and 
for a reasonable time specified. Any request for such extension must be 
filed on or before the day on which action by the patent owner is due, 
but in no case will the mere filing of a request effect any extension. 
See 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.


Sec. 1.957  Failure to file a timely, appropriate or complete response 
or comment in inter partes reexamination.

    (a) If the third-party requester files an untimely or inappropriate 
comment, notice of appeal or brief in an inter partes reexamination, 
the paper will be refused consideration.
    (b) If no claims are found patentable, and the patent owner fails 
to file a timely and appropriate response in an inter partes 
reexamination proceeding, the reexamination proceeding will be 
terminated and the Director will proceed to issue a certificate under 
Sec. 1.997 in accordance with the last action of the Office.
    (c) If claims are found patentable, and the patent owner fails to 
file a timely and appropriate response to any Office action in an inter 
partes reexamination proceeding, further prosecution will be limited to 
the claims found patentable at

[[Page 18181]]

the time of the failure to respond, and to any claims added thereafter 
which do not expand the scope of the claims which were found patentable 
at that time.
    (d) When action by the patent owner is a bona fide attempt to 
respond and to advance the prosecution, and is substantially a complete 
response to the Office action, but consideration of some matter or 
compliance with some requirement has been inadvertently omitted, an 
opportunity to explain and supply the omission may be given.


Sec. 1.958  Petition to revive terminated inter partes reexamination or 
claims terminated for lack of patent owner response.

    (a) If a response by the patent owner is not timely filed in the 
Office, the delay in filing such response may be excused if it is shown 
to the satisfaction of the Director that the delay was unavoidable. A 
petition to accept an unavoidably delayed response must be filed in 
compliance with Sec. 1.137(a).
    (b) Any response by the patent owner not timely filed in the Office 
may nevertheless be accepted if the delay was unintentional. A petition 
to accept an unintentionally delayed response must be filed in 
compliance with Sec. 1.137(b).

Appeal to the Board of Patent Appeals and Interferences in Inter 
Partes Reexamination


Sec. 1.959  Notice of appeal and cross appeal to Board of Patent 
Appeals and Interferences in inter partes reexamination.

    (a)(1) Upon the issuance of a Right of Appeal Notice under 
Sec. 1.953, the patent owner involved in an inter partes reexamination 
proceeding may appeal to the Board of Patent Appeals and Interferences 
with respect to the final rejection of any claim of the patent by 
filing a notice of appeal within the time provided in the Right of 
Appeal Notice and paying the fee set forth in Sec. 1.17(b).
    (2) Upon the issuance of a Right of Appeal Notice under Sec. 1.953, 
a third-party requester involved in an inter partes reexamination 
proceeding may appeal to the Board of Patent Appeals and Interferences 
with respect to any final decision favorable to the patentability, 
including any final determination not to make a proposed rejection, of 
any original or proposed amended or new claim of the patent by filing a 
notice of appeal within the time provided in the Right of Appeal Notice 
and paying the fee set forth in Sec. 1.17(b).
    (b)(1) Within fourteen days of service of a third-party requester's 
notice of appeal under paragraph (a)(2) of this section, and upon 
payment of the fee set forth in Sec. 1.17(b), a patent owner who has 
not filed a notice of appeal may file a notice of cross appeal with 
respect to the final rejection of any claim of the patent.
    (2) Within fourteen days of service of a patent owner's notice of 
appeal under paragraph (a)(1) of this section, and upon payment of the 
fee set forth in Sec. 1.17(b), a third-party requester who has not 
filed a notice of appeal may file a notice of cross appeal with respect 
to any final decision favorable to the patentability, including any 
final determination not to make a proposed rejection, of any original 
or proposed amended or new claim of the patent.
    (c) The notice of appeal or cross appeal in an inter partes 
reexamination proceeding must identify the claim(s) with respect to 
which an appeal is being taken, and must be signed by the patent owner 
or third-party requester, or their duly authorized attorney or agent.
    (d) An appeal or cross appeal when taken must be taken from all the 
rejections of the claims under rejection in a Right of Appeal Notice 
which the patent owner proposes to contest, or from all the 
determinations favorable to patentability, including any final 
determination not to make a proposed rejection, in a Right of Appeal 
Notice which a third-party requester proposes to contest. Questions 
relating to matters not affecting the merits of the invention may be 
required to be settled before an appeal is decided.
    (e) The times for filing a notice of appeal or cross-appeal may not 
be extended.


