[Federal Register Volume 65, Number 236 (Thursday, December 7, 2000)]
[Rules and Regulations]
[Pages 76756-76787]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-30425]



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Part III





Department of Commerce





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United States Patent and Trademark Office



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37 CFR Part 1



Rules to Implement Optional Inter Partes Reexamination Proceedings; 
Final Rule

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

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

RIN 0651-AB04


Rules to Implement Optional Inter Partes Reexamination 
Proceedings

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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

DATES: Effective Date: February 5, 2001.

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

SUPPLEMENTARY INFORMATION:   

Background

    This final rule sets forth distinct procedures directed toward 
determining and improving the quality and reliability of United States 
patents. The procedures provide for the optional inter partes 
reexamination procedures in addition to the present ex parte 
reexamination procedures for the reexamination of patents as provided 
for by the American Inventors Protection Act of 1999 as part of the 
conference report (H. Rep. 106-479) on H.R. 3194, Consolidated 
Appropriations Act, Fiscal Year 2000. The text of the American 
Inventors Protection Act of 1999, is contained in title IV of S. 1948, 
the Intellectual Property and Communications Omnibus Reform Act of 1999 
(Public Law 106-113), the Act which is incorporated by reference in 
Division B of the conference report. The procedures also provide for 
implementation of other miscellaneous changes to the reexamination of 
patents also provided for in Public Law 106-113.
    In August 1995, the Office published proposed rules in anticipation 
of H.R. 1732, 104th Cong., 1st Sess. (1995), a predecessor of the 
present inter partes reexamination statute. H.R. 1732 did not, however, 
mature into a statute. The August 1995 Notice of Proposed Rulemaking 
entitled ``Rules of Practice in Patent Cases; Reexamination 
Proceedings,'' was published in the Federal Register at 60 FR 41035 
(August 11, 1995) and in the Official Gazette at 1177 Off. Gaz. Pat. 
Office 130 (August 22, 1995). Sixteen sets of written comments were 
received in response to the August 1995 Notice of Proposed Rulemaking. 
A public hearing was held at 9:30 a.m. on September 20, 1995. Eight 
individuals offered oral comments at the hearing.
    In response to the 1999 Public Law 106-113, a notice of proposed 
rulemaking was published in the Federal Register on April 6, 2000, at 
65 FR 18154-18186, and in the Official Gazette on May 23, 2000, at 1234 
O.G. 93-123. The 2000 notice of proposed rulemaking addressed, and took 
into consideration, the comments received in response to the 1995 
proposed rules. A public hearing was not held.

Discussion of General Issues Involved

    This final rule is in response to Public Law 106-113, the Act which 
resulted from suggestions and comments to the Administration by the 
public, bar groups, and the August 1992 Advisory Commission on Patent 
Law Reform suggesting more participation in the reexamination 
proceeding by third party requesters. Under the inter partes 
reexamination rules set forth in this final rule notice, third party 
requesters will have greater opportunity to participate in 
reexamination proceedings in keeping with the spirit and intent of the 
new law. At the same time, participation will be limited to minimize 
the costs and other effects of reexamination requests on patentees, 
especially individuals and small businesses.
    Ex parte reexamination proceedings filed under chapter 30 of 35 
U.S.C. (both before and after the effective date, November 29, 1999, of 
the new law) will continue to be governed by 37 CFR 1.510-1.570. The 
final rules for optional inter partes reexamination proceedings under 
chapter 31 of 35 U.S.C. have been numbered 37 CFR 1.902-1.997.
    The effective date of the statute with respect to the optional 
inter partes reexamination proceedings as well as to the existing ex 
parte reexamination proceedings is complex. With the exception of the 
amendments to 35 U.S.C. 41(a)(7) directed to the revival of terminated 
ex parte and inter partes reexamination proceedings, the new statute 
and the conforming amendments to the present statute take effect on the 
date of enactment, November 29, 1999. The changes, however, only apply 
to a reexamination of a patent that issues from an original application 
which was filed in the United States on or after November 29, 1999. 
Thus, for inter partes reexaminations, the effective date language (in 
section 4608 of S. 1948) limits the applicability of the new inter 
partes reexamination chapter 31 of 35 U.S.C., and that of the 
conforming amendments to 35 U.S.C. 134, 141, 143 and 145, to any patent 
that issues from an original application filed in the United States on 
or after November 29, 1999, the effective date of Public Law 106-113. 
For ex parte reexaminations filed under chapter 30 of 35 U.S.C., the 
conforming amendments to 35 U.S.C. 134, 141, 143 and 145, apply only to 
those ex parte reexamination proceedings filed under 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,

[[Page 76757]]

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. An 
``original application'' filed in the United States prior to November 
29, 1999, is defined in the notice entitled ``Guidelines Concerning the 
Implementation of Changes to 35 U.S.C. 102(g) and 103(c) and the 
Interpretation of the Term `Original Application' in the American 
Inventors Protection Act of 1999'' which notice was published in the 
Official Gazette at 1233 Off. Gaz. Pat. Office 54 (April 11, 2000). The 
phrase ``original application'' is interpreted to encompass utility, 
plant and design applications, including first filed applications, 
continuations, divisionals, continuations-in-part, continued 
prosecution applications and the national stage phase of international 
applications. Therefore, the optional inter partes reexamination, and 
the application of the conforming amendments to 35 U.S.C. 134, 141, 143 
and 145 for both inter partes and ex parte reexamination proceedings is 
applicable to patents which issue from all applications (except for 
reissue applications) filed on or after November 29, 1999. A patent 
which issues from an application filed prior to November 29, 1999, with 
a request for continued examination (defined in section 4403 of the 
Act) made on or after May 29, 2000, however, is not eligible for the 
optional inter partes reexamination procedure nor application of the 
conforming amendments discussed above, because a request for continued 
examination is not a filing of an application.
    The conforming amendments also amend 35 U.S.C. 41(a)(7) to include 
the words ``any reexamination proceeding'' under the ``unintentional'' 
revival provisions of the statute to provide the patent owner with a 
remedy for an unintentionally delayed response in any reexamination 
proceeding. These words ``any reexamination proceeding'' clearly make 
this section applicable to both ex parte reexaminations and inter 
partes reexaminations. The effective date of this amendment to 35 
U.S.C. 41(a)(7) is one year after the date of enactment of the Act, or 
November 29, 2000. See section 4608 of S. 1948. Thus, as of November 
29, 2000, any ex parte or inter partes reexamination filed before, on, 
or after November 29, 2000, is subject to the ``unintentional'' revival 
provisions of the statute.
    Regarding the reexamination fee, 35 U.S.C. 41(d) requires the 
Commissioner of the United States Patent and Trademark Office (the 
Commissioner) to set the fee for the new optional inter partes 
reexamination at a level which will recover the estimated average cost 
of the reexamination proceeding to the Office. The estimated average 
cost is $8,800 for an inter partes reexamination proceeding. The 
difference in the cost between an ex parte reexamination ($2,520) and 
an inter partes reexamination ($8,800) takes into account that the 
Office will expend substantially more resources for examination, 
supervision, training, etc., where the third party requester 
participates in an inter partes reexamination proceeding, and takes 
into account the additional processing steps that are expected during 
an inter partes reexamination proceeding.

Discussion of the Major Specific Issues Involved (1999 Statute)

    The rules relating to inter partes reexamination proceedings are 
directed to the provisions set forth in chapter 31 of title 35 of the 
United States Code (35 U.S.C. 311-318). This Chapter provides for the 
filing of requests for inter partes reexamination, decisions on such 
requests, inter partes reexamination, appeal from inter partes 
reexamination decisions, and the issuance of a certificate at the 
termination of the inter partes reexamination proceedings.
    This final rule contains a number of changes to the text of the 
rules that were proposed for comment. The significant changes (as 
opposed to grammatical corrections) are discussed below. Familiarity 
with the Notice of Proposed Rulemaking is assumed.
    Section 4732 of the American Inventors Protection Act of 1999 
changed (among other things) the title ``Commissioner'' to 
``Director.'' In the Notice of Proposed Rulemaking the title 
``Commissioner'' was revised to read ``Director'' in the current rules, 
or portions of the current rules, that were proposed to be amended; and 
in the proposed new rules the new title ``Director'' was used in place 
of the former title ``Commissioner.'' In this final rule, however, the 
title ``Commissioner'' is not being changed to ``Director'' where it 
appears in the current rules of practice involved in this final rule, 
and the title ``Commissioner'' and not ``Director'' is used in the new 
rules adopted in this final rule. This is because legislation is 
pending before Congress that (if enacted) would restore the former 
title ``Commissioner.'' See Intellectual Property Technical Amendments 
Act of 2000, H.R. 4870, 106th Cong. (2000).
    The USPTO received 10 sets of written comments (from Intellectual 
Property Organizations, Law Firms, Businesses and Patent Practitioners) 
in response to the Notice of Proposed Rulemaking. The written comments 
have been analyzed. General comments are addressed as a group 
separately from the specific rules. Comments directed to specific rules 
and the response to each comment are provided with the discussion of 
the specific rule. Comments in support of proposed rules generally have 
not been reported in the responses to comments section.

Discussion of General Comments

General Comment 1: Examiner Assignment (selection of examiner)

    Two comments were received directed to the selection of the 
examiner who will be assigned the inter partes reexamination. One 
comment suggested that the ``rules'' rather than policy should provide 
that an inter partes reexamination be handled by an examiner other than 
the one who originally examined the application.
    The second comment expressed support for the Office's announced 
intention to adopt a policy that a different examiner, other than those 
actually involved in the examination and issuing of the patent, will be 
assigned the inter partes reexamination.

Response to General Comment 1

    The Office's intention to adopt a policy that a different examiner, 
other than those actually involved in the examination and issuing of 
the patent, will be assigned the inter partes reexamination was 
announced in the proposed rules. See Notice of proposed rulemaking, 
Rules to Implement Optional Inter Partes Reexamination Proceedings, 65 
FR 18154, 18157-58 (April 6, 2000), 1234 OG 93, 96 (May 23, 2000), 
Response to Issue 4, first paragraph. As noted therein, studies 
conducted by the Office as to the selection of the examiner have not 
shown any examiner bias irrespective of whether the same or a different 
examiner handles the reexamination. The same examiner should not be 
biased toward confirming patentability, because a reexamination is not 
a rehash of old issues, but rather, the resolution of a new question of 
patentability. In spite of these findings, the Office is, for the most 
part, adopting the comments suggesting assignment of the reexamination 
to an examiner other than the one who originally examined and issued 
the patent. The new policy is being adopted in order to eliminate any 
perception by the public of bias by the original examiner who handled 
the patent. The change in the manner of examiner selection, however, 
will be implemented as a matter of policy,

[[Page 76758]]

rather than by rule change. Specific guidance as to policies, practice 
and procedure as they will apply to examiner selection in inter partes 
reexamination proceedings will be forthcoming in a separate Official 
Gazette notice to be published in conjunction with the final rules on 
inter partes reexamination.

General Comment 2: Panel Review of Examiner Actions

    Two comments were received directed to the review of the examiner's 
actions during the examination process. One comment expressed support 
for the Office's announced intention to adopt a policy to hold a panel 
review of the examiner's proposed action at selected times during the 
examination. The comment suggested that such a review, however, be 
conducted of each action by the examiner that includes an action on the 
merits of the claims rather than the announced intention of holding 
such a review just prior to the decision to order reexamination and at 
the close of prosecution.
    The second comment expressed support for the proposed policy for 
better review of the (single) examiner's decision during the 
reexamination. The comment, however, erroneously identified the 
announced change in policy as a rule proposal.

Response to General Comment 2

    The Office's intention to adopt a policy to hold a patentability 
review conference (panel review) during the examination process was 
announced in the proposed rules. See Notice of proposed rulemaking, 
Rules to Implement Optional Inter Partes Reexamination Proceedings, 65 
FR 18154, 18158 (April 6, 2000), 1234 OG 93, 96 (May 23, 2000), 
Response to Issue 4, last paragraph. It was noted therein that, in 
order to provide a thorough review by a team of examiners, a practice 
was being considered to hold a panel review just prior to when the 
decision on the request for reexamination (order/denial) is issued and 
at the close of prosecution (i.e., just prior to ``allowance'' of the 
reexamination or just prior to issuing a right of appeal notice and 
final rejection). The panel review would be similar to the appeal 
conference review done in an application on appeal to the Board of 
Patent Appeals and Interferences. Upon reconsideration, it has been 
decided that a panel review will not be conducted just prior to the 
decision on the request for reexamination (order/denial) and just prior 
to the ``allowance'' of the reexamination, i.e., issuance of a Notice 
of Intent to Issue a Reexamination Certificate (NIRC). A panel review 
is not necessary at the time of the initial determination to order/deny 
the request for inter partes reexamination. If reexamination is 
ordered, prosecution proceeds, and both the patent owner and the third 
party requester will have the opportunity to address the position of 
the examiner set forth in the first Office action. Further, 
patentability panel reviews will be conducted later in the examination 
of the case. If the reexamination request is denied, the third party 
requester has the opportunity under Sec. 1.927 to request a de novo 
review by the TC Group Director of the examiner's decision denying 
reexamination. A panel review is not necessary at the time of the 
``allowance'' of the reexamination because the ``allowance'' of the 
reexamination in an inter partes reexamination proceeding is 
essentially a ministerial act performed (a) after patent owner fails to 
respond to an Office action and no claims have been found patentable, 
(b) after a ``right of appeal notice and final rejection'' is issued, 
where neither party timely appeals (or the appeal is dismissed), or (c) 
after a final decision by the Board of Patent Appeals and Interferences 
or the court where no further appeal is timely taken. Accordingly, no 
panel review is needed just prior to the decision on the request for 
reexamination (order/denial) and just prior to issuance of the NIRC. 
Rather, the two panel reviews will be held at the critical stages of 
the proceeding or just prior to issuing an action closing prosecution 
and just prior to issuing a right of appeal notice and final rejection. 
Specific guidance as to policies, practice and procedure as they will 
apply to panel review of examiner's actions in inter partes 
reexamination proceedings will be forthcoming in a separate Official 
Gazette Notice to be published in conjunction with the final rules on 
inter partes reexamination.
    It should further be noted that appeal conferences are already 
mandatory in ex parte reexamination proceedings just prior to issuance 
of an examiner's answer to an appeal to the Board of Patent Appeals and 
Interferences. Such appeal conferences will also be mandatory in inter 
partes reexamination proceedings. The two patentability panel reviews 
coupled with the appeal conference will provide three instances of 
multi-examiner reviews available in any inter partes reexamination 
proceeding which is prosecuted to the appeal stage.
    As to the first comment's suggestion that a panel review be 
conducted of ``each'' action by the examiner that includes an action on 
the merits of the claims, the Office plans to provide oversight by a 
legal advisor for each such action (as discussed below in general 
comment 3) in order to ensure that the examiner addresses each issue 
presented by parties to the proceeding. This oversight, coupled with 
the three multi-examiner reviews available in any inter partes 
reexamination proceeding which is prosecuted to the appeal stage, 
should ensure a high-quality, multi-dimensional examination of the 
proceeding.
    As to the second comment supporting the ``rule proposal'' for 
better review of the examiner's decisions, it should be noted that a 
``rule'' was not proposed for implementation of this practice. The 
Notice of Proposed Rulemaking stated the practice would be implemented 
as a matter of policy rather than by rule.

General Comment 3: Where Reexamination is Conducted in Office

    Three comments were directed to where in the Office, and by whom, 
the reexamination will be conducted. The first comment suggested that 
the inter partes reexamination proceeding should be conducted by a 
council system comprising experienced examiners.
    The second comment suggested that a special Reexamination Corps be 
established for conducting the inter partes reexamination proceeding. 
The examiners in the special Reexamination Corps would have an 
independent status such as that of the members of the Board of Patent 
Appeals and Interferences.
    The third comment expressed support for the Office's announced 
intention to consider the creation of a special group of legal advisors 
to assist the patent examiner in an inter partes reexamination 
proceeding.