Sec. 1.961  Jurisdiction over appeal in inter partes reexamination.

    Jurisdiction over the inter partes reexamination proceeding passes 
to the Board of Patent Appeals and Interferences upon transmittal of 
the file, including all briefs and examiner's answers, to the Board of 
Patent Appeals and Interferences. Prior to the entry of a decision on 
the appeal, the Director may sua sponte order the inter partes 
reexamination proceeding remanded to the examiner, for action 
consistent with the Director's order.


Sec. 1.962  Appellant and respondent in inter partes reexamination 
defined.

    For the purposes of inter partes reexamination, appellant is any 
party, whether the patent owner or a third-party requester, filing a 
notice of appeal or cross appeal. If more than one party appeals or 
cross appeals, each appealing or cross appealing party is an appellant 
with respect to the claims to which his or her appeal or cross appeal 
is directed. A respondent is any third-party requester responding under 
Sec. 1.967 to the appellant brief of the patent owner, or the patent 
owner responding under Sec. 1.967 to the appellant brief of any third-
party requester. No third-party requester may be a respondent to the 
appellant brief of any other third-party requester.


Sec. 1.963  Time for filing briefs in inter partes reexamination.

    (a) An appellant brief in an inter partes reexamination must be 
filed no later than two months from the latest of the filing date of 
the last-filed notice of appeal or cross appeal or if any party to the 
inter partes reexamination is entitled to file an appeal or cross 
appeal but fails to timely do so, the expiration of time for filing (by 
the last party entitled to do so) such notice of appeal or cross 
appeal. The time for filing an appellant brief may not be extended.
    (b) Once an appellant brief has been properly filed, any respondent 
brief must be filed within one month from the date of service of the 
appellant brief. The time for filing a respondent brief may not be 
extended.
    (c) The examiner will consider both the appellant and respondent 
briefs and may prepare an examiner's answer under Sec. 1.969.
    (d) Any appellant may file a rebuttal brief under Sec. 1.971 within 
one month of the date of the examiner's answer. The time for filing a 
rebuttal brief may not be extended.
    (e) No further submission will be considered and any such 
submission will be treated in accordance with Sec. 1.939.


Sec. 1.965  Appellant brief in inter partes reexamination.

    (a) Appellant(s) may once, within time limits for filing set forth 
in Sec. 1.963, file a brief in triplicate and serve the brief on all 
other parties to the inter partes reexamination proceeding in 
accordance with Sec. 1.903. The brief must be signed by the appellant, 
or the appellant's duly authorized attorney or agent, and must be 
accompanied by the requisite fee set forth in Sec. 1.17(c). The brief 
must set forth the authorities and arguments on which appellant will 
rely to maintain the appeal. Any arguments or authorities not included 
in the brief will be refused consideration by the Board of Patent 
Appeals and Interferences, unless good cause is shown.
    (b) On failure of a party to file an appellant brief, accompanied 
by the requisite fee, within the time allowed, that party's appeal 
shall stand dismissed.
    (c) The appellant brief shall contain the following items under 
appropriate

[[Page 18182]]