Response to General Comment 3

    As to the first and second comments suggesting a council system of 
multiple examiners, or a special ``Board'' status for the examiner, the 
comments are not adopted in view of the Office's intention to provide 
oversight by legal advisors as set forth below.
    The third comment supports oversight of the examiners by legal 
advisors consistent with the Office's intention as announced in the 
proposed rules. See Notice of Proposed Rulemaking, Rules to Implement 
Optional Inter Partes Reexamination Proceedings, 65 FR 18154, 18158 
(April 6, 2000), 1234 OG 93, 96 (May 23, 2000), Response to Issue 4, 
second paragraph. As noted therein, the Office is considering the 
creation of a special group/unit having legal advisors trained in inter 
partes

[[Page 76759]]

reexamination procedures to oversee the examination of the inter partes 
reexamination by the patent examiner in the examining group. For 
technical expertise, an examiner selected from the examining group will 
be assigned the reexamination. The advantage of providing oversight to 
ensure timely, full, and appropriate treatment of all issues is that it 
will include (a) an examiner familiar with the technology to make the 
patentability decisions, and (b) legal advisors to provide uniformity 
of the reexamination practice and procedure. Specific guidance as to 
policies, practice and procedure as they will apply to policy oversight 
of examiner's actions in inter partes reexamination proceedings will be 
forthcoming in a separate Official Gazette notice to be published in 
conjunction with the final rules on inter partes reexamination.

General Comment 4: Definition of the Statutory Term ``Privies''

    One comment was received directed to the statutory term 
``privies.'' The term is used in 35 U.S.C. 317 to dictate which parties 
are prohibited from filing a reexamination, based upon action by other 
parties with whom they are in privity. The comment states that this 
important statutory term is not defined in either the statute or the 
rules, and is dangerously ambiguous without a definition.

Response to General Comment 4

    To the extent that the comment proposed that ``privies'' be defined 
in the rules package, it is not adopted. The Office, as the sole agency 
that administers the patent statute, properly interprets statutory 
language in the first instance, subject to review by the courts. The 
question of whether a party is a privy must be decided on a case-by-
case basis, evaluating all the facts and circumstances of each 
individual situation. It would not be appropriate at this time to 
provide an ``all encompassing'' definition, that might not account for 
facts which could arise in the future, which facts cannot be 
anticipated.
    It should be noted that the Office generally will not have a need 
to resolve the factual issue of whether or not one party is a privy of 
another party. Section 1.915(b)(7) requires a third party requester to 
certify that the estoppel provisions of Sec. 1.907 do not prohibit the 
filing of the inter partes reexamination request, and the Office does 
not intend to look beyond this required certification. It is only in 
the rare instance where a challenge to the accuracy of the 
certification is raised by the patent owner, that the question would 
then need to be addressed.

General Comment 5: Incorporation of Certain Case Law Into the Rules

    One comment asked whether the rules would codify the case law 
relating to claim construction, claim scope, the burden of establishing 
facts and the burden of persuasion (and their standards) as they apply 
to reexamination.

Response to General Comment 5

    The comment is not adopted. The rules will not state how the Office 
should view claim construction, claim scope, the burden of establishing 
facts and the burden of persuasion (and their standards) in 
reexamination. Rather, the Office's view of these issues and other like 
issues will continue to track the case law which is a continually 
evolving body of law. Instructions to the examiner on these issues will 
continue to be provided in Official Gazette Notices and in the Manual 
of Patent Examining Procedure.

Discussion of Specific Rules and Response to Comments

    Section 1.4(a)(2) is being amended to include inter partes 
reexamination under Secs. 1.902-1.997. No comment was received on this 
section. It is adopted as proposed.
    Section 1.6(d)(5) is being amended to include filing a request for 
inter partes reexamination under Sec. 1.913 as an exception to the use 
of facsimile transmission. No comment was received on this section. It 
is adopted as proposed.
    The Notice of Proposed Rulemaking included a proposed amendment to 
Sec. 1.17 to implement Sec. 4605(a) of the American Inventors 
Protection Act of 1999. This proposed amendment has, however, already 
been made in the final rule to implement eighteen-month publication of 
patent applications. See Changes to Implement Eighteen-Month 
Publication of Patent Applications, Final Rule, 65 FR 57024 (September 
20, 2000); 1239 Off. Gaz. Pat. Office 63 (October 10, 2000). 
Accordingly, it is no longer necessary to make that amendment of the 
rule in the present inter partes reexamination rule package. Section 
1.17 was amended in the final rule to implement eighteen-month 
publication so that the title includes a reference to reexamination to 
clearly indicate that the enumerated fees may apply to reexaminations 
as well as to patent applications. Section 1.17(l) was amended to 
reflect the fact that in the case of reexaminations, petitions for 
revival of a reexamination proceeding terminated for an unavoidable 
failure of the patent owner to timely respond will require the fees of 
$55 for a small entity and $110 for a large entity. Also, Sec. 1.17(m) 
was amended to reflect the fact that in the case of reexaminations, 
petitions for revival of a reexamination proceeding terminated for an 
unintentional failure to timely respond will require the fees of $605 
for a small entity and $1,210 for a large entity. Note, however, that 
the unintentional revival provisions of the statute are not effective 
in any reexamination until November 29, 2000. No comment was received 
on this section. Sections 1.17(l) and (m) as proposed in the Notice of 
Proposed Rulemaking for the present rule package were adopted in the 
final rule to implement eighteen-month publication of patent 
applications.
    Section 1.20(c) is being amended to reflect the fact that a request 
for an ex parte reexamination under 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. For any 
request for inter partes reexamination filed prior to the effective 
date of this final rule, the request must be accompanied by the 
$2,520.00 fee for a request for reexamination set forth in Sec. 1.20(c) 
(as in effect prior to the effective date of this final rule). The 
$6,280.00 balance of the $8,800.00 fee set forth in Sec. 1.20(c)(2) 
will be due on the effective date of this final rule in any inter 
partes reexamination still pending on the effective date of this final 
rule. Three comments were received and directed to this section.
    Comments: The first comment noted that the Office reduced the 
filing fee of $11,000, proposed in the 1995 proposed rules, to $8,800 
in the 2000 Notice of Proposed Rulemaking, but gave no explanation for 
the reduction. The comment opines that the reason for the reduction was 
the many objections to the high fee. The comment recommends that the 
Office consider further reducing the fee or at least make arrangements 
for conducting a review of the actual costs involved in inter partes 
reexaminations after the procedure has been in effect for a reasonable 
amount of time.
    The second comment suggested that considering the advantages and 
disadvantages to the third party requester involved in reexamination, 
the inter partes reexamination is not significantly more advantageous 
to the third party requester than is ex parte reexamination. The 
comment noted the difference between the $2,520 fee for ex parte 
reexamination and the $8,800 fee for inter partes and opined that the 
high fee will severely curtail the use of inter

[[Page 76760]]

partes reexamination. The comment suggested the third party requester 
should not be burdened with the full cost of inter partes 
reexamination, and that an appropriate reexamination filing fee would 
be less than $4,000.
    The third comment suggested the $8,800 inter partes reexamination 
filing fee will be an effective barrier to an intended aim of inter 
partes reexamination, i.e., to provide a viable alternative to the 
great cost and uncertainty of patent litigation.
    Response to Comment: The first comment speculates as to why the 
filing fee was reduced from $11,000 as proposed in the 1995 Notice of 
Proposed Rulemaking to $8,800 as proposed in the 2000 Notice of 
Proposed Rulemaking. The fee was readjusted when, upon further 
analysis, the Office realized that the proposed $11,000 fee should not 
have included projected costs incurred by the Board of Patent Appeals 
and Interferences and the Solicitor's Office. Appeal fees are set by 
statute under 35 U.S.C. 41(a)(6) and thus are not cost recoverable as 
part of the reexamination filing fee under 35 U.S.C. 41(d). 
Accordingly, the proposed filing fee was adjusted downwardly.
    As to the first comment suggesting re-evaluating the filing fee 
after the procedure has been in effect for a reasonable amount of time, 
this is required by statute. Section 4606 of S. 1948 requires the 
Commissioner, not later than November 29, 2004, to submit to the 
Congress a report evaluating whether the inter partes reexamination 
proceedings established by this legislation is inequitable to any of 
the parties. Such evaluation would include an analysis of the filing 
fee, and its burden on the third party requester.
    The second comment suggests (1) that the third party requester 
should not be burdened with the full cost of the inter partes 
reexamination, and (2) that a reduced fee of less than $4,000 be set. 
The statute, however, requires that the third party requester pay the 
reexamination filing fee established by the Commissioner in accordance 
with 35 U.S.C. 41(d). Further, the reexamination fees must under 35 
U.S.C. 41(d) fully recover the cost of the reexamination and the full 
amount of the estimated fee must be charged.
    As to the second and third comments asserting that the high fee 
would severely curtail the use of inter partes reexamination, it is 
noted that the overall costs of requesting and participating in an 
inter partes reexamination would include, in addition to the $8,800 
filing fee, the attorney/agent fees throughout the proceeding 
(including appeal costs) and other prosecution-related costs (testing, 
declarations, etc.). Inter partes reexaminations will be hotly-
contested, adversarial proceedings. The estoppel provisions of the 
statute will maximize the third party requester's incentives to prevail 
in the reexamination. The overall cost of such proceedings to the third 
party requester could easily reach $50,000 to $150,000, the amount 
varying depending on variables such as parties, number of claims, type 
of evidence needed, etc. The $8,800 filing fee is not perceived to be 
excessive in light of the potential overall cost of an inter partes 
reexamination proceeding, and thus the filing fee would not in itself 
be a deterrent to the filing of a request for inter partes 
reexamination. In those instances where a member of the public deems 
the $8,800 cost of an inter partes reexamination too high for his or 
her needs or purposes, the filing of an ex parte reexamination remains 
available at a relatively low filing fee of $2,520. The comments are 
not adopted, and the section is adopted as proposed.
    Section 1.25(b), which provides for charging fees to deposit 
accounts, is being amended to include a reference to inter partes 
reexaminations under Sec. 1.913. No comment was received on this 
section. It is adopted as proposed.
    Section 1.26 is being amended so as to reflect the refund to the 
reexamination requester where the Commissioner decides not to institute 
a reexamination proceeding. For ex parte reexaminations filed under 
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 estimated average cost of the reexamination proceeding through the 
denial of the reexamination request. No comment was received on this 
section. It is adopted as proposed.
    Section 1.112 is being amended to also provide that after the 
patent owner response under Sec. 1.945 and the third party requester 
comments under Sec. 1.947, the patent undergoing inter partes 
reexamination will be reconsidered and again examined. Section 1.112 is 
being further amended so that the last sentence reflects the fact that 
in the case of inter partes reexaminations, the right to reply may be 
limited by an action closing prosecution under Sec. 1.949 (prior to the 
final action) or by a right of appeal notice under Sec. 1.953 (which is 
a final action). No comment was received on this section. It is adopted 
as proposed.
    Sections 1.113 and 1.116. Section 1.113, which provides for a final 
rejection or action, is being amended to limit its applicability to 
applications and ex parte reexaminations filed under 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 being 
amended so that the title includes a reference to an action closing 
prosecution and a right of appeal notice in inter partes 
reexaminations. Section 1.116(b), which provides for amendments after 
final action, is being amended to apply to amendments filed by the 
patent owner after an action closing prosecution in inter partes 
reexaminations filed under Sec. 1.913. Also, Sec. 1.116(b) is being 
amended to preclude amendments after the right of appeal notice under 
Sec. 1.953 except as provided for in Sec. 1.116(d). Section 1.116(d), 
which provides for amendments after the decision on appeal, is being 
amended to provide for amendments after the decision on appeal in an 
inter partes reexamination. One comment was directed to these sections.
    Comment: The comment notes that the proposed amendments to 
Secs. 1.113 and 1.116 are based on a version of those rules that is no 
longer in effect. Sections 1.113 and 1.116 were amended by virtue of 
the May 29, 2000 interim rule published March 20, 2000, at 65 FR 14865 
to refer, inter alia, to the new Sec. 1.114 and requests for continued 
examination. The comment suggests that it is not the intent of the 
reexamination rules to obviate the changes made by the May 29, 2000, 
interim rule and therefore the changes made by the reexamination rules 
should be based on the language of Secs. 1.113 and 1.116 as amended by 
the interim rule of May 29, 2000.
    Response to Comment: The comment is adopted. The final rules of 
this package have been revised to amend the most current version of the 
rules of practice.
    Section 1.121(i), which provides for the manner of making 
amendments to the description and claims in reexamination proceedings, 
is being amended to specify that such amendments are made in accordance 
with Secs. 1.530(d)--(j) in both ex parte reexaminations filed under 
Sec. 1.510 and inter partes reexaminations filed under Sec. 1.913. No 
comment was received on this section. It is adopted as proposed, other 
than to change the subsection designations for conformance with the 
most current version of the rules of practice as needed.
    Sections 1.136(a)(2) and (b), which provide for filing extensions 
of time in

[[Page 76761]]