headings and in the order indicated below, unless the brief is filed by 
a party who is not represented by a registered practitioner. The brief 
may include an appendix containing only those portions of the record on 
which reliance has been made.
    (1) Real Party in Interest. A statement identifying the real party 
in interest.
    (2) Related Appeals and Interferences. A statement identifying by 
number and filing date all other appeals or interferences known to the 
appellant, the appellant's legal representative, or assignee which will 
directly affect or be directly affected by or have a bearing on the 
decision of the Board of Patent Appeals and Interferences in the 
pending appeal.
    (3) Status of Claims. A statement of the status of all the claims, 
pending or canceled. If the appellant is the patent owner, the 
appellant must also identify the rejected claims whose rejection is 
being appealed. If the appellant is a third-party requester, the 
appellant must identify the claims that the examiner has made a 
determination favorable to patentability, which determination is being 
appealed.
    (4) Status of Amendments. A statement of the status of any 
amendment filed subsequent to the close of prosecution.
    (5) Summary of Invention. A concise explanation of the invention or 
subject matter defined in the claims involved in the appeal, which 
shall refer to the specification by column and line number, and to the 
drawing(s), if any, by reference characters.
    (6) Issues. A concise statement of the issues presented for review. 
No new ground of rejection can be proposed by a third-party requester 
appellant.
    (7) Grouping of Claims. If the appellant is the patent owner, for 
each ground of rejection in the right of appeal notice which appellant 
contests and which applies to a group of two or more claims, the Board 
of Patent Appeals and Interferences shall select a single claim from 
the group and shall decide the appeal as to the ground of rejection on 
the basis of that claim alone unless a statement is included that the 
claims of the group do not stand or fall together and, in the argument 
under paragraph (c)(8) of this section, appellant explains why the 
claims of this group are believed to be separately patentable. Merely 
pointing out differences in what the claims cover is not an argument as 
to why the claims are separately patentable.
    (8) Argument. The contentions of appellant with respect to each of 
the issues presented for review in paragraph (c)(6) of this section, 
and the bases therefor, with citations of the authorities, statutes, 
and parts of the record relied on. Each issue should be treated under a 
separate, numbered heading.
    (i) For each rejection under 35 U.S.C. 112, first paragraph, or for 
each determination favorable to patentability including a determination 
not to make a proposed rejection under 35 U.S.C. 112, first paragraph, 
which appellant contests, the argument shall specify the errors in the 
rejection or the determination and how the first paragraph of 35 U.S.C. 
112 is complied with, if the appellant is the patent owner, or is not 
complied with, if the appellant is a third-party requester, including, 
as appropriate, how the specification and drawing(s), if any,
    (A) Describe, if the appellant is the patent owner, or fail to 
describe, if the appellant is a third-party requester, the subject 
matter defined by each of the appealed claims, and
    (B) Enable, if the appellant is the patent owner, or fail to 
enable, if the appellant is a third-party requester, any person skilled 
in the art to make and use the subject matter defined by each of the 
appealed claims, and
    (ii) For each rejection under 35 U.S.C. 112, second paragraph, or 
for each determination favorable to patentability including a 
determination not to make a proposed rejection under 35 U.S.C. 112, 
second paragraph, which appellant contests, the argument shall specify 
the errors in the rejection, if the appellant is the patent owner, or 
the determination, if the appellant is a third-party requester, and how 
the claims do, if the appellant is the patent owner, or do not, if the 
appellant is a third-party requester, particularly point out and 
distinctly claim the subject matter which the inventors regard as the 
invention.
    (iii) For each rejection under 35 U.S.C. 102 or for each 
determination favorable to patentability including a determination not 
to make a proposed rejection under 35 U.S.C. 102 which appellant 
contests, the argument shall specify the errors in the rejection, if 
the appellant is the patent owner, or determination, if the appellant 
is a third-party requester, and why the appealed claims are, if the 
appellant is the patent owner, or are not, if the appellant is a third-
party requester, patentable under 35 U.S.C. 102, including any specific 
limitations in the appealed claims which are or are not described in 
the prior art.
    (iv) For each rejection under 35 U.S.C. 103 or for each 
determination favorable to patentability including a determination not 
to make a proposed rejection under 35 U.S.C. 103 which appellant 
contests, the argument shall specify the errors in the rejection, if 
the appellant is the patent owner, or determination, if the appellant 
is a third-party requester, 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, if the appellant is a third-party 
requester, or unobvious, if the appellant is the patent owner, over the 
prior art. If the rejection or determination is based upon a 
combination of references, the argument shall explain why the 
references, taken as a whole, do or do not suggest the claimed subject 
matter, 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 other than those referred to in paragraphs 
(c)(8)(i) to (iv) of this section or for each determination favorable 
to patentability including any determination not to make a proposed 
rejection other than those referred to in paragraphs (c)(8)(i) to (iv) 
of this section which appellant contests, the argument shall specify 
the errors in the rejection, if the appellant is the patent owner, or 
determination, if the appellant is a third-party requester, and the 
specific limitations in the appealed claims, if appropriate, or other 
reasons, which cause the rejection or determination to be in error.
    (9) Appendix. An appendix containing a copy of the claims appealed 
by the appellant.
    (10) Certificate of Service. A certification that a copy of the 
brief has been served in its entirety on all other parties to the 
reexamination proceeding. The names and addresses of the parties served 
must be indicated.
    (d) If a brief is filed which does not comply with all the 
requirements of paragraph (c) of this section, appellant will be 
notified of the reasons for non-compliance and provided with a non-
extendable period of one month within which to file an amended brief. 
If the appellant does not file an amended brief during the one-month 
period, or files an amended brief which does not overcome all the 
reasons for non-compliance stated in the notification, that appellant's 
appeal will stand dismissed.