applications, are being amended to make it clear that Sec. 1.956 is 
controlling for extensions of time in inter partes reexaminations. No 
comment was received on this section. It is adopted as proposed.
    The notice of proposed rulemaking included a proposed amendment to 
Sec. 1.137 to implement Sec. 4605(a) of the American Inventors 
Protection Act of 1999. This proposed amendment has, however, already 
been made in the final rule to implement eighteen-month publication of 
patent applications. See Changes to Implement Eighteen-Month 
Publication of Patent Applications, Final Rule, 65 FR 57024 (September 
20, 2000); 1239 Off. Gaz. Pat. Office 63 (October 10, 2000). 
Accordingly, it is no longer necessary to make that amendment of the 
rule in the present inter partes reexamination rule package. Section 
1.137, which provides for revival of abandoned applications or lapsed 
patents, was amended in the final rule to implement eighteen-month 
publication to provide for revival of ex parte reexamination 
proceedings terminated under 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.
    In the final rule to implement eighteen-month publication, the 
title was amended to include a terminated reexamination proceeding. 
Section 1.137(a) was amended to include revival of unavoidably 
terminated reexamination proceedings. The unavoidable delay provisions 
of 35 U.S.C. 133 are imported into, and are applicable to, 
reexamination proceedings by 35 U.S.C. 305 and 314. See In re Katrapat, 
6 USPQ2d 1863, 1865 (Comm'r Pat. 1988). Section 1.137(b) was amended to 
provide for revival of unintentionally terminated reexamination 
proceedings. The unintentional delay fee provisions of 35 U.S.C. 
41(a)(7) are imported into and are applicable to all reexamination 
proceedings by section 4605 of S. 1948. Note that these changes pertain 
to all reexaminations (i.e., both ex parte reexaminations filed under 
Sec. 1.510 and inter partes reexaminations filed under Sec. 1.913) and 
were stated by statute to become effective on November 29, 2000 (one 
year after enactment of the statute). Section 1.137(d) was amended to 
provide that extensions of time for requesting reconsideration of a 
decision dismissing or denying a petition requesting revival of a 
terminated reexamination proceeding under Secs. 1.137(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. No comment was received on this section. 
Section 1.137 was adopted in the final rule to implement eighteen-month 
publication of patent applications in the manner as proposed in the 
notice of proposed rulemaking for the present rule package.
    Sections 1.181(a) and (c) are being amended to reflect the fact 
that a petition thereunder may be filed in both ex parte and inter 
partes reexamination proceedings. No comment was received on this 
section. It is adopted as proposed.
    Section 1.191, which provides for appeal to the Board of Patent 
Appeals and Interferences by the patent owner from any decision adverse 
to patentability, is being amended so as to be applicable to 
applications and ex parte reexaminations filed under Sec. 1.510 but not 
to inter partes reexamination proceedings filed under Sec. 1.913. 
Specifically, Sec. 1.191 points 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. No comment was 
received on this section. It is adopted as proposed.
    Section 1.191 is further being amended to distinguish between (1) 
ex parte reexamination proceedings filed under Sec. 1.510 for 
reexamination of patents that issued from an original application filed 
prior to November 29, 1999 (where an appeal is permitted when claims 
have been twice or finally rejected), and (2) ex parte reexamination 
proceedings filed for reexamination of patents that issued from an 
original application filed on or after November 29, 1999 (where an 
appeal is only possible when claims have been finally rejected and is 
not possible where claims have been twice rejected but not finally 
rejected). This date distinction is necessitated by the effective date 
of the conforming amendments made to 35 U.S.C. 134 in S. 1948 being 
keyed to the original filing date of the application which issued as 
the patent under reexamination. The effective date language in section 
4608 of S. 1948 limits the applicability of the conforming amendments 
to 35 U.S.C. 134, 141, 143 and 145, to a reexamination of a patent that 
issues from an original application which is filed on or after November 
29, 1999. Thus, the conforming amendments to 35 U.S.C. 134, 141, 143 
and 145 apply only to those ex parte reexamination proceedings filed 
under Sec. 1.510 for patents that issue from an original application 
which is filed on or after November 29, 1999. The conforming amendments 
do not apply to ex parte reexamination proceedings filed under 
Sec. 1.510 for patents that have issued or will issue from an original 
application which was filed prior to November 29, 1999. No comment was 
received on this section. It is adopted as proposed.
    Section 1.301, which provides for appeal by the patent owner in a 
reexamination proceeding to the U.S. Court of Appeals for the Federal 
Circuit, is being amended to be applicable to ex parte reexamination 
proceedings filed under Sec. 1.510 and also to indicate, that for inter 
partes reexamination proceedings filed under Sec. 1.913, Sec. 1.983 is 
controlling. No comment was received on this section. It is adopted as 
proposed.
    Section 1.303(a) and (b), which provide for remedy by civil action 
under 35 U.S.C. 145 for the patent owner in a reexamination proceeding, 
are being amended so as to be applicable only to ex parte 
reexaminations filed under Sec. 1.510 for patents that issue from an 
original application which is filed prior to November 29, 1999. This 
date distinction is necessitated for reasons analogous to those set 
forth in the discussion of Sec. 1.191 above. Section 1.303 is further 
amended by adding a new subsection (d) to clearly note that no remedy 
by civil action under 35 U.S.C. 145 is available to the patent owner 
for ex parte reexamination proceedings filed under Sec. 1.510 for 
patents that issue from an original application which is filed on or 
after November 29, 1999, and for any inter partes reexamination 
proceedings filed under Sec. 1.913. No comment was received on this 
section. It is adopted as proposed.
    Section 1.304, which provides for the time for appeal by the patent 
owner in a reexamination proceeding to the U.S. Court of Appeals for 
the Federal Circuit, is being amended so as to make it applicable to 
inter partes reexamination proceedings filed under Sec. 1.913. No 
comment was received on this section. It is adopted as proposed.
    The section heading (title) to subpart D and the undesignated 
center headings for subpart D are being amended by inserting ``Ex 
Parte'' before ``Reexamination'' to provide that the reexamination 
rules in this subpart generally apply to ex parte reexamination 
proceedings. Where an ex parte rule also applies to inter partes

[[Page 76762]]

reexamination, it is explicitly incorporated by reference into the 
inter partes reexamination rules, e.g., Sec. 1.933 (patent owner duty 
of disclosure) incorporates Sec. 1.555; and Sec. 1.943 (requirement of 
responses, comments and briefs) incorporates Sec. 1.52. No comment was 
received on these changes. They are adopted as proposed.
    Section 1.501(a), which provides for citations of prior art in 
patent files, is being amended to provide that a citation shall be 
entered in the patent file except as set forth in Sec. 1.502 (newly 
created) and Sec. 1.902. Section 1.501(a) is further amended by 
deleting the criteria for the processing of a prior art citation filed 
during an ex parte reexamination, and moving that criteria to 
Sec. 1.502 newly created for that purpose. One comment was received 
directed to Sec. 1.501.
    Comment: The comment suggests the Office should re-address the 
prohibition on a third party from submitting prior art patents and 
printed publications for entry into an ex parte reexamination 
proceeding after the order to reexamine has been mailed with the 
prohibition applying, even where the prior art was unavailable to a 
third party requester at the time the ex parte request was filed, or 
known only to another member of the public. The comment argues that the 
present system which requires the third party to file another ex parte 
request for reexamination (which includes the new prior art) and that 
merger of the reexamination proceedings is a cumbersome, burdensome and 
time-delaying system as compared to, for example, simply permitting the 
entry of the new prior art and providing for one more reexamination 
Office action and response for new prior art found to be relevant.
    Response to Comment: When promulgating the reexamination rules in 
1981, it was the position of the Office that an ex parte proceeding 
best served the interests of all, and best complied with the intent of 
the 1980 statute. To preserve the ex parte nature of the proceeding, it 
was decided that consideration of citations of prior art submitted 
after the reexamination order will be delayed until the reexamination 
proceeding has terminated, unless the citation is submitted by the 
patent owner or a third party requester in a separate reexamination 
request or in a reply to the patent owner's statement. While the filing 
of a separate request for reexamination can add some delay to the 
proceeding, this delay would not be extensive. In contrast, permitting 
a third party to file citations at any time for consideration by the 
examiner could seriously delay the reexamination proceeding and 
militate against the ``special dispatch'' requirement of the statute.
    New Sec. 1.502 provides for the processing of prior art citations 
submitted during an ex parte reexamination proceeding. The substance of 
Sec. 1.502 was previously contained in Sec. 1.501(a), but was separated 
out as a new section for clarity. Once ex parte reexamination has been 
ordered, only citations by the patent owner under Sec. 1.555 and by a 
third party requester in a filing under either Sec. 1.510 or Sec. 1.535 
will be entered during the pendency of the reexamination proceeding. 
Citations by other parties (who are not a party to the reexamination) 
filed during the pendency of the reexamination proceeding will not be 
entered into the patent file or the reexamination file until the 
reexamination proceeding is concluded unless made as a part of a 
request for reexamination under Sec. 1.510.
    The titles of Secs. 1.510-1.570 are being amended by revising them 
to be limited to ex parte reexamination where applicable. No comment 
was received on these changes. They are adopted as proposed.
    Section 1.510(a) is being amended to limit the section to ex parte 
reexamination proceedings. The notice of proposed rulemaking included a 
proposed amendment to Sec. 1.510(b)(4) which relates to the contents of 
the reexamination request. This proposed amendment has, however, 
already been made in the final rule to implement the Patent Business 
Goals. See Changes to Implement the Patent Business Goals, Final Rule, 
65 FR 54604 (September 8, 2000); 1238 Off. Gaz. Pat. Office 77 
(September 19, 2000). Section 1.510(b)(4) was amended to delete the 
requirement of mounting the copy of the patent to be reexamined in 
single column format. Instead, a copy of the entire patent including 
the front face, drawings, and specification/claims (in double column 
format) for which reexamination is requested, and a copy of any 
disclaimer, certificate of correction, or reexamination certificate 
issued in the patent will be required. All copies must have each page 
plainly written on only one side of a sheet of paper. Section 
1.510(b)(4) is now being revised so that it applies to both ex parte 
reexamination and inter partes reexamination proceedings. No comment 
was received on this section. It is adopted as proposed.
    Sections 1.515, 1.520, 1.525, 1.530, 1.535, and 1.540 are being 
amended to recite the reexamination as ``ex parte'' reexamination where 
appropriate, to eliminate any potential for confusion. No comment was 
received on these changes. They are adopted as proposed.
    Section 1.530(d) is being revised so that it (and Secs. 1.530(e)-
(k)) apply to both ex parte reexamination and inter partes 
reexamination proceedings. No comment was received on this section. It 
is adopted as proposed.
    A new Sec. 1.530(l), directed to correction of inventorship of a 
patent, was added in the final rules to implement the Patent Business 
Goals. See Changes to Implement the Patent Business Goals, Final Rule, 
65 FR 54604 (September 8, 2000); 1238 Off. Gaz. Pat. Office 77 
(September 19, 2000). Section 1.530(l) is now being revised so that it 
applies to both ex parte reexamination and inter partes reexamination 
proceedings. Section 1.530(l) is also being revised to state ``on 
petition of all the parties set forth in Sec. 1.324(b)(1)-(3)'' rather 
than ``on petition of all the parties'' to make it clear that all 
``parties'' to the proceeding (e.g., an inter partes reexamination 
third party requester) need not, and should not, join in the petition 
to correct inventorship.
    Section 1.550, which provides for the conduct of the reexamination 
proceeding, is being amended to limit the section to ex parte 
reexamination proceedings filed under Sec. 1.510. In addition, 
Sec. 1.550(d) is being amended to clarify that the failure to file a 
written statement of an interview as required under Sec. 1.560(b) shall 
be the basis for terminating a reexamination proceeding. Section 
1.550(e)(1) specifically provides for the revival of terminated ex 
parte reexamination proceedings under the unavoidable delay provisions 
of 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. Section 1.550(e)(2) provides for the revival of 
terminated ex parte 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 ex parte and inter partes reexamination proceedings by 
section 4605 of S. 1948. Note, however, that the unintentional delay 
provisions of 35 U.S.C. 41(a)(7) only become effective in reexamination 
proceedings on November 29, 2000 (one year after enactment of the 
statute). No comment was received on this section. It is adopted as 
proposed.
    Section 1.552, which provides for the scope of reexamination in ex 
parte reexamination, is being amended to limit the section to ex parte 
reexamination proceedings filed under Sec. 1.510. In addition, 
Sec. 1.552(a) and (b) are being amended to more clearly

[[Page 76763]]

specify that all of the claims (new claims and amended patent claims) 
will be examined on the basis of patents or printed publications and, 
with respect to subject matter added or deleted in the reexamination 
proceeding, on the basis of the requirements of 35 U.S.C. 112. Sections 
1.552 and 1.906 of the present rule package were drafted to parallel 
the text of Sec. 1.906 as it was presented in the August 1995 Notice of 
Proposed Rulemaking entitled ``Rules of Practice in Patent Cases; 
Reexamination Proceedings.'' Section 1.552(c) is further being amended 
to preclude the examiner from independently discovering and noting 
issues other than those indicated in Secs. 1.552(a) and (b). In this 
regard, Sec. 1.552(c) is being amended by changing the phrase ``If such 
questions are discovered during a reexamination proceeding,'' to now 
read ``If such issues are raised by the patent owner or third party 
requester.'' The examiner should only note an issue under Sec. 1.552(c) 
after careful consideration, and should only note the raised issue 
once. Patent owners could then file a reissue application if they wish 
such issue to be resolved. It would not be appropriate for the examiner 
sua sponte to raise issues directed to the patentability of a claim of 
a patent which may not be resolved in the reexamination. No comment was 
received on this section. It is adopted as proposed.
    Section 1.555, which sets forth the patent owner's duty of 
disclosure in reexamination, is being amended to clearly apply to both 
ex parte and inter partes reexaminations. In addition, Sec. 1.552(c) is 
being amended to preclude the examiner from independently discovering 
and noting issues relating to patent owner's compliance with its duty 
of disclosure. In this regard, Sec. 1.552(c) is being amended by 
changing the phrase ``If questions of compliance with this section are 
discovered during a reexamination proceeding, * * *'' to now read ``If 
questions of compliance with this section are raised by the patent 
owner or third party requester during a reexamination proceeding, * * * 
.'' It would not be appropriate for the examiner sua sponte to raise 
issues directed to the issue of patent owner's compliance with its duty 
of disclosure which may not be resolved in the reexamination. No 
comment was received on this section. It is adopted as proposed.
    Section 1.560, which provides for interviews in reexamination 
proceedings, is being amended to limit the section to ex parte 
reexamination proceedings filed under 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 being amended to clarify 
that the patent owner must file a written statement of an interview 
after an interview is held. The written statement may be filed either 
as a separate paper within one month after the date of the interview, 
or as a separate part of a response to an outstanding Office action, 
whichever is later. One comment was received and directed to this 
section.
    Comment: The comment suggests that when reexamination is requested 
by a third party, there is usually litigation directed to the patent 
for which reexamination is requested involving severely conflicting 
interests between the patent owner and the third party requester. The 
comment asserts that during reexamination, the examiner is required to 
maintain neutrality, and therefore the scope of the interview should be 
limited to that needed to deepen the examiner's understanding of the 
technology and to clarify points of contention and that the examiner 
should be prohibited from discussing amendment proposals during an 
interview with the patent owner.
    Response to Comment: The statute, 35 U.S.C. 305, provides that 
reexamination will be conducted according to the procedures established 
for initial examination under the provisions of sections 132 and 133 of 
this title. In a very real sense, the intent of reexamination is to 
start over and reexamine the patent and examine new and amended claims 
as they would have been examined in the original application of the 
patent. Section 132 permits the patent owner to propose amendments to 
the claims which will be reexamined by the examiner. The procedures 
established for initial examination under section 132 permit the patent 
owner to propose amendments either by written response or during an 
interview with the examiner. See section 713.01 of the Manual of Patent 
Examining Procedure which provides guidance as to the submission of 
amendments in conjunction with interviews, and the rationale therefor. 
In both cases, the examiner is obligated to consider such amendment 
proposals when conducting his or her examination of the claims in light 
of the prior art. The comment is not adopted, and the section is 
adopted as proposed.
    Section 1.565, which provides for concurrent Office proceedings, is 
being amended to limit the reexamination proceedings of the section to 
ex parte reexamination proceedings filed under Sec. 1.510. In addition, 
Sec. 1.565(e) is being amended to change ``examiner-in-chief'' to 
``administrative patent judge'' to reflect the current title. Also, the 
appropriate references for concurrent proceedings which include an 
inter partes reexamination proceeding have been added. Section 1.565(c) 
is being amended to make it clear that after prosecution has been 
terminated in a pending reexamination proceeding (e.g., by the issuance 
of a Notice of Intent to Issue a Reexamination Certificate) there is no 
right of merger of any subsequently filed reexamination request. No 
comment was received on this section. It is adopted as proposed.
    Section 1.570 is being amended to recite the reexamination as ``ex 
parte'' reexamination where appropriate, to eliminate any potential for 
confusion. No comment was received on this section. It is adopted as 
proposed.
    A new title Subpart H--Inter Partes Reexamination of Patents 
(Applicable to any Patent that Issues from an Original Application 
Filed in the United States on or after November 29, 1999) has been 
added which provides that the reexamination rules in this subpart 
generally apply to inter partes reexamination proceedings on patents 
having a filing date on or after November 29, 1999. Some of the inter 
partes reexamination rules specifically incorporate ex parte 
reexamination rules, e.g., Sec. 1.943 (requirement of responses, 
comments and briefs) incorporates Sec. 1.52, and Sec. 1.933 (patent 
owner duty of disclosure) incorporates Sec. 1.555. One comment was 
received directed to this section.
    Comment: The comment suggested that the heading ``Subpart H 
Reexamination of Patents'' as proposed in the Notice of Proposed 
Rulemaking be amended to add ``(Applicable to Patents having an 
Original United States Filing date On or After November 29, 1999).'' 
The comment notes that the effective date of the statute with respect 
to optional inter partes reexamination is complex, and it would be 
helpful to practitioners and those considering inter partes 
reexamination if they are clearly advised of what patents are subject 
to such proceedings.
    Response to Comment: The comment is adopted in part. The heading 
has been amended to add ``(Applicable to any Patent that Issues from an 
Original Application Filed in the United States on or after November 
29, 1999.)'' This language more closely tracks the language of the 
statute than does the language suggested in the comment.
    New Sec. 1.902 provides for the processing of prior art citations 
during

[[Page 76764]]

an inter partes reexamination proceeding and is analogous to new 
Sec. 1.502 which deals with prior art citations during an ex parte 
reexamination proceeding. No comment was received on this section. It 
is adopted as proposed.
    New 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). No comment was received 
on this section. It is adopted as proposed.
    New Sec. 1.904 provides that a notice of the filing of an inter 
partes reexamination request 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. No comment was received on 
this section. It is adopted as proposed.
    New Sec. 1.905 provides that, unless otherwise provided for, a 
submission of papers by the public other than third party requesters in 
an inter partes reexamination proceeding will not be considered in the 
proceeding and will be treated in accordance with the requirements of a 
prior art submission under Sec. 1.902 if it complies with the 
requirements of Sec. 1.501. Submissions not in accordance with 
Sec. 1.501 will be returned to the sender. No comment was received on 
this section. It is adopted as proposed.
    New Sec. 1.906 covers the scope of reexamination in an inter partes 
reexamination proceeding. While it is not intended that examiners will 
routinely complete a new search when conducting an inter partes 
reexamination, examiners may conduct additional searches and cite and 
apply additional prior patents and printed publications when they 
consider it appropriate and beneficial to do so. Section 1.906(a) 
provides that the examination is only on the basis of patents or 
printed publications and, with respect to subject matter added or 
deleted during the inter partes reexamination, on the basis of the 
requirements of 35 U.S.C. 112. Section 1.906(b) provides that claims in 
a reexamination proceeding must not enlarge the scope of the claims of 
the patent and must not introduce new matter. Section 1.906(c) provides 
that issues relating to matters other than those indicated in 
Secs. 1.906(a) and (b) of this section (e.g., on sale, public use, duty 
of disclosure, etc.) will not be resolved in a reexamination 
proceeding, but will be noted by the examiner as being an open issue in 
the record if such issues are raised by the patent owner or the third 
party requester. The examiner should only note an issue under 
Sec. 1.906(c) after careful consideration, and should only raise the 
noted issue once. Patent owners could then file a reissue application 
if they wish such issue to be resolved. It would not be appropriate for 
the examiner sua sponte to raise issues directed to the patentability 
of a claim of a patent which may not be resolved in the reexamination. 
No comment was received on this section. It is adopted as proposed.
    New 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 an inter partes 
reexamination has been issued, neither the third party requester, nor 
any of its privies, may file a subsequent request for an inter partes 
reexamination of the patent until an inter partes reexamination 
certificate is issued, unless such filing is authorized by the 
Commissioner. Under Sec. 1.907(b), once a final decision has been 
entered against a party in a civil action that the party has not 
sustained its burden of proving invalidity of any patent claim in suit, 
then that party, and its privies, are thereafter precluded from 
requesting an inter partes reexamination of any such patent claim on 
the basis of issues which that party, or its privies, raised or could 
have raised in such civil action; and an inter partes reexamination 
requested by that party, or its privies, on the basis of such issues 
may not thereafter be maintained by the Office. Under Sec. 1.907(c), if 
a final decision in an inter partes reexamination proceeding instituted 
by a third party requester is favorable to patentability of any patent 
claim, then that party, or its privies, may not thereafter request an 
inter partes reexamination of any such patent claim on the basis of 
issues which that party, or its privies, raised or could have raised in 
such inter partes reexamination proceeding. Two comments were received 
directed to this section.
    Comments: The first comment, directed to Sec. 1.907(b), suggests 
that if the Office intends to determine on a case-by-case basis whether 
the third party requester could have raised an issue in a civil action, 
the phrase ``or could have raised'' should be deleted from 
Sec. 1.907(b). The second comment directed to Secs. 1.907(b) and (c) 
suggests that the words ``could have raised'' should be changed to 
``had become or should have become known to that party upon reasonable 
inquiry at the time the inter partes reexamination was ordered.'' The 
comment argues the ``could have raised'' language would theoretically 
bar a third party from requesting a new reexamination based on any 
existing patent or printed publication, even those remotely located in 
another file of the third party.
    Response to Comments: As to the first comment, under 
Sec. 1.915(b)(7), a third party requester is required to include a 
certification that the estoppel provisions of Sec. 1.907 do not 
prohibit the filing of the inter partes reexamination request. The 
Office does not intend to look beyond that certification. The Office 
does not plan to make a case-by-case determination. It is only in the 
rare instance where a challenge to the accuracy of the certification is 
raised by the patent owner, that the question would then need to be 
addressed.
    As to the second comment addressing Secs. 1.907(b) and (c), the 
statute, 35 U.S.C. 317, recites ``on the basis of issues which that 
party or its privies raised or could have raised in such civil action 
or inter partes reexamination proceeding.'' The rule merely tracks the 
statutory language. Adoption of the suggested language would appear to 
enlarge the scope of the statutory estoppel. The interpretation of the 
statutory language is subject to statutory construction on a case-by-
case basis depending on the particular facts of the individual case. As 
noted above, the Office does not intend to make such a determination in 
each reexamination, but will rely upon the certification by the third 
party requester under Sec. 1.915(b)(7). The comments are not adopted, 
and the section is adopted as proposed.
    New Sec. 1.913 provides for any person (unless 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 on or after November 29, 1999. The time 
period for filing such a request is limited to the period of 
enforceability of the patent for which the request is filed. The 
language ``other than the patent owner or its privy'' has been deleted 
from Sec. 1.913. One comment was received addressed to this section.
    Comment: Section 1.913, as proposed in the Notice of Proposed 
Rulemaking, excluded the patent owner or its privies from those persons 
who may file an inter partes request for reexamination. The comment 
suggests the Office has exceeded its authority in excluding the patent 
owner or its privies. The comment argues that Congress intended that 
the patent owner could be

[[Page 76765]]

permitted to file an inter partes reexamination because 35 U.S.C. 
311(c), which requires the Commissioner to send a copy of the request 
to the patent owner, explicitly relieves the Commissioner of that 
obligation when the inter partes requester is the patent owner. The 
comment notes that a patent owner may feel the chances of staying a 
pending litigation are increased by requesting an inter partes 
reexamination, as compared to an ex parte reexamination, because of the 
provisions of 35 U.S.C. 318 (stay of litigation).
    Response to Comment: The Office does not agree with the statutory 
interpretation presented in the comment. Portions of the language 
contained in sections 311, 312, 314, and 317 of the 1999 statute which 
suggests that the patent owner may file an inter partes request for 
reexamination are regarded as inadvertent legislative drafting errors 
created through the evolution of the final version of the 1999 statute. 
The language of the 1980 ex parte reexamination statute, which was used 
as the basis for the 1999 statute, includes language which permits 
either the patent owner or a third party to file a request for ex parte 
reexamination. The earlier versions of the 1999 statute merely proposed 
to amend the 1980 statute by making the ex parte reexamination more 
inter partes in nature. The final version of the 1999 statute was re-
drafted at the last moment and for the first time created separate ex 
parte (chapter 30) and inter partes (chapter 31) reexamination statutes 
by modeling the inter partes practice on the ex parte practice. The 
drafters, however, inadvertently did not remove the language of the 
1980 statute directed to patent owner filings of reexamination 
requests, even though an inter partes procedure is clearly 
inappropriate for a reexamination initiated by a patent owner. Note 
further that legislation is pending before Congress in which the noted 
language has been deleted or changed. See the Intellectual Property 
Technical Amendments Act of 2000, H.R. 4870, 106th Cong. (2000), which 
clearly limits the parties who may file an inter partes request for 
reexamination to be third parties other than the patent owner. 
Accordingly, the Office does not agree with the comment that the 
statute permits a patent owner to file an inter partes reexamination 
request.
    In the interest of being consistent with the statute, the phrase 
``other than the patent owner or its privies'' has been deleted from 
the section. The change is being made solely for the purpose of more 
closely following the language of the statute.
    New 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). 
Section 1.915(b) indicates what each request for inter partes 
reexamination must include. The requirements are analogous to the 
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. 
Section 1.915(c) indicates that requests for an inter partes 
reexamination may be filed by attorneys or agents on behalf of a third 
party requester, but it is noted that the real party in interest must 
be identified. Section 1.915(d) provides that if the request for inter 
partes reexamination does not meet all the requirements of 
Sec. 1.915(b), the third party requester may be given an opportunity to 
complete the inter partes reexamination request to avoid having the 
proceeding vacated. One comment was received directed to this section.
    Comment: The comment noted that Sec. 1.915(b)(8) requires any 
person requesting inter partes reexamination to specify the ``real 
party in interest'' in a statement. The comment asks whether this 
language coupled with the requirement of Sec. 1.915(c) prohibits an 
attorney filing the request from being the real party in interest.
    Response to Comment: Section 1.915(c) requires an attorney or agent 
who files a request for inter partes reexamination on behalf of another 
party to have a power of attorney or to be acting in a representative 
capacity under Sec. 1.34(a). Section 1.915(c) does not preclude an 
attorney from filing a request for inter partes reexamination on behalf 
of himself or herself as the real party in interest. The section is 
adopted as proposed.
    New 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. No 
comment was received on this section. It is adopted as proposed.
    New 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 three months of the filing date of the request. One 
comment was received directed to this section.
    Comment: The comment notes that section 4607 of S. 1948 provides 
that a third party who requests inter partes reexamination is estopped 
from challenging at a later time, in any civil action, any fact 
determined ``during the process of'' such reexamination. Section 1.923 
provides that if the examiner determines no substantial new question of 
patentability is present, the examiner will deny the request and not 
order reexamination. The comment argues that facts determined in the 
decision ordering or denying reexamination are not facts determined 
``during the process of'' such reexamination because a decision denying 
reexamination is not a decision made after full submission of all of 
the evidence and arguments. The comment suggests that the following 
sentence should be added at the end of the section in order to clearly 
point this out: ``Such determination does not constitute a finding of 
fact under the estoppel provisions of Section 4607.''
    Response to Comment: Whether or not facts determined in deciding to 
deny or order reexamination are facts ``determined during the process 
of such reexamination'' is a question to be answered by the Federal 
courts. By statute, the estoppel arises in a civil action, not in an 
Office proceeding. The comment is not adopted, and the section is 
adopted as proposed.
    New 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. No comment was received on this section. It is adopted as 
proposed.
    New Sec. 1.927 provides for review by petition to the Commissioner 
of a decision denying inter partes reexamination. No comment was 
received on this section. It is adopted as proposed.
    New Sec. 1.931 provides for ordering inter partes reexamination 
where a substantial new question of patentability has been found 
pursuant to Sec. 1.923. Section 1.931(b) places a limitation on the 
selection of the examiner by the Office in that the same examiner whose 
decision denying inter partes reexamination was reversed on petition 
filed under Sec. 1.927 ordinarily will not conduct the inter partes 
reexamination ordered in the decision granting the petition. No comment 
was received on this section. It is adopted as proposed.
    New Sec. 1.933 covers the duty of disclosure by a patent owner in 
an inter partes reexamination proceeding. The rule provides that the 
patent owner's duty in an inter partes reexamination proceeding is the 
same as the duty in an ex parte reexamination proceeding set forth in 
Sec. 1.555(a) and (b), and is satisfied by filing a paper in compliance

[[Page 76766]]

with Sec. 1.555(a) and (b). In addition, Sec. 1.933(b) is being amended 
to preclude the examiner from independently raising and noting issues 
relating to patent owner's compliance with its duty of disclosure. In 
this regard, Sec. 1.933(b) is being amended by changing the phrase ``If 
questions of compliance with this section are discovered during a 
reexamination proceeding, * * *'' to now read ``If questions of 
compliance with this section are raised by the patent owner or third 
party requester during a reexamination proceeding, * * *'' It would not 
be appropriate for the examiner sua sponte to raise issues directed to 
the issue of patent owner's compliance with its duty of disclosure 
which may not be resolved in the reexamination. No comment was received 
on this section. It is adopted as amended.
    New Sec. 1.935 provides that the initial Office action on the 
merits will usually accompany the inter partes reexamination order. 
When reexamination is ordered, the initial paper from the examiner will 
normally comprise two parts. The first part will address the issue as 
to whether the cited art raises a substantial new question of 
patentability (SNQ). If the examiner determines that the prior art does 
raise an SNQ, reexamination will be ordered. In this situation, a 
second part of the initial Office action would usually be issued, which 
would address the patentability issues and will constitute the first 
Office action on the merits. If the examiner determines that the cited 
art does not raise an SNQ, reexamination is denied. No patentability 
question would be addressed by the examiner. One comment was received 
directed to this section. (This comment was also addressed to 
Sec. 1.945 relating to patent owner's response to Office actions. The 
discussion below relates to both Secs. 1.935 and 1.945.)
    Comment: The comment notes that if the examiner refuses to adopt a 
ground of rejection proposed by the third party, the patent owner is 
not required to address this issue prior to the appeal stage. 
Consequently, if the refusal to adopt the ground of rejection is 
reversed on appeal to the Board of Patent Appeals and Interferences 
(Board), at that time the patent owner is given an opportunity to amend 
the claim. The comment suggests that, prior to the appeal stage, the 
patent owner should be required to respond to all of the issues raised 
by the requester. The comment points out that if this suggestion is 
implemented, the opportunity for amendment after the Board decision and 
the need for remand would then become unnecessary, even if the Board 
adopts any ground proposed by the third party requester.
    Response to Comment: The patent owner has no legal compulsion to 
amend a claim based solely on a ground of rejection raised by the third 
party requester. Only after the ground of rejection is adopted by the 
examiner or the Board of Patent Appeals and Interferences must the 
patent owner consider amending the claim. The comment is not adopted, 
and Sec. 1.935 is adopted as proposed. (See discussion of Sec. 1.945.) 
New Sec. 1.937 covers the basic items relating to the conduct of inter 
partes reexamination proceedings. Section 1.937(a) provides that, in 
accordance with 35 U.S.C. 314(c), unless otherwise provided by the 
Commissioner for good cause, all inter partes reexamination proceedings 
will be conducted with special dispatch. Section 1.937(b) provides that 
all inter partes reexamination proceedings will be conducted according 
to the procedures established for initial examination under 
Secs. 1.104-1.116. These proceedings will generally follow the 
procedures for examining patent applications. Section 1.937(c) provides 
that all communications between the Office and the parties to the inter 
partes reexamination which are directed to the merits of the proceeding 
must be in writing and filed with the Office for entry into the record 
of the proceeding. No comment was received on this section. It is 
adopted as proposed.
    New Sec. 1.939 provides for the return of unauthorized papers filed 
in an inter partes reexamination, and provides that, unless otherwise 
authorized, no paper shall be filed, by any party, in an inter partes 
reexamination before the initial Office action on the merits. No 
comment was received on this section. It is adopted as proposed.
    New 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)-(k) and 1.943. No comment was received 
on this section. It is adopted as proposed.
    New Sec. 1.943(a) provides that the form of responses, briefs, 
appendices, and other papers must be in accordance with Sec. 1.52. 
Section 1.943(b) establishes page limits for responses by the patent 
owner and written comments by the third party requester (other than 
briefs). Amendments, appendices of claims, and reference materials such 
as prior art references would not be included in the page count. 
Section 1.943(c) provides for page limits and total word limits for 
briefs. No comment was received on this section. It is adopted as 
proposed.
    New Sec. 1.945 provides that a patent owner will be given at least 
30 days to respond to any Office action on the merits. While the Office 
ordinarily intends to set a two-month period for the patent owner to 
respond to an Office action on the merits, the minimum period set will 
always be at least 30 days. One comment was received directed to this 
section. This comment was also addressed to Sec. 1.935 relating to the 
patent owner's response to the initial Office action. The comment is 
not adopted, and Sec. 1.945 is adopted as proposed.
    New 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 if those comments are received in the 
Office within a period of 30 days from the date of service of the 
patent owner's response. Since 35 U.S.C. 314(b)(3) statutorily imposes 
this period for third party requester comments, this time period cannot 
be extended. Thus, any third party comments received in the Office 
after expiration of 30 days from the date of service of the patent 
owner's response shall be considered to be untimely and unauthorized, 
and thus will be returned to the third party in accordance with 
Sec. 1.939. Three comments were received directed to this section.
    Comments: The first and second comments suggest that it will be 
difficult for a foreign third party requester to timely comment within 
a period of 30 days from the date of service of the patent owner's 
response. The first comment suggests that a third party comment period 
of 60 days should be set. The second comment suggests that some way 
should be devised for receiving a substantial extension to the 30-day 
period.
    The third comment suggests that it is unfair for the patent owner 
to not be able to respond to the third party comments and thereby have 
the last word. The comment suggests that the patent owner should have 
the right of last comment.
    Response to Comments: As to the first comment, the statute (35 
U.S.C. 314(b)(3)) specifically requires that the third party requester 
comments be received by the Office within 30 days after the date of 
service of the patent owner's response to an Office action. The rules 
cannot provide a period for comments that would give the third party 
more time to comment than that explicitly stated in the statute.
    As to the second comment, because the statute specifically requires 
that third party requester comments be received by the Office within 30 
days