[[Page 18183]]

Sec. 1.967  Respondent brief in inter partes reexamination.

    (a) Respondent(s) in an inter partes reexamination appeal may once, 
within time limit for filing set forth in Sec. 1.963, file a respondent 
brief in triplicate and serve the brief on all parties in accordance 
with Sec. 1.903. The brief must be signed by the party, or the party's 
duly authorized attorney or agent, and must be accompanied by the 
requisite fee set forth in Sec. 1.17(c). The brief must set forth the 
authorities and arguments on which respondent will rely. Any arguments 
or authorities not included in the brief will be refused consideration 
by the Board of Patent Appeals and Interferences, unless good cause is 
shown. The respondent brief shall be limited to issues raised in the 
appellant brief to which the respondent brief is directed. A third-
party respondent brief may not address any brief of any other third-
party.
    (b) The respondent brief shall contain the following items under 
appropriate headings and in the order here indicated, and may include 
an appendix containing only those portions of the record on which 
reliance has been made.
    (1) Real Party in Interest. A statement identifying the real party 
in interest.
    (2) Related Appeals and Interferences. A statement identifying by 
number and filing date all other appeals or interferences known to the 
respondent, the respondent's legal representative, or assignee (if any) 
which will directly affect or be directly affected by or have a bearing 
on the decision of the Board of Patent Appeals and Interferences in the 
pending appeal.
    (3) Status of claims. A statement accepting or disputing 
appellant's statement of the status of claims. If appellant's statement 
of the status of claims is disputed, the errors in appellant's 
statement must be specified with particularity.
    (4) Status of amendments. A statement accepting or disputing 
appellant's statement of the status of amendments. If appellant's 
statement of the status of amendments is disputed, the errors in 
appellant's statement must be specified with particularity.
    (5) Summary of invention. A statement accepting or disputing 
appellant's summary of the invention or subject matter defined in the 
claims involved in the appeal. If appellant's summary of the invention 
or subject matter defined in the claims involved in the appeal is 
disputed, the errors in appellant's summary must be specified with 
particularity.
    (6) Issues. A statement accepting or disputing appellant's 
statement of the issues presented for review. 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. No new ground of 
rejection can be proposed by a third-party requester respondent.
    (7) Argument. A statement accepting or disputing the contentions of 
the appellant with each of the issues. If a contention of the appellant 
is disputed, the errors in appellant's argument must be specified 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 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) shall apply to any 
argument raised under 35 U.S.C. 102 or 103.
    (8) Certificate of Service. A certification that a copy of the 
respondent brief has been served in its entirety on all other parties 
to the reexamination proceeding. The names and addresses of the parties 
served must be indicated.
    (c) If a respondent brief is filed which does not comply with all 
the requirements of paragraph (b) of this section, respondent will be 
notified of the reasons for non-compliance and provided with a non-
extendable period of one month within which to file an amended brief. 
If the respondent does not file an amended brief during the one-month 
period, or files an amended brief which does not overcome all the 
reasons for non-compliance stated in the notification, the respondent 
brief will not be considered.


Sec. 1.969  Examiner's answer in inter partes reexamination.

    (a) The primary examiner in an inter partes reexamination appeal 
may, within such time as directed by the Director, furnish a written 
statement in answer to the patent owner's and/or third-party 
requester's appellant brief or respondent brief including, as may be 
necessary, such explanation of the invention claimed and of the 
references, the grounds of rejection, and the reasons for patentability 
including grounds for not adopting a proposed rejection. A copy of the 
answer shall be supplied to all parties to the reexamination 
proceeding. If the primary examiner finds that the appeal is not 
regular in form or does not relate to an appealable action, he or she 
shall so state.
    (b) An examiner's answer may not include a new ground of rejection.
    (c) Where a third-party requester is a party to the appeal, an 
examiner's answer may not include a new determination not to make a 
proposed rejection of a claim.