[[Page 76767]]

after the date of service of a patent owner's response to the Office 
action, the rules cannot extend the period for comments in order to 
give the third party more time in which to file the written comments. 
The Office recognizes the shortness of this time period. While no 
relief can be granted by enlarging or extending the statutory 30-day 
period, a measure of relief has been granted to the third party 
requester in that the rule is being amended to provide that the date of 
Office ``receipt'' of third party requester comments will be construed 
to be the date of mailing if the provisions of Sec. 1.8 are complied 
with when submitting the written comments.
    As to the third comment, providing the patent owner with an 
opportunity to reply to third party comments would unduly prolong the 
pendency of the proceeding, contrary to the ``special dispatch'' 
required by 35 U.S.C. 314(c). It should also be noted that an owner 
response to the third party comments could be considered a 
(supplemental) patent owner response to the Office action which would 
trigger a further right to third party comment under 35 U.S.C. 
316(b)(3) and thus create an endless cycle. The comments are not 
adopted. The rule is adopted as proposed, but amended as indicated 
above.
    New Sec. 1.948 provides that 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 Secs. 1.947 or 1.951(b), and are limited to: 
(1) Prior art necessary to rebut a finding of fact made by the 
examiner; (2) prior art necessary to rebut a position taken by the 
patent owner in a response; or (3) prior art which for the first time 
became known or available to the third party requester after the filing 
of the inter partes request for reexamination where a discussion of the 
pertinency of each reference to the patentability of at least one claim 
is included. Limiting later filed prior art submissions to newly 
discovered or newly available prior art (except when used for rebuttal 
purposes) will encourage the third party requester to submit all known 
pertinent prior art along with the initial request for inter partes 
reexamination. Later submission of previously known or available prior 
art would only be permissible to rebut a position taken by the examiner 
or the patent owner, or through the filing of an ex parte reexamination 
request which, if ordered, would be merged with the inter partes 
reexamination proceeding.
    Permitting the third party requester to timely submit newly 
discovered or previously unavailable prior art during the inter partes 
reexamination proceeding will obviate the need for the third party 
requester to file an ex parte request for reexamination. To prevent 
harassment of the patent owner due to frequent submissions of prior art 
citations during a reexamination proceeding, such submissions may only 
be filed together with written comments by the third party requester in 
response to a patent owner response to an Office action on the merits, 
or after an action closing prosecution. No comment was received on this 
section. The conjunction ``and'' has been replaced by ``or'' in the 
recitation ``Secs. 1.947, 1.951(a), or 1.951(d)'' for grammatical 
clarity. The reference to Sec. 1.951(a) has been deleted and 
Sec. 1.951(d) has been changed to Sec. 1.951(b) to reflect the changes 
made to Sec. 1.951 pursuant to the comments. The section is adopted as 
amended.
    New Sec. 1.949 provides for the close of prosecution on the second 
or subsequent Office action which precedes a final action, a final 
rejection and/or a final decision favorable to patentability. The 
distinction between a final action and an action closing prosecution is 
important, since appeal rights to the Board of Patent Appeals and 
Interferences under 35 U.S.C. 134 (b) and (c) mature only with a final 
action. One comment was received directed to this section.
    Comment: The comment suggests that the examiner should be precluded 
from closing prosecution whenever a new ground of rejection is made, 
irrespective of whether a prior amendment made the new ground 
necessary. The comment argues that a reexamination is different from an 
application where the applicant is permitted to refile the application 
and introduce new claims, evidence and argument, because the patent 
owner in a reexamination cannot abandon the reexamination and file a 
continuing proceeding.
    Response to Comment: The third party request for reexamination sets 
forth the grounds of rejections raised by the third party requester. 
The initial Office action on the merits addresses the grounds and 
arguments raised in the request, and sets forth the examiner's grounds 
of rejection including those raised by the third party requester and 
those raised by the examiner. The Office action also includes the 
examiner's reasons for not adopting other grounds of rejection proposed 
by the third party requester. Patent owner may consider and respond to 
the initial Office action, and provide amended claims ranging from the 
broadest claim patent owner considers to be patentable over the prior 
art to the narrowest claim patent owner is willing to accept. Thus, 
prior to the close of prosecution, the issues are well developed, 
patent owner is aware of the issues and positions of the third party 
requester and the examiner, and patent owner has the right to present 
evidence and argument in light of the third party arguments and the 
examiner's rejections and to present amended claims. While patent owner 
may not refile a reexamination after the close of prosecution and 
``start over'' as can be done in a regular application after a final 
rejection, the reexamination rules do not leave the patent owner 
without any relief at this stage of the proceeding. In this regard, 
after the close of prosecution the patent owner may file comments and/
or amendments under Sec. 1.951 which will be governed by the standards 
of Sec. 1.116. Under Sec. 1.116(c), amendments may be admitted upon a 
showing of good and sufficient reasons why they are necessary and were 
not earlier presented. This strikes a balance between timely presenting 
amendments and providing relief when warranted. It also provides for an 
orderly and timely proceeding under the special dispatch requirement of 
the statute. In addition, the statute does not preclude the patent 
owner from filing an ex parte request for reexamination with amended 
claims and/or new evidence. Once ordered, the reexamination proceedings 
would be merged, and the newly submitted material would be addressed in 
the merged proceeding. The comment is not adopted, and the section is 
adopted as proposed.
    New Sec. 1.951 sets forth the options available to the parties 
after an Office action closing prosecution. Under Sec. 1.951(a), the 
patent owner may once file comments limited to issues raised in the 
action closing prosecution, which comments may also include proposed 
amendments (subject to the criteria of Sec. 1.116 as to whether or not 
the amendments shall be admitted). Under Sec. 1.951(b), when the patent 
owner does file comments, the third party requester may once file 
comments in response to the patent owner's comments. One comment was 
received directed to this section.
    Comment: Section 1.951 as proposed in the Notice of Proposed 
Rulemaking included subsections (a)-(d). Proposed subsection (a) 
permitted the third party requester to once file comments limited to 
issues raised in the action closing prosecution. Proposed subsection 
(b) permitted the patent owner to once file comments in response to the 
third party requester's comments. Simultaneously to the filing of these 
submissions, proposed subsection (c) permitted the

[[Page 76768]]

patent owner to once file comments limited to issues raised in the 
action closing prosecution, and proposed subsection (d) permitted the 
third party requester to once file comments in response to the patent 
owner's comments. The comment suggests that the comments filed by the 
third party requester under proposed Sec. 1.951(a) after the close of 
prosecution do not comply with the statute because they are not filed 
in reply to a patent owner's response to an Office action on the 
merits. The comment asserts that such ``direct'' requester comments are 
not consistent with the statute as the statute makes it clear that the 
third party requester's right to comment only matures with the filing 
of a patent owner response to an Office action on the merits, and 
nowhere in the statute does it permit third party requester comments 
without there first being a patent owner response.
    Response to Comment: The comment has been adopted. Proposed 
subsection (a) which permitted the third party requester to once file 
comments limited to issues raised in the action closing prosecution, 
and proposed subsection (b) which permitted the patent owner to once 
file comments in response to the third party requester comments have 
been deleted. Proposed subsections (c) and (d) have been re-named (a) 
and (b), respectively. The purpose of proposed subsections (a) and (b) 
was to provide the third party requester an opportunity to better focus 
the issues prior to filing an appeal. Such issues may now be addressed 
by the requester after appeal in the appellant brief which, if 
persuasive, will result in the examiner adopting requester's arguments 
and reopening prosecution, if appropriate. While waiting until after 
appeal to permit ``direct'' third party requester arguments may result 
in protracting the proceeding, such direct third party input is 
consistent with the statute which permits the third party requester to 
appeal any final decision favorable to patentability, and be a party to 
any appeal taken by the patent owner to the Board of Patent Appeals and 
Interferences. 35 U.S.C. 315(a) and (b). The comment is adopted as 
amended.
    New Sec. 1.953 provides for issuance of a right of appeal notice. 
Section 1.953(a) provides that, following the responses or expiration 
of the time for response in 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. 
Section 1.953(b) provides that any time after the initial Office action 
on the merits in an inter partes reexamination, the patent owner and 
all third party requesters may stipulate that the issues are 
appropriate for a final action, which would include a final rejection 
and/or a final decision favorable to patentability, and may request the 
issuance of a right of appeal notice. If the examiner determines that 
no other issues are present or should be raised, a right of appeal 
notice limited to the identified issues shall be issued. The request 
for an expedited notice will enable the parties to accelerate the inter 
partes reexamination proceeding. Section 1.953(c) provides that the 
right of appeal notice shall be a final action, which would include a 
final rejection and/or a final decision favorable to patentability, and 
prohibits amendments under Sec. 1.116 in response to the right of 
appeal notice. The right of appeal notice shall set a one-month time 
period for either party to appeal. If no appeal is filed, the 
reexamination proceeding will be terminated, and the Commissioner will 
proceed to issue a certificate under Sec. 1.997 in accordance with the 
right of appeal notice. No comment was received on this section. It is 
adopted as proposed.
    New Sec. 1.955 provides that interviews which discuss the merits of 
the proceeding will not be permitted in inter partes reexamination 
proceedings. Thus, in an inter partes reexamination proceeding, no 
separate ex parte interviews will be permitted, and no inter partes 
interviews will be permitted; nor will an informal amendment be 
accepted as that would be tantamount to an ex parte interview. All 
communications between the Office and the patent owner which are 
directed to the merits of the proceeding must be in writing and filed 
with the Office for entry into the record of the proceeding. The Office 
has reconsidered its initial position, taken in the August 11, 1995, 
Notice of Proposed Rulemaking, to permit owner-initiated interviews in 
which the patent owner and the third party requester would participate. 
Accordingly, neither the patent owner nor the third party requester in 
an inter partes reexamination is permitted to initiate, or participate 
in, an ex parte interview or an inter partes interview which discusses 
the merits of the proceeding. Four comments were received directed to 
this section.
    Comments: The first comment asserts that because the inter partes 
reexamination may result in the cancellation of patent claims or the 
estoppel of one or more third party defenses in a civil action, the 
examiner should have access to all matters that may be necessary to 
reach a decision, including the testimony of experts, particularly in 
the face of cross-examination. Further, the comment suggests that the 
patent owner is forced into an inter partes reexamination and should 
not be deprived of patent rights without due process of law. The 
comment suggests that interviews should be provided during which each 
party should be permitted to present its case orally to the examiner, 
to present its experts and to question the other party and the other 
party's experts in front of the examiner, and that the examiner, in 
turn, should have the opportunity to question both parties and their 
experts.
    The second comment recognizes the concerns of the Office but 
concludes that since the rule could be waived in appropriate 
circumstances, the rule does not amount to an absolute prohibition. The 
comment suggests interviews be permitted, particularly if they could be 
handled through the assistance of a special group of legal advisors 
trained in conducting inter partes hearings. The comment further 
suggests a rule be imposed that any oral or electronic contact with 
Office officials responsible for an inter partes proceeding be handled 
through a conference call with all relevant parties represented.
    The third comment suggests that it is unnecessary to ban interviews 
across the board because an interview can be useful to help the 
examiner understand the points of contention, particularly so when the 
art is complex. If the presence of a third party requester would 
complicate the interview, the examiner could simply interview the 
parties separately. The comment suggests that since there are usually 
severely conflicting interests between the patent owner and the third 
party requester, the interview should be limited to deepening the 
examiner's understanding of the technology and to clarifying points of 
contention; the examiner should be prohibited from discussing amendment 
proposals.
    The fourth comment suggests that while the prohibition against 
interviews would seem to be quite beneficial to the third party 
requester, a countervailing problem for the examiner and the patent 
owner will be an inability of the examiner to resolve complex 
technological issues by direct questions and answers (in an interview). 
The comment suggests that guidelines to the examiner on how to address 
such issues in the form of written questions should

[[Page 76769]]

be provided in the Manual of Patent Examining Procedure (MPEP).
    Response to Comments: The comments suggest various formats for 
providing an interview including: a formal hearing format, interview 
oversight by trained legal advisors, conference calls, separate 
interviews for both parties, and limitations on the examiner from 
discussing amendments during an interview. While the suggested formats 
would tend to ease the problems associated with inter partes 
interviews, the remaining problems would still outweigh the benefits of 
an interview on the merits. No matter what the structure of the 
interview, the presence of a third party requester (or a separate 
interview with the requester) will complicate the reexamination 
proceeding and significantly delay it. Past history has shown inter 
partes interviews to be both resource intensive and unwieldy. Inter 
partes interviews are difficult to arrange, conduct, and control. 
Inevitable interaction between the patent owner's representative and 
its experts, the third party's representative and its experts, the 
examiner, and the ``senior level official'' would be difficult to 
regulate and control. Recording the substance of the interview would be 
difficult, and providing cross-transcripts would result in delay and 
complications. In addition, the time to arrange and conduct the 
interview would greatly extend the inter partes proceeding time line, 
which would be clearly contrary to the ``special dispatch'' required by 
35 U.S.C. 314(c) for the inter partes reexamination proceeding. The 
suggestion as to providing guidelines on instructing the examiner on 
how to draft written questions is a matter to be addressed in a future 
MPEP revision. The comments are not adopted, and the section is adopted 
as proposed.
    New 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. No comment was received on this section. It is adopted as 
proposed.
    New 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. Sections 1.957(b) and (c) relate 
to the patent owner's failure to timely or appropriately respond in 
inter partes reexamination proceedings. In this event, if no claims are 
found patentable, the proceeding shall be terminated and a 
reexamination certificate shall be issued. If claims are found 
patentable, further prosecution shall be limited to the patentable 
claims, and any additional claims that do not expand the scope of the 
patentable claims. New Sec. 1.957(d) provides that when the action by 
the patent owner is a bona fide attempt to respond and to advance the 
case, and is substantially a complete response to the Office action, 
but consideration of some matter or compliance with some requirement 
has been inadvertently omitted, an opportunity to explain and supply 
the omission may be given. No comment was received on this section. It 
is adopted as proposed.
    New 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. New 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). No comment was 
received on this section. It is adopted as proposed.
    New 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. No comment was received 
on this section. It is adopted as proposed.
    New 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. No comment was received on this 
section. It is adopted as proposed.
    New Sec. 1.962 relates to the definition of appellant and 
respondent in inter partes reexamination proceedings. No comment was 
received on this section. It is adopted as proposed.
    New Sec. 1.963 relates to the time periods for filing briefs in 
inter partes reexamination proceedings. No comment was received on this 
section. It is adopted as proposed.
    New Sec. 1.965 relates to the requirements of the appellant brief 
in inter partes reexamination proceedings. No comment was received on 
this section. It is adopted as proposed.
    New Sec. 1.967 relates to the requirements of the respondent brief 
in inter partes reexamination proceedings. No comment was received on 
this section. It is adopted as proposed.
    New 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. One comment was received directed to 
this section.
    Comment: The comment questioned whether the examiner's answer 
should be optional especially when the appeal is by the patent owner.
    Response to Comment: Although Sec. 1.969(a) indicates that an 
examiner's answer ``may'' be furnished, common practice as set out in 
the procedure of the Manual of Patent Examining Procedure, is to 
furnish an examiner's answer. When an appeal goes forward, an 
examiner's answer will be mandatory. If the examiner, however, changes 
his or her position to issue a new ground of rejection or (when the 
third party participates in the appeal) to make a new finding of 
patentability, an examiner's answer would not be issued and prosecution 
would be reopened. The word ``may'' is used to cover those situations 
where prosecution is reopened and an examiner's answer is not issued. 
The word ``may'' does not authorize an examiner to send a proceeding to 
the Board of Patent Appeals and Interferences without issuing an 
examiner's answer. Section 1.969(c) is being modified by deleting 
``Where a third party requester is a party to the appeal'' and a new 
Sec. 1.969(d) is being added which provides clarification that any new 
ground of rejection or new determination not to make a proposed 
rejection must be made in an action reopening prosecution in accordance 
with the discussion of proposed Sec. 1.969 in the notice of proposed 
rulemaking. The comment is not adopted and the section is adopted as 
modified in new Sec. 1.969(d).
    New 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

[[Page 76770]]

and/or in any respondent brief. The rebuttal brief filed by an 
appellant who is a third party requester is limited to the issues 
raised in the examiner's answer and/or in the patent owner's respondent 
brief. The rebuttal brief of a third party requester may not be 
directed to the respondent brief of any other third party requester. No 
new ground of rejection can be proposed by a third party requester 
appellant. One comment was received directed to this section.
    Comment: The comment, notes that the time for filing the rebuttal 
brief is within one month of the examiner's answer and suggests that 
since the examiner's answer is not required by the rules, tying one 
deadline date to another date for an event that may never occur may 
create a problem.
    Response to Comment: Although Sec. 1.969(a) indicates that an 
examiner's answer ``may'' be furnished, common practice as set out in 
the procedure of the Manual of Patent Examining Procedure, is to 
furnish an examiner's answer. When an appeal goes forward, an 
examiner's answer will be mandatory. See the discussion set forth in 
response to the comment on Sec. 1.969 above. The comment is not adopted 
and the section is adopted as proposed.
    New Sec. 1.973 relates to the oral hearing in inter partes 
reexamination proceedings. One comment was received directed to this 
section.
    Comment: The comment points out that the request for oral hearing 
may be filed ``within one month of the examiner's answer,'' and that 
the rules provide that the examiner ``may'' issue an examiner's answer 
under 1.969(a). The comment questions what happens if the examiner does 
not issue an examiner's answer? The comment suggests the rule should be 
modified to provide that a request for oral hearing be due ``within two 
months after the date of the examiner's answer or the period within 
which the examiner's answer must be furnished.''
    Response to Comment: Although Sec. 1.969(a) indicates that an 
examiner's answer ``may'' be furnished, common practice as set out in 
the procedure of the Manual of Patent Examining Procedure, is to 
furnish an examiner's answer. When an appeal goes forward, an 
examiner's answer will be mandatory. See the discussion set forth in 
response to the comment on Sec. 1.969 above. The comment is not adopted 
and the section is adopted as proposed.
    New Sec. 1.975 relates to affidavits or declarations after appeal 
in inter partes reexamination proceedings. No comment was received on 
this section. It is adopted as proposed.
    New Sec. 1.977 relates to the decision by the Board of Patent 
Appeals and Interferences (Board) in inter partes reexamination 
proceedings. This section generally tracks Sec. 1.196 which governs the 
Board's decision in an appeal in an application. Section 1.977(a) 
provides that a reversal of an examiner's decision favorable to 
patentability (i.e., the reversal of the examiner's decision not to 
make a rejection proposed by the third party requester) constitutes a 
decision adverse to patentability which will be set forth as a new 
ground of rejection under Sec. 1.977(b). Section Sec. 1.977 as set 
forth in the notice of proposed rulemaking included a Sec. 1.977(c) 
which permitted the Board to include a statement that a claim may be 
allowable in amended form if newly revised as proposed by the Board. 
Proposed Sec. 1.977(c), however, has been deleted in light of the 
comment and discussion that follows.
    Comment: The comment notes that under 1.977(c), as proposed, the 
Board of Patent Appeals and Interferences (Board) may suggest an 
amendment for allowing a claim. The comment suggests that procedures 
would be too complicated to implement in the inter partes proceeding.
    Response to Comment: The comment is adopted. Providing for patent 
owner and third party comment on a Board determination of the 
patentability of a hypothetical amended claim appears to be unduly 
complicated so late in the proceedings. Section 1.977(c) as proposed in 
the notice of proposed rulemaking has been deleted. Sections 1.977(d)-
(h) as proposed in the notice of proposed rulemaking have been 
redesignated Secs. 1.977(c)-(g), respectively, and references to these 
subsections in other sections have been revised to reflect these 
changes.
    New 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. No comment was received on this 
section. It is adopted as proposed.
    New 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. No comment was 
received on this section. It is adopted as proposed.
    New 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 35 U.S.C. 141, the patent owner in 
inter partes reexamination proceedings may appeal the decision of the 
Board of Patent Appeals and Interferences only to the United States 
Court of Appeals for the Federal Circuit. Under 35 U.S.C. 134(c), the 
third party requester in inter partes reexamination proceedings may not 
appeal the decision of the Board of Patent Appeals and Interferences. 
No comment was received on this section. It is adopted as proposed.
    New Sec. 1.985 relates to notification of prior or concurrent 
proceedings in inter partes reexamination proceedings. Section 1.985(a) 
requires the patent owner to notify the Office of any prior or 
concurrent proceeding involving the patent under inter partes 
reexamination. Section 1.985(b) permits any member of the public to 
notify the Office of any prior or concurrent proceeding involving the 
patent under inter partes reexamination. Such notice, however, must be 
limited to merely providing notice without discussion of the issues in 
the inter partes reexamination. Any notice that includes a discussion 
of the issues will be returned to the sender. No comment was received 
on this section. It is adopted as proposed.
    New Sec. 1.987 provides that when a patent involved in an inter 
partes reexamination is concurrently involved in litigation, the 
Commissioner shall determine whether or not to suspend the inter partes 
reexamination proceeding. No comment was received on this section. It 
is adopted as proposed.
    New Sec. 1.989 relates to the merger of concurrent reexamination 
proceedings. One comment was received directed to this section.
    Comment: The comment suggests that if a third party requester in an 
inter partes reexamination files a subsequent ex parte reexamination 
request, the proceedings should not be merged, but rather the ex parte 
reexamination should be stayed. The comment argues that a third party 
requester in an inter partes reexamination should not be permitted to 
end-run the prohibition of 35 U.S.C. 317(a) (which prohibits a 
subsequent inter partes reexamination during the pendency of an ongoing 
inter partes reexamination) by filing a subsequent ex parte 
reexamination request.
    Response to Comment: As to the suggestion that the subsequent ex 
parte reexamination be stayed, this would be in direct violation of the 
special dispatch requirement of the ex parte reexamination statute. 
Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988). 
Moreover, the filing of an ex parte reexamination request by an inter 
partes third party requester is not an ``end-run'' of the prohibition 
of 35 U.S.C. 317(a), because the two

[[Page 76771]]

proceedings are of a different nature, and thus, the filing of the ex 
parte reexamination is not the same as the filing of a second inter 
partes reexamination. The comment is not adopted and the section is 
adopted as proposed.
    New Sec. 1.991 relates to the merger of a concurrent reissue 
application and an inter partes reexamination proceeding. Two comments 
were received directed to this section.
    Comments: The first comment suggests that if the patent owner is 
permitted to request an interview in a merged reissue and inter partes 
reexamination, then the third party requester should be permitted to do 
so equally as well.
    The second comment notes that the third party requester is 
permitted by rule in a merged reexamination and reissue to participate 
to the extent permitted by the reexamination rules and be limited to 
issues within the scope of inter partes reexamination. The comment 
questions whether this is realistic and asks (1) whether this 
limitation precludes a third party from acting as a protestor in the 
merged reissue application regarding the full scope of issues raised in 
the merged proceeding; and (2) since the patent owner filed the 
reissue, why should the third party be precluded from participating as 
a protestor? The comment suggests a better approach would be to permit 
the third party to comment on any issue, so long as it was in accord 
with the procedures adopted for the conduct of the merged proceeding 
for third parties or protestors.
    Response to Comments: The first comment suggests that if the patent 
owner is permitted to request an interview in a merged reissue and 
inter partes reexamination, the Office should also permit the third 
party requester to initiate an interview in the merged proceeding. The 
suggestion is moot, since the patent owner will not be permitted to 
request an interview in a merged reissue and inter partes reexamination 
for the reasons set forth in the discussion of Sec. 1.955 above.
    As to the second comment, the rule does not preclude the third 
party requester from filing a protest under Sec. 1.291 in the reissue 
application in the merged proceeding directed to any issue, including 
issues other than those relating to patent and printed publications. 
Such protests would be governed by the procedures adopted for 
protestors set forth in Chapter 1900 of the Manual of Patent Examining 
Procedure (MPEP). Participation in issues raised under Sec. 1.291 will 
be governed by Sec. 1.291 and the procedures adopted for protestors in 
MPEP 1901 through 1907. To the extent that the second comment would 
permit the third party requester to ``comment'' (as opposed to filing a 
protest) on any issue, so long as it was in accord with the procedures 
adopted for the conduct of the merged proceeding for third parties or 
protestors, the comment will not be adopted. The right to file a 
protest is limited as stated in MPEP chapter 1900. Thus, the permitted 
challenge to the patent on ``any issue'' is limited. To permit third 
party requester ``comments'' on ``any issue'' would increase the 
pendency of the proceeding contrary to special dispatch required by the 
statute, and would permit harassment of the patent owner on ``any 
issue'' in ways that the Chapter 1900 limitations on protest 
submissions are designed to prevent (i.e., multiple submissions on the 
same issue). The comments are not adopted.
    New Sec. 1.993 relates to the suspension of a concurrent 
interference or an inter partes reexamination proceeding. No comment 
was received on this section. It is adopted as proposed.
    New Sec. 1.995 relates to the third party requester's participation 
rights being preserved in a merged proceeding. No comment was received 
on this section. It is adopted as proposed.
    New 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 canceled 
all of the patent claims has been issued will be terminated. This 
provides a degree of assurance to the public that patents with all the 
claims canceled via inter partes reexamination proceedings will not 
again be asserted. No comment was received on this section. It is 
adopted as proposed.

Classification

Regulatory Flexibility Act

    The Chief Counsel for Regulation of the Department of Commerce 
certified to the Chief Counsel for Advocacy, Small Business 
Administration, that the changes in this notice will not have a 
significant impact on a substantial number of small entities 
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). This rulemaking 
implements the provisions of title IV, subtitle F (Secs. 4601 through 
4608) of the American Inventors Protection Act of 1999, which permits a 
third party requester to participate more extensively during the 
reexamination proceeding as well as giving them appeal rights. The 
changes in this notice will provide procedures for a third party to 
request optional inter partes reexamination of a patent. The new inter 
partes proceedings are similar to the ex parte proceedings, although 
they are more complicated procedurally to accommodate the presence of 
the third party.
    Taking into account the overall similarities and additional 
complexity, it is reasonable to assume that a similar proportion of 
small entities will request inter partes reexamination as have 
requested ex parte reexamination. Furthermore, it is anticipated that 
inter partes reexamination requests will be filed by third party 
requesters, while patent owners will continue to file ex parte 
reexamination requests. Approximately 400 ex parte reexamination 
filings have been received each year since 1992, of which 55 percent or 
220 have been filed by third party requesters. Since the beginning of 
the reexamination procedure, about 22.5 percent of the ex parte 
reexamination requesters have been small entities. If all 220 of the 
third party-filed reexamination requests were filed as requests for 
inter partes reexaminations, approximately 50 requests (22.5%) would 
come from small entities. The higher cost of the inter partes 
reexamination fee ($8,800) compared to the ex parte reexamination fee 
($2,520) reflects the greatly expanded participation available to the 
third party requester. In the inter partes proceeding, the third party 
requester has the right to comment on every response by the patent 
owner to the USPTO, to be a party to any appeal by the patent owner to 
the Board of Patent Appeals and Interferences, and to appeal any 
determination of patentability to the Board of Patent Appeals and 
Interferences. In the ex parte proceeding, the third party requester's 
role is limited to the request for reexamination and a single reply to 
the patent owner's response. The third party requester also has no 
appeal rights in an ex parte reexamination. Therefore, the number of 
small businesses affected by these proposed optional inter parte 
reexamination rules is not significant, and the impact on each 
business,

[[Page 76772]]

considering the benefits of greater participation throughout the inter 
partes proceeding, is not significant.

Executive Order 13132

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

Executive Order 12866

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

Paperwork Reduction Act

    This notice of rulemaking involves information collection 
requirements which are subject to review by the Office of Management 
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 
3501 et seq.). The collection of information involved in this notice of 
rulemaking has been reviewed and previously approved by OMB under OMB 
control number 0651-0033.
    As required by the Paperwork Reduction Act of 1995 (44 U.S.C. 
3507(d)), the U.S. Patent and Trademark Office has submitted an 
information collection package to OMB for its review and approval of 
the proposed information collections under OMB control number 0651-
0033. The U.S. Patent and Trademark Office is submitting this 
information collection to OMB for its review and approval because this 
notice of rulemaking will add the request for optional inter partes 
reexamination of a patent to that collection.
    The title, description, and respondent description of the 
information collection is shown below with an estimate of the annual 
reporting burdens. Included in this estimate is the time for reviewing 
instructions, gathering and maintaining the data needed, and completing 
and reviewing the collection of information. The principal impact of 
the changes in this notice of rulemaking is to implement the changes to 
Office practice necessitated by title IV, subtitle F (Secs. 4601 
through 4608) of the American Inventors Protection Act of 1999 (enacted 
into law by Sec. 1000(a)(9), division B, of Public Law 106-113).
    OMB Number: 0651-0033.
    Title: Post Allowance and Refiling.
    Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
    Type of Review: Approved through September of 2000.
    Affected Public: Individuals or Households, Business or Other 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, Office of Patent Legal 
Administration, U.S. Patent and Trademark Office, Washington, D.C. 
20231, or to the Office of Information and Regulatory Affairs of OMB, 
New Executive Office Building, 725 17th St. NW, Room 10235, Washington, 
DC 20503, Attention: Desk Officer for the U.S. Patent and Trademark 
Office.
    Notwithstanding any other provision of law, no person is required 
to respond to or shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

    For the reasons set out in the preamble and under the authority 
given to the Commissioner of Patents and Trademarks by 35 U.S.C. 
2(b)(2), part 1 of title 37 CFR is amended as set forth below.

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.


    2. Section 1.4(a)(2) is revised to read as follows:


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 revised to read as follows:


Sec. 1.6  Receipt of Correspondence.

* * * * *
    (d) * * *
    (5) A request for reexamination under Sec. 1.510 or Sec. 1.913;
* * * * *
    4. Section 1.20(c) is 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. 1.510(a))--$2,520.00
    (2) For filing a request for inter partes reexamination 
(Sec. 1.915(a))--$8,800.00
* * * * *
    5. Section 1.25(b) is 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 
a particular paper filed. An

[[Page 76773]]

authorization to charge a fee to a deposit account will not be 
considered payment of the fee on the date the authorization to charge 
the fee is effective as to the particular fee to be charged unless 
sufficient funds are present in the account to cover the fee. An 
authorization to charge fees under Sec. 1.16 in an application 
submitted under Sec. 1.494 or Sec. 1.495 will be treated as an 
authorization to charge fees under Sec. 1.492. An authorization to 
charge fees set forth in Sec. 1.18 to a deposit account is subject to 
the provisions of Sec. 1.311(b). 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 in a patent may also be filed with the request for 
reexamination.
    6. Section 1.26(c) is revised to read as follows:


Sec. 1.26  Refunds.