Sec. 1.971  Rebuttal brief in inter partes reexamination.

    Within one month of the examiner's answer in an inter partes 
reexamination appeal, any appellant may once file a rebuttal brief in 
triplicate. The rebuttal brief of the patent owner may be directed to 
the examiner's answer and/or any respondent brief. The rebuttal brief 
of any third-party requester may be directed to the examiner's answer 
and/or the respondent brief of the patent owner. The rebuttal brief of 
a third-party requester may not be directed to the respondent brief of 
any other third-party requester. No new ground of rejection can be 
proposed by a third-party requester appellant. The time for filing a 
rebuttal brief may not be extended. The rebuttal brief must include a 
certification that a copy of the rebuttal brief has been served in its 
entirety on all other parties to the reexamination proceeding. The 
names and addresses of the parties served must be indicated.


Sec. 1.973  Oral hearing in inter partes reexamination.

    (a) An oral hearing in an inter partes reexamination appeal should 
be requested only in those circumstances in which an appellant or a 
respondent considers such a hearing necessary or desirable for a proper 
presentation of the appeal. An appeal decided without an oral hearing 
will receive the same consideration by the Board of Patent Appeals and 
Interferences as an appeal decided after oral hearing.
    (b) If an appellant or a respondent desires an oral hearing, he or 
she must file a written request for such hearing accompanied by the fee 
set forth in Sec. 1.17(d) within two months after the date of the 
examiner's answer. The time for requesting an oral hearing may not be 
extended.
    (c) An oral argument may be presented at oral hearing by, or on 
behalf of, the primary examiner if considered desirable by either the 
primary examiner or the Board of Patent Appeals and Interferences.
    (d) If an appellant or a respondent has requested an oral hearing 
and has submitted the fee set forth in Sec. 1.17(d), a hearing date 
will be set, and notice given to all parties to the reexamination 
proceeding, and to the primary examiner. The notice shall set a period 
within which all requests for oral

[[Page 18184]]

hearing shall be submitted by any other party to the appeal desiring to 
participate in the oral hearing, which period will not be extended. A 
hearing will be held as stated in the notice, and oral argument will be 
limited to thirty minutes for each appellant and respondent who has 
requested an oral hearing, and twenty minutes for the primary examiner 
unless otherwise ordered before the hearing begins. No appellant or 
respondent will be permitted to participate in an oral hearing unless 
he or she has requested an oral hearing and submitted the fee set forth 
in Sec. 1.17(d).
    (e) If no request and fee for oral hearing have been timely filed 
by an appellant or a respondent, the appeal will be assigned for 
consideration and decision on the written record.


Sec. 1.975  Affidavits or declarations after appeal in inter partes 
reexamination.

    Affidavits, declarations, or exhibits submitted after the inter 
partes reexamination has been appealed will not be admitted without a 
showing of good and sufficient reasons why they were not earlier 
presented.


Sec. 1.977  Decision by the Board of Patent Appeals and Interferences; 
remand to examiner in inter partes reexamination.