* * * * *
    (c) If the Commissioner 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. The reexamination requester 
should indicate the form in which any refund should be made (e.g., by 
check, electronic funds transfer, credit to a deposit account, etc.). 
Generally, reexamination refunds will be issued in the form that the 
original payment was provided.
    7. Section 1.112 is revised to read as follows:


Sec. 1.112  Reconsideration before final action.

    After reply by applicant or patent owner (Sec. 1.111 or Sec. 1.945) 
to a non-final action and any comments by an inter partes reexamination 
requester (Sec. 1.947), the application or the patent under 
reexamination will be reconsidered and again examined. The applicant, 
or in the case of a reexamination proceeding the patent owner and any 
third party requester, will be notified if claims are rejected, 
objections or requirements made, or decisions favorable to 
patentability are made, in the same manner as after the first 
examination (Sec. 1.104). Applicant or patent owner may reply to such 
Office action in the same manner provided in Sec. 1.111 or Sec. 1.945, 
with or without amendment, unless such Office action indicates that it 
is made final (Sec. 1.113) or an appeal (Sec. 1.191) has been taken 
(Sec. 1.116), 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).
    8. Section 1.113(a) is 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. 1.114 or 
Sec. 1.116. Petition may be taken to the Commissioner in the case of 
objections or requirements not involved in the rejection of any claim 
(Sec. 1.181). Reply to a final rejection or action must comply with 
Sec. 1.114 or paragraph (c) of this section. For final actions in an 
inter partes reexamination filed under Sec. 1.913, see Sec. 1.953.
* * * * *
    9. Sections 1.116(b) and (d) are revised to read as follows:


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

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


Sec. 1.121  Manner of making amendments.

* * * * *
    (i) Amendments in reexamination proceedings: Any proposed amendment 
to the description and claims in patents involved in reexamination 
proceedings in both ex parte reexaminations filed under Sec. 1.510 and 
inter partes reexaminations filed under Sec. 1.913 must be made in 
accordance with Sec. 1.530(d)-(j).
    11. Sections 1.136(a)(2) and (b) are 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 
affect any extension under this paragraph. In no situation can any 
extension carry the date on which reply is due beyond the maximum time 
period set by statute. See 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

[[Page 76774]]

Sec. 1.956 for extensions of time in inter partes reexamination 
proceedings.
* * * * *
    12. Sections 1.181(a) and (c) are revised to read as follows:


Sec. 1.181  Petition to the Commissioner.

    (a) Petition may be taken to the Commissioner:
    (1) From any action or requirement of any examiner in the ex parte 
prosecution of an application, or in the ex parte or inter partes 
prosecution of a reexamination proceeding which is not subject to 
appeal to the Board of Patent Appeals and Interferences or to the 
court;
    (2) In cases in which a statute or the rules specify that the 
matter is to be determined directly by or reviewed by the Commissioner; 
and
    (3) To invoke the supervisory authority of the Commissioner in 
appropriate circumstances. For petitions in interferences, see 
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 Commissioner to furnish a written statement, within a 
specified time, setting forth the reasons for his or her decision upon 
the matters averred in the petition, supplying a copy to the 
petitioner.
* * * * *
    13. Section 1.191(a) is revised to read as follows:


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 1.198 are not applicable to appeals in inter 
partes reexamination proceedings filed under Sec. 1.913.
* * * * *
    14. Section 1.301 is 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 Commissioner (see 
Secs. 1.302 and 1.304); and in the Court, file a copy of the notice of 
appeal and pay the fee for appeal as provided by the rules of the 
Court. For inter partes reexamination proceedings filed under 
Sec. 1.913, Sec. 1.983 is controlling.
    15. Section 1.303 is amended by revising paragraphs (a) and (b) and 
by adding a new paragraph (d) to read as follows:


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.
    16. Sections 1.304(a)(1) and (a)(2) are 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) Fourteen days after service of the notice of appeal or the 
summons and complaint; or
    (ii) Two months after the date of decision of the Board of Patent 
Appeals and Interferences, whichever is later.
    (2) The time periods set forth in this section are not subject to 
the provisions of Sec. 1.136, Sec. 1.550(c), Sec. 1.956, or 
Sec. 1.645(a) or (b).
* * * * *
    17. The section heading for subpart D is revised to read as 
follows:

Subpart D--Ex Parte Reexamination of Patents

* * * * *
    18. Section 1.501 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.501  Citation of prior art in patent files.

    (a) At any time during the period of enforceability of a patent, 
any person may cite, to the Office in writing, prior art consisting of 
patents or printed publications which that person states to be 
pertinent and applicable to the patent and believes to have a bearing 
on the patentability of any claim of the patent. If the citation is 
made by the patent owner, the explanation of pertinency and 
applicability may include an explanation of how the claims differ from 
the prior art. Such citations shall be entered in the patent file 
except as set forth in Secs. 1.502 and 1.902.
* * * * *

[[Page 76775]]

    19. New Sec. 1.502 is added to read as follows:


Sec. 1.502  Processing of prior art citations during an ex parte 
reexamination proceeding.

    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 and reexamination files during an inter partes 
reexamination proceeding filed under Sec. 1.913.
    20. The undesignated center heading immediately preceding 
Sec. 1.510 is revised as follows:
Request for Ex Parte Reexamination
    21. Section 1.510 is amended by revising its heading and paragraph 
(a) to read as follows:


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).
* * * * *
    22. Section 1.515 is amended by revising its heading and the text 
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, will become a 
part of the official file of the patent, and will be mailed to the 
patent owner at the address as provided for in Sec. 1.33(c) and to the 
person requesting reexamination.
    (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 Commissioner 
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.
    23. Section 1.520 is amended by revising its heading and the text 
to read as follows:


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

    The Commissioner, at any time during the period of enforceability 
of a patent, may determine whether or not a substantial new question of 
patentability is raised by patents or printed publications which have 
been discovered by the Commissioner or which have been brought to the 
Commissioner's attention, even though no request for reexamination has 
been filed in accordance with Sec. 1.510 or Sec. 1.913. The 
Commissioner 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 Commissioner undertake reexamination 
on his own initiative will not be considered. Any determination to 
initiate ex parte reexamination under this section will become a part 
of the official file of the patent and will be mailed to the patent 
owner at the address as provided for in Sec. 1.33(c).
    24. The undesignated center heading following Sec. 1.520 is revised 
to read as follows:
Ex Parte Reexamination
    25. Section 1.525 is amended by revising its heading and the text 
of paragraphs (a) and (b) to read as follows:


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.
    26. Section 1.530 is amended by revising its heading and paragraphs 
(a), (b), (c), (d) introductory text, and (l) to read as follows:


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

    (a) Except as provided in 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) Making amendments in a reexamination proceeding. A proposed 
amendment in an ex parte or an inter partes reexamination proceeding is 
made by filing a paper directing that proposed specified changes be 
made to the patent specification, including the claims, or to the 
drawings. An amendment paper directing that proposed specified changes 
be made in a reexamination proceeding may be submitted as an 
accompaniment to a request filed by the patent owner in accordance with 
Sec. 1.510(e), as part of a patent owner statement in accordance with 
paragraph (b) of this section, or, where permitted, during the 
prosecution of the reexamination proceeding pursuant to Sec. 1.550(a) 
or Sec. 1.937.
* * * * *
    (l) Correction of inventorship in an ex parte or inter partes 
reexamination proceeding.
    (1) When it appears in a patent being reexamined that the correct 
inventor or inventors were not named through error without deceptive 
intention on the part

[[Page 76776]]

of the actual inventor or inventors, the Commissioner may, on petition 
of all the parties set forth in Sec. 1.324(b)(1)-(3), including the 
assignees, and satisfactory proof of the facts and payment of the fee 
set forth in Sec. 1.20(b), or on order of a court before which such 
matter is called in question, include in the reexamination certificate 
to be issued under Sec. 1.570 or Sec. 1.977 an amendment naming only 
the actual inventor or inventors. The petition must be submitted as 
part of the reexamination proceeding and must satisfy the requirements 
of Sec. 1.324.
    (2) Notwithstanding the preceding paragraph (1)(1) of this section, 
if a petition to correct inventorship satisfying the requirements of 
Sec. 1.324 is filed in a reexamination proceeding, and the 
reexamination proceeding is terminated other than by a reexamination 
certificate under Sec. 1.570 or Sec. 1.977, a certificate of correction 
indicating the change of inventorship stated in the petition will be 
issued upon request by the patentee.
    27. Section 1.535 is revised to read as follows:


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.
    28. Section 1.540 is 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.
    29. Section 1.550 is 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, 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. In 
response to any rejection, such response may include further statements 
and/or proposed amendments or new claims to place the patent in a 
condition where all claims, if amended as proposed, would be 
patentable.
    (c) The time for taking any action by a patent owner in an ex parte 
reexamination proceeding will be extended only for sufficient cause and 
for a reasonable time specified. Any request for such extension must be 
filed on or before the day on which action by the patent owner is due, 
but in no case will the mere filing of a request effect any extension. 
See 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 Commissioner 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 Commissioner that the delay was unavoidable; 
a petition to accept an 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 Sec. 1.510 or Sec. 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).
    30. Section 1.552 is 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 consider the advisability of filing a reissue 
application to have such issues considered and resolved.
    31. Section 1.555 is amended by revising its heading and paragraph 
(c) to read as follows:


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

* * * * *
    (c) The responsibility for compliance with this section rests upon 
the individuals designated in paragraph (a) of this section and no 
evaluation will be made by the Office in the reexamination proceeding 
as to compliance with this section. If questions of compliance with 
this section are raised by the patent owner or the third party 
requester during a reexamination proceeding, they will be noted as 
unresolved questions in accordance with Sec. 1.552(c).
    32. Section 1.560 is revised to read as follows:

[[Page 76777]]

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 Commissioner. Interviews for the discussion of the 
patentability of claims in patents involved in ex parte reexamination 
proceedings will not be conducted prior to the first official action. 
Interviews should be arranged in advance. Requests that reexamination 
requesters participate in interviews with examiners will not be 
granted.
    (b) In every instance of an interview with an examiner in an ex 
parte reexamination proceeding, a complete written statement of the 
reasons presented at the interview as warranting favorable action must 
be filed by the patent owner. An interview does not remove the 
necessity for response to Office actions as specified in 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.
    33. Section 1.565 is 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 must inform the Office of any prior or concurrent 
proceedings in which the patent is or was involved such as 
interferences, reissues, ex parte reexaminations, inter partes 
reexaminations, or litigation and the results of such proceedings. See 
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 Commissioner 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 in the prior ex 
parte reexamination proceeding has not been terminated, the ex parte 
reexamination proceedings will be consolidated and result in the 
issuance of a single certificate under 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 Commissioner may suspend the 
reexamination or the interference. The Commissioner 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.
    34. The undesignated center heading following Sec. 1.565 is revised 
to read as follows:
Ex Parte Reexamination Certificate
    35. Section 1.570 is 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 
Commissioner will issue an ex parte reexamination certificate in 
accordance with 35 U.S.C. 307 setting forth the results of the ex parte 
reexamination proceeding and the content of the patent following the ex 
parte reexamination proceeding.
    (b) An ex parte reexamination certificate will be issued in each 
patent in which an ex parte reexamination proceeding has been ordered 
under 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 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.
    36. A new subpart H is added to read as follows:

Subpart H--Inter Partes Reexamination of Patents That Issued From an 
Original Application Filed in the United States on or After November 
29, 1999

Sec.    

Prior Art Citations

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

Requirements for Inter Partes Reexamination Proceedings

1.903   Service of papers on parties in inter partes reexamination.
1.904   Notice of inter partes reexamination in Official Gazette.
1.905   Submission of papers by the public in inter partes 
reexamination.
1.906   Scope of reexamination in inter partes reexamination 
proceeding.

[[Page 76778]]

1.907   Inter partes reexamination prohibited.
1.913   Persons eligible to file request for inter partes 
reexamination.
1.915   Content of request for inter partes reexamination.
1.919   Filing date of request for inter partes reexamination.
1.923   Examiner's determination on the request for inter partes 
reexamination.
1.925   Partial refund if request for inter partes reexamination is 
not ordered.
1.927   Petition to review refusal to order inter partes 
reexamination.

Inter Partes Reexamination of Patents

1.931   Order for inter partes reexamination.

Information Disclosure in Inter Partes Reexamination

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

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

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

Interviews Prohibited in Inter Partes Reexamination

1.955   Interviews prohibited in inter partes reexamination 
proceedings.

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

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

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

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

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

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

Concurrent Proceedings Involving Same Patent in InterPartes 
Reexamination

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

Reexamination Certificate in Inter Partes Reexamination

1.997   Issuance of inter partes reexamination certificate.

Subpart H--Inter Partes Reexamination of Patents That Issued From 
an Original Application Filed in the United States on or After 
November 29, 1999

Prior Art Citations


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 Sec. 1.915 or 
Sec. 1.948 will be entered in the inter partes reexamination file. The 
entry in the patent file of other citations submitted after the date of 
an order for reexamination pursuant to 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. See Sec. 1.502 for processing of prior 
art citations in patent and reexamination files during an ex parte 
reexamination proceeding filed under Sec. 1.510.
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 the public in inter partes 
reexamination.

    Unless specifically provided for, no submissions on behalf of any 
third parties other than third party requesters as defined in 35 U.S.C. 
100(e) will be considered unless such submissions are in accordance 
with 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

[[Page 76779]]

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


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


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

    Except as provided for in Sec. 1.907, any person may, at any time 
during the period of enforceability of a patent which issued from an 
original application filed in the United States on or after November 
29, 1999, file a request for inter partes reexamination by the Office 
of any claim of the patent on the basis of prior art patents or printed 
publications cited under 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 forth 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) through (3) of this section, 
accompanied by an English language translation of all the necessary and 
pertinent parts of any non-English language document.
    (5) A copy of the entire patent including the front face, drawings, 
and specification/claims (in double column format) for which 
reexamination is requested, and a copy of any disclaimer, certificate 
of correction, or reexamination certificate issued in the patent. All 
copies must have each page plainly written on only one side of a sheet 
of paper.
    (6) A certification by the third party requester that a copy of the 
request has been served in its entirety on the patent owner at the 
address provided for in 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 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 subsection 1.915(b), the person identified as requesting inter 
partes reexamination may be so notified and given an opportunity to 
complete the formal requirements of the request within a specified 
time. Failure to comply with the notice may result in the inter partes 
reexamination proceeding being vacated.


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, 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 
Commissioner underSec. 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

[[Page 76780]]

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 raised by the patent owner or the third party 
requester 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 
Commissioner makes a determination that there is good cause for 
suspending the reexamination proceeding.
    (b) The inter partes reexamination proceeding will be conducted in 
accordance with 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)-(k) 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. 1.52.
    (b) Responses by the patent owner and written comments by the third 
party requester shall not exceed 50 pages in length, excluding 
amendments, appendices of claims, and reference materials such as prior 
art references.
    (c) Appellant's briefs filed by the patent owner and the third 
party requester shall not exceed thirty pages or 14,000 words in 
length, excluding appendices of claims and reference materials such as 
prior art references. All other briefs filed by any party shall not 
exceed fifteen pages in length or 7,000 words. If the page limit for 
any brief is exceeded, a certificate is required stating the number of 
words contained in the brief.


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

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


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 pursuant to Sec. 1.945, a third party requester may once 
file written comments within a period of 30 days from the date of 
service of the patent owner's response. These comments shall be limited 
to issues raised by the Office action or the patent owner's response. 
The time for submitting comments by the third party requester may not 
be extended. For the purpose of filing the written comments by the 
third party requester, the comments will be considered as having been 
received in the Office as of the date of deposit specified in the 
certificate under Sec. 1.8.