    (a) The Board of Patent Appeals and Interferences, in its decision, 
may affirm or reverse each decision of the examiner on all issues 
raised on each appealed claim, or remand the reexamination proceeding 
to the examiner for further consideration. The reversal of the 
examiner's determination not to make a rejection proposed by the third-
party requester constitutes a decision adverse to the patentability of 
the claims which are subject to that proposed rejection which will be 
set forth in the decision of the Board of Patent Appeals and 
Interferences as a new ground of rejection under paragraph (b) of this 
section. The affirmance of the rejection of a claim on any of the 
grounds specified constitutes a general affirmance of the decision of 
the examiner on that claim, except as to any ground specifically 
reversed.
    (b) Should the Board of Patent Appeals and Interferences have 
knowledge of any grounds not raised in the appeal for rejecting any 
pending claim, it may include in the decision a statement to that 
effect with its reasons for so holding, which statement shall 
constitute a new ground of rejection of the claim. A decision which 
includes a new ground of rejection shall not be considered final for 
purposes of judicial review. When the Board of Patent Appeals and 
Interferences makes a new ground of rejection, the patent owner, within 
one month from the date of the decision, must exercise one of the 
following two options with respect to the new ground of rejection to 
avoid termination of the appeal proceeding as to the rejected claim:
    (1) The patent owner may submit an appropriate amendment of the 
claim so rejected or a showing of facts relating to the claim, or both. 
The reexamination proceeding will be remanded to the examiner for 
consideration. The statement of the Board of Patent Appeals and 
Interferences shall be binding upon the examiner unless an amendment or 
showing of facts not previously of record be made which, in the opinion 
of the examiner, overcomes the new ground of rejection.
    (2) The patent owner may file a request for rehearing of the 
decision of the Board of Patent Appeals and Interferences under 
Sec. 1.979(a).
    (c) The Board of Patent Appeals and Interferences, in its decision, 
may include an explicit statement that a claim may be allowed in 
amended form. The decision shall not be considered a final decision for 
purposes of judicial review if the patent owner, within one month of 
the date of the decision, submits an appropriate amendment of the claim 
in conformity with such statement, in which event the reexamination 
proceeding will be remanded to the examiner. The statement shall be 
binding on the examiner in the absence of new references or new grounds 
of rejection.
    (d) Where the patent owner has responded under paragraph (b)(1) or 
(c) of this section, any third-party requester, within one month of the 
date of service of the patent owner response, may once file comments on 
the response. Such written comments must be limited to the issues 
raised by the decision of the Board of Patent Appeals and Interferences 
and the patent owner's response. Any third-party requester that had not 
previously filed an appeal or cross appeal and is seeking under this 
subsection to file comments or a reply to the comments is subject to 
the appeal and brief fees under Secs. 1.17(b) and (c), respectively, 
which must accompany the comments or reply.
    (e) Following any response by the patent owner under paragraph 
(b)(1) or (c) of this section and any written comments from a third-
party requester under paragraph (d) of this section, the reexamination 
proceeding will be remanded to the examiner. The examiner will consider 
any response under paragraph (b)(1) or (c) of this section and any 
written comments by a third-party requester under paragraph (d) of this 
section and issue a determination that the rejection should be 
maintained or has been overcome.
    (f) Within one month of the examiner's determination pursuant to 
paragraph (e) of this section, the patent owner or any third-party 
requester may once submit comments in response to the examiner's 
determination. Within one month of the date of service of comments in 
response to the examiner's determination, any party may file a reply to 
the comments. Any third-party requester that had not previously filed 
an appeal or cross appeal and is seeking under this subsection to file 
comments or a reply to the comments is subject to the appeal and brief 
fees under Secs. 1.17(b) and (c), respectively, which must accompany 
the comments or reply.
    (g) After submission of any comments and any reply pursuant to 
paragraph (f) of this section, or after time has expired therefor, the 
reexamination proceeding will be returned to the Board of Patent 
Appeals and Interferences which shall reconsider the matter and issue a 
new decision. The new decision is deemed to incorporate the earlier 
decision, except for those portions specifically withdrawn.
    (h) The time periods set forth in paragraphs (b) and (c) of this 
section are subject to the extension of time provisions of Sec. 1.956. 
The time periods set forth in subsections (d) and (f) may not be 
extended.


Sec. 1.979  Action following decision by the Board of Patent Appeals 
and Interferences or dismissal of appeal in inter partes reexamination.

    (a) Parties to the appeal may file a request for rehearing of the 
decision within one month of the date of:
    (1) The original decision of the Board of Patent Appeals and 
Interferences under Sec. 1.977(a),
    (2) The original Sec. 1.977(b) decision under the provisions of 
Sec. 1.977(b)(2),
    (3) The expiration of the time for the patent owner to take action 
under Sec. 1.977(b)(2) or (c), or
    (4) The new decision of the Board of Patent Appeals and 
Interferences under Sec. 1.977(g).
    (b) Within one month of the date of service of any request for 
rehearing under paragraph (a) of this section, or any further request 
for rehearing under paragraph (c) of this section, any party to the 
appeal may once file comments in opposition to the request for 
rehearing or the further request for rehearing. The comments in 
opposition must be limited to the issues raised in the request for 
rehearing or the further request for rehearing.
    (c) If a party to an appeal files a request for rehearing under 
paragraph

[[Page 18185]]

(a) of this section, or a further request for rehearing under this 
section, the Board of Patent Appeals and Interferences will issue a 
decision on rehearing which decision is deemed to incorporate the 
earlier decision, except for those portions specifically withdrawn. If 
the decision on rehearing becomes, in effect, a new decision, and the 
Board of Patent Appeals and Interferences so states, then any party to 
the appeal may, within one month of the new decision, once file a 
further request for rehearing of the new decision under this 
subsection.
    (d) Any request for rehearing 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 rehearing is 
sought.
    (e) The patent owner may not appeal to the U.S. Court of Appeals 
for the Federal Circuit under Sec. 1.983 until all parties' rights to 
request rehearing have been exhausted, at which time the decision of 
the Board of Patent Appeals and Interferences is final and appealable 
by the patent owner.
    (f) An appeal by a third-party requester is considered terminated 
by the dismissal of the third-party requester's appeal, the failure of 
the third-party requester to timely request rehearing under 
Secs. 1.979(a) or (c), or a final decision under Sec. 1.979(e). The 
date of such termination is the date on which the appeal is dismissed, 
the date on which the time for rehearing expires, or the decision of 
the Board of Patent Appeals and Interferences is final. An appeal by 
the patent owner is considered terminated by the dismissal of the 
patent owner's appeal, the failure of the patent owner to timely 
request rehearing under Secs. 1.979(a) or (c), or the failure of the 
patent owner to timely file an appeal to the U.S. Court of Appeals for 
the Federal Circuit under Sec. 1.983. The date of such termination is 
the date on which the appeal is dismissed, the date on which the time 
for rehearing expires, or the date on which the time for the patent 
owner's appeal to the U.S. Court of Appeals for the Federal Circuit 
expires. If an appeal to the U.S. Court of Appeals for the Federal 
Circuit has been filed, the patent owner's appeal is considered 
terminated when the mandate is received by the Office. Upon termination 
of an appeal, if no other appeal is present, the reexamination 
proceeding will be terminated and the Director will issue a certificate 
under Sec. 1.997.
    (g) The times for requesting rehearing under paragraph (a) of this 
section, for requesting further rehearing under paragraph (c) of this 
section, and for submitting comments under paragraph (b) of this 
section may not be extended.


Sec. 1.981  Reopening after decision by the Board of Patent Appeals and 
Interferences in inter partes reexamination.

    Cases which have been decided by the Board of Patent Appeals and 
Interferences will not be reopened or reconsidered by the primary 
examiner except under the provisions of Sec. 1.977 without the written 
authority of the Director, and then only for the consideration of 
matters not already adjudicated, sufficient cause being shown.

Patent Owner Appeal to the United States Court of Appeals for the 
Federal Circuit in inter partes Reexamination


Sec. 1.983  Patent owner appeal to the United States Court of Appeals 
for the Federal Circuit in inter partes reexamination.

    The patent owner in a reexamination proceeding who is dissatisfied 
with the decision of the Board of Patent Appeals and Interferences may, 
subject to Sec. 1.979(e), appeal to the U.S. Court of Appeals for the 
Federal Circuit. The appellant must take the following steps in such an 
appeal:
    (1) In the U. S. Patent and Trademark Office file a timely written 
notice of appeal directed to the Director in accordance with 
Secs. 1.302 and 1.304; and
    (2) In the Court, file a copy of the notice of appeal and pay the 
fee, as provided for in the rules of the Court.

Concurrent Proceedings Involving Same Patent in inter partes 
Reexamination


Sec. 1.985  Notification of prior or concurrent proceedings in inter 
partes reexamination.

    (a) In any inter partes reexamination proceeding, the patent owner 
shall call the attention of the Office to any prior or concurrent 
proceedings in which the patent is or was involved, including but not 
limited to interference, reissue, reexamination, or litigation and the 
results of such proceedings.
    (b) Notwithstanding any provision of the rules, any person at any 
time may file a paper in an inter partes reexamination proceeding 
notifying the Office of a prior or concurrent proceedings in which the 
same patent is or was involved, including but not limited to 
interference, reissue, reexamination, or litigation and the results of 
such proceedings. Such paper must be limited to merely providing notice 
of the other proceeding without discussion of issues of the current 
inter partes reexamination proceeding. Any paper not so limited will be 
returned to the sender.


Sec. 1.987  Suspension of inter partes reexamination proceeding due to 
litigation.

    If a patent in the process of inter partes reexamination is or 
becomes involved in litigation, the Director shall determine whether or 
not to suspend the inter partes reexamination proceeding.


Sec. 1.989  Merger of concurrent reexamination proceedings.

    (a) If any reexamination is ordered while a prior inter partes 
reexamination proceeding is pending for the same patent, a decision may 
be made to merge the two proceedings or to suspend one of the two 
proceedings. Where merger is ordered, the merged examination will 
normally result in the issuance of a single reexamination certificate 
under Sec. 1.997.
    (b) An inter partes reexamination proceeding filed under Sec. 1.913 
which is merged with an ex parte reexamination proceeding filed under 
Sec. 1.510 will result in the merged proceeding being governed by 
Secs. 1.902--1.997, except that the rights of any third-party requester 
of the ex parte reexamination shall be governed by Secs. 1.510-1.560.


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

    If a reissue application and an inter partes reexamination 
proceeding on which an order pursuant to Sec. 1.931 has been mailed are 
pending concurrently on a patent, a decision may be made to merge the 
two proceedings or to suspend one of the two proceedings. Where merger 
of a reissue application and an inter partes reexamination proceeding 
is ordered, the merged proceeding will be conducted in accordance with 
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 
inter partes reexamination proceeding during the pendency of the merged 
proceeding. In a merged proceeding the third-party requester may 
participate to the extent provided under Secs. 1.902-1.997, except such 
participation shall be limited to issues within the scope of inter 
partes reexamination. The examiner's actions and any responses by the 
patent owner or third-party requester in a merged proceeding will apply 
to both the reissue application and the inter partes reexamination 
proceeding and be physically entered into both files. Any inter partes 
reexamination proceeding merged with a reissue application shall be 
terminated by the grant of the reissued patent.

[[Page 18186]]

Sec. 1.993  Suspension of concurrent interference and inter partes 
reexamination proceeding.

    If a patent in the process of inter partes reexamination is or 
becomes involved in an interference, the Director may suspend the inter 
partes reexamination or the interference. The Director will not 
consider a request to suspend an interference unless a motion under 
Sec. 1.635 to suspend the interference has been presented to, and 
denied by, an administrative patent judge and the request is filed 
within ten (10) days of a decision by an administrative patent judge 
denying the motion for suspension or such other time as the 
administrative patent judge may set.


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 an inter partes reexamination proceeding, the merger of such 
proceedings will be accomplished so as to preserve the third-party 
requester's right to participate to the extent specifically provided 
for in these regulations. In merged proceedings involving different 
requesters, any paper filed by one party in the merged proceeding shall 
be served on all other parties of the merged proceeding.

Reexamination Certificate in inter partes Reexamination


Sec. 1.997  Issuance of inter partes reexamination certificate.

    (a) Upon the conclusion of an inter partes reexamination 
proceeding, the Director will issue a certificate in accordance with 35 
U.S.C. 316 setting forth the results of the inter partes reexamination 
proceeding and the content of the patent following the inter partes 
reexamination proceeding.
    (b) A certificate will be issued in each patent in which an inter 
partes reexamination proceeding has been ordered under Sec. 1.931. Any 
statutory disclaimer filed by the patent owner will be made part of the 
certificate.
    (c) The certificate will be sent to the patent owner at the address 
as provided for in Sec. 1.33(c). A copy of the certificate will also be 
sent to the third-party requester of the inter partes reexamination 
proceeding.
    (d) If a certificate has been issued which cancels all of the 
claims of the patent, no further Office proceedings will be conducted 
with regard to that patent or any reissue applications or any 
reexamination requests relating thereto.
    (e) If the inter partes reexamination proceeding is terminated by 
the grant of a reissued patent as provided in Sec. 1.991, the reissued 
patent will constitute the reexamination certificate required by this 
section and 35 U.S.C. 316.
    (f) A notice of the issuance of each certificate under this section 
will be published in the Official Gazette.

    Dated: March 30, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States, Patent and Trademark Office.
[FR Doc. 00-8284 Filed 4-5-00; 8:45 am]
BILLING CODE 3510-16-P