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

    (a) After the inter partes reexamination order, the third party 
requester may only cite additional prior art as defined under 
Sec. 1.501 if it is filed as part of a comments submission under 
Sec. 1.947 or Sec. 1.951(b) and is limited to prior art:
    (1) which is necessary to rebut a finding of fact by the examiner;
    (2) which is necessary to rebut a response of the patent owner; or
    (3) which for the first time became known or available to the third 
party requester after the filing of the request for inter partes 
reexamination proceeding. Prior art submitted under paragraph (a)(3) of 
this section must be accompanied by a statement as to when the prior 
art first became known or available to the third party requester and 
must include a discussion of the pertinency of each reference to the 
patentability of at least one claim.
    (b) [Reserved].


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 a determination of patentability of all claims, the examiner shall 
issue an Office action treating all claims present in the inter partes 
reexamination, which may be an action closing prosecution. The Office 
action shall set forth all rejections and determinations not to make a 
proposed rejection, and the grounds therefor. An Office action will not 
usually close prosecution if it

[[Page 76781]]

includes a new ground of rejection which was not previously addressed 
by the patent owner, unless the new ground was necessitated by an 
amendment.


Sec. 1.951  Options after Office action closing prosecution in inter 
partes reexamination.

    (a) After an Office action closing prosecution in an inter partes 
reexamination, the patent owner may once file comments limited to the 
issues raised in the Office action closing prosecution. The comments 
can include a proposed amendment to the claims, which amendment will be 
subject to the criteria of 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.
    (b) When the patent owner does file comments, a third party 
requester may once file comments responsive to the patent owner's 
comments within 30 days from the date of service of patent owner's 
comments on the third party requester.


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 
comprises a final rejection setting forth each ground of rejection and/
or final decision favorable to patentability including each 
determination not to make a proposed rejection, an identification of 
the status of each claim, and the reasons for decisions favorable to 
patentability and/or the grounds of rejection for each claim. No 
amendment can be made in response to the Right of Appeal Notice. The 
Right of Appeal Notice shall set a one-month time period for either 
party to appeal. If no notice of appeal is filed, the inter partes 
reexamination proceeding will be terminated, and the Commissioner will 
proceed to issue a certificate under 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 be no interviews in an inter partes reexamination 
proceeding which discuss the merits of the proceeding.
Extensions of Time, Termination of Proceedings, and Petitions To Revive 
in Inter Partes Reexamination


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 Commissioner 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 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 Commissioner that the delay was unavoidable. 
A grantable 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 be accepted if the delay was unintentional. A grantable 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, 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

[[Page 76782]]

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, 
proposed amended, or new claim of the patent.
    (c) The notice of appeal or cross appeal in an inter partes 
reexamination proceeding must identify the appealed claim(s) and must 
be signed by the patent owner, the third party requester, or their duly 
authorized attorney or agent.
    (d) An appeal or cross appeal, when taken, must be taken from all 
the rejections of the claims in a Right of Appeal Notice which the 
patent owner proposes to contest or from all the determinations 
favorable to patentability, including any final determination not to 
make a proposed rejection, in a Right of Appeal Notice which a third 
party requester proposes to contest. Questions relating to matters not 
affecting the merits of the invention may be required to be settled 
before an appeal is decided.
    (e) The times for filing a notice of appeal or cross appeal may not 
be extended.


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 Commissioner may sua sponte order the inter partes 
reexamination proceeding remanded to the examiner for action consistent 
with the Commissioner'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's brief of the patent owner, or the patent 
owner responding under Sec. 1.967 to the appellant's brief of any third 
party requester. No third party requester may be a respondent to the 
appellant brief of any other third party requester.


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

    (a)An appellant's brief in an inter partes reexamination must be 
filed no later than two months from the latest filing date of the last-
filed notice of appeal or cross appeal or, if any party to the inter 
partes reexamination is entitled to file an appeal or cross appeal but 
fails to timely do so, the expiration of time for filing (by the last 
party entitled to do so) such notice of appeal or cross appeal. The 
time for filing an appellant's brief may not be extended.
    (b) Once an appellant's brief has been properly filed, any brief 
must be filed by respondent within one month from the date of service 
of the appellant's brief. The time for filing a respondent's brief may 
not be extended.
    (c) The examiner will consider both the appellant's and 
respondent's briefs and may prepare an examiner's answer under 
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's 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) A party's appeal shall stand dismissed upon failure of that 
party to file an appellant's brief, accompanied by the requisite fee, 
within the time allowed.
    (c) The appellant's brief shall contain the following items under 
appropriate headings and in the order indicated below, unless the brief 
is filed by a party who is not represented by a registered 
practitioner. The brief may include an appendix containing only those 
portions of the record on which reliance has been made.
    (1) Real Party in Interest. A statement identifying the real party 
in interest.
    (2) Related Appeals and Interferences. A statement identifying by 
number and filing date all other appeals or interferences known to the 
appellant, the appellant's legal representative, or assignee which will 
directly affect or be directly affected by or have a bearing on the 
decision of the Board of Patent Appeals and Interferences in the 
pending appeal.
    (3) Status of Claims. A statement of the status of all the claims, 
pending or canceled. If the appellant is the patent owner, the 
appellant must also identify the rejected claims whose rejection is 
being appealed. If the appellant is a third party requester, the 
appellant must identify the claims that the examiner has made a 
determination favorable to patentability, which determination is being 
appealed.
    (4) Status of Amendments. A statement of the status of any 
amendment filed subsequent to the close of prosecution.
    (5) Summary of Invention. A concise explanation of the invention or 
subject matter defined in the claims involved in the appeal, which 
shall refer to the specification by column and line number, and to the 
drawing(s), if any, by reference characters.
    (6) Issues. A concise statement of the issues presented for review. 
No new ground of rejection can be proposed by a third party requester 
appellant.
    (7) Grouping of Claims. If the appellant is the patent owner, for 
each ground of rejection in the Right of Appeal Notice which appellant 
contests and which applies to a group of two or more claims, the Board 
of Patent Appeals and Interferences shall select a single claim from 
the group and shall decide the appeal as to the ground of rejection on 
the basis of that claim alone unless a statement is included that the 
claims of the group do not stand or fall together; and, in the argument 
under paragraph (c)(8) of this section, appellant explains why the 
claims of this group are believed to be separately patentable. Merely 
pointing out differences in what the claims cover is not an argument as 
to why the claims are separately patentable.
    (8) Argument. The contentions of appellant with respect to each of 
the issues presented for review in paragraph (c)(6) of this section, 
and the bases therefor, with citations of the

[[Page 76783]]

authorities, statutes, and parts of the record relied on. Each issue 
should be treated under a separate, numbered heading.
    (i) For each rejection under 35 U.S.C. 112, first paragraph, or for 
each determination favorable to patentability, including a 
determination not to make a proposed rejection under 35 U.S.C. 112, 
first paragraph, which appellant contests, the argument shall specify 
the errors in the rejection or the determination and how the first 
paragraph of 35 U.S.C. 112 is complied with, if the appellant is the 
patent owner, or is not complied with, if the appellant is a third 
party requester, including, as appropriate, how the specification and 
drawing(s), if any,
    (A) Describe, if the appellant is the patent owner, or fail to 
describe, if the appellant is a third party requester, the subject 
matter defined by each of the appealed claims; and
    (B) Enable, if the appellant is the patent owner, or fail to 
enable, if the appellant is a third party requester, any person skilled 
in the art to make and use the subject matter defined by each of the 
appealed claims.
    (ii) For each rejection under 35 U.S.C. 112, second paragraph, or 
for each determination favorable to patentability including a 
determination not to make a proposed rejection under 35 U.S.C. 112, 
second paragraph, which appellant contests, the argument shall specify 
the errors in the rejection, if the appellant is the patent owner, or 
the determination, if the appellant is a third party requester, and how 
the claims do, if the appellant is the patent owner, or do not, if the 
appellant is a third party requester, particularly point out and 
distinctly claim the subject matter which the inventor regards as the 
invention.
    (iii) For each rejection under 35 U.S.C. 102 or for each 
determination favorable to patentability including a determination not 
to make a proposed rejection under 35 U.S.C. 102 which appellant 
contests, the argument shall specify the errors in the rejection, if 
the appellant is the patent owner, or determination, if the appellant 
is a third party requester, and why the appealed claims are, if the 
appellant is the patent owner, or are not, if the appellant is a third 
party requester, patentable under 35 U.S.C. 102, including any specific 
limitations in the appealed claims which are or are not described in 
the prior art.
    (iv) For each rejection under 35 U.S.C. 103 or for each 
determination favorable to patentability, including a determination not 
to make a proposed rejection under 35 U.S.C. 103 which appellant 
contests, the argument shall specify the errors in the rejection, if 
the appellant is the patent owner, or determination, if the appellant 
is a third party requester. If appropriate, also state the specific 
limitations in the appealed claims which are or are not described in 
the prior art and explain how such limitations render the claimed 
subject matter obvious, if the appellant is a third party requester, or 
unobvious, if the appellant is the patent owner, over the prior art. If 
the rejection or determination is based upon a combination of 
references, the argument shall explain why the references, taken as a 
whole, do or do not suggest the claimed subject matter. The argument 
should include, as may be appropriate, an explanation of why features 
disclosed in one reference may or may not properly be combined with 
features disclosed in another reference. A general argument that all 
the limitations are or are not described in a single reference does not 
satisfy the requirements of this paragraph.
    (v) For any rejection other than those referred to in paragraphs 
(c)(8)(i) to (iv) of this section or for each determination favorable 
to patentability, including any determination not to make a proposed 
rejection other than those referred to in paragraphs (c)(8)(i) to (iv) 
of this section which appellant contests, the argument shall specify 
the errors in the rejection, if the appellant is the patent owner, or 
determination, if the appellant is a third party requester, and the 
specific limitations in the appealed claims, if appropriate, or other 
reasons, which cause the rejection or determination to be in error.
    (9) Appendix. An appendix containing a copy of the claims appealed 
by the appellant.
    (10) Certificate of Service. A certification that a copy of the 
brief has been served in its entirety on all other parties to the 
reexamination proceeding. The names and addresses of the parties served 
must be indicated.
    (d) If a brief is filed which does not comply with all the 
requirements of paragraph (c) of this section, appellant will be 
notified of the reasons for 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.


Sec. 1.967  Respondent's brief in inter partes reexamination.

    (a) Respondent(s) in an inter partes reexamination appeal may once, 
within the time limit for filing set forth in 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 state 
the authorities and arguments on which respondent will rely. Any 
arguments or authorities not included in the brief will be refused 
consideration by the Board of Patent Appeals and Interferences, unless 
good cause is shown. The respondent brief shall be limited to issues 
raised in the appellant brief to which the respondent brief is 
directed. A third party respondent brief may not address any brief of 
any other third party.
    (b) The respondent brief shall contain the following items under 
appropriate headings and in the order here indicated, and may include 
an appendix containing only those portions of the record on which 
reliance has been made.
    (1) Real Party in Interest. A statement identifying the real party 
in interest.
    (2) Related Appeals and Interferences. A statement identifying by 
number and filing date all other appeals or interferences known to the 
respondent, the respondent's legal representative, or assignee (if any) 
which will directly affect or be directly affected by or have a bearing 
on the decision of the Board of Patent Appeals and Interferences in the 
pending appeal.
    (3) Status of claims. A statement accepting or disputing 
appellant's statement of the status of claims. If appellant's statement 
of the status of claims is disputed, the errors in appellant's 
statement must be specified with particularity.
    (4) Status of amendments. A statement accepting or disputing 
appellant's statement of the status of amendments. If appellant's 
statement of the status of amendments is disputed, the errors in 
appellant's statement must be specified with particularity.
    (5) Summary of invention. A statement accepting or disputing 
appellant's summary of the invention or subject matter defined in the 
claims involved in the appeal. If appellant's summary of the invention 
or subject matter defined in the claims involved in the appeal is 
disputed, the errors in appellant's summary must be specified.
    (6) Issues. A statement accepting or disputing appellant's 
statement of the issues presented for review. If

[[Page 76784]]

appellant's statement of the issues presented for review is disputed, 
the errors in appellant's statement must be specified. A counter 
statement of the issues for review may be made. No new ground of 
rejection can be proposed by a third party requester respondent.
    (7) Argument. A statement accepting or disputing the contentions of 
the appellant with each of the issues. If a contention of the appellant 
is disputed, the errors in appellant's argument must be specified, 
stating the basis therefor, with citations of the authorities, 
statutes, and parts of the record relied on. Each issue should be 
treated under a separate heading. An argument may be made with each of 
the issues stated in the counter statement of the issues, with each 
counter-stated issue being treated under a separate heading. The 
provisions of Sec. 1.965 (c)(8)(iii) and (iv) of these regulations 
shall apply to any argument raised under 35 U.S.C. 102 or sec. 103.
    (8) Certificate of Service. A certification that a copy of the 
respondent brief has been served in its entirety on all other parties 
to the reexamination proceeding. The names and addresses of the parties 
served must be indicated.
    (c) If a respondent brief is filed which does not comply with all 
the requirements of paragraph (b) of this section, respondent will be 
notified of the reasons for non-compliance and provided with a non-
extendable period of one month within which to file an amended brief. 
If the respondent does not file an amended brief during the one-month 
period, or files an amended brief which does not overcome all the 
reasons for non-compliance stated in the notification, the respondent 
brief will not be considered.


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


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. 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, as well as the primary examiner. The notice shall set a 
non-extendable period within which all requests for oral hearing shall 
be submitted by any other party to the appeal desiring to participate 
in the oral hearing. A hearing will be held as stated in the notice, 
and oral argument will be limited to thirty minutes for each appellant 
and respondent who has requested an oral hearing, and twenty minutes 
for the primary examiner unless otherwise ordered before the hearing 
begins. No appellant or respondent will be permitted to participate in 
an oral hearing unless he or she has requested an oral hearing and 
submitted the fee set forth in 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

[[Page 76785]]

Appeals and Interferences makes a new ground of rejection, the patent 
owner, within one month from the date of the decision, must exercise 
one of the following two options with respect to the new ground of 
rejection to avoid termination of the appeal proceeding as to the 
rejected claim:
    (1) The patent owner may submit an appropriate amendment of the 
claim so rejected or a showing of facts relating to the claim, or both.
    (2) The patent owner may file a request for rehearing of the 
decision of the Board of Patent Appeals and Interferences under 
Sec. 1.979(a).
    (c) Where the patent owner has responded under paragraph (b)(1) of 
this section, any third party requester, within one month of the date 
of service of the patent owner response, may once file comments on the 
response. Such written comments must be limited to the issues raised by 
the decision of the Board of Patent Appeals and Interferences and the 
patent owner's response. Any third party requester that had not 
previously filed an appeal or cross appeal and is seeking under this 
subsection to file comments or a reply to the comments is subject to 
the appeal and brief fees under Sec. 1.17(b) and (c), respectively, 
which must accompany the comments or reply.
    (d) Following any response by the patent owner under paragraph 
(b)(1) of this section and any written comments from a third party 
requester under paragraph (c) of this section, the reexamination 
proceeding will be remanded to the examiner. The statement of the Board 
of Patent Appeals and Interferences shall be binding upon the examiner 
unless an amendment or showing of facts not previously of record be 
made which, in the opinion of the examiner, overcomes the new ground of 
rejection. The examiner will consider any response under paragraph 
(b)(1) of this section and any written comments by a third party 
requester under paragraph (c) of this section and issue a determination 
that the rejection should be maintained or has been overcome.
    (e) Within one month of the examiner's determination pursuant to 
paragraph (d) of this section, the patent owner or any third party 
requester may once submit comments in response to the examiner's 
determination. Within one month of the date of service of comments in 
response to the examiner's determination, any party may file a reply to 
the comments. No third party requester reply may address the comments 
of any other third party requester reply. Any third party requester 
that had not previously filed an appeal or cross appeal and is seeking 
under this subsection to file comments or a reply to the comments is 
subject to the appeal and brief fees under Sec. 1.17(b) and (c), 
respectively, which must accompany the comments or reply.
    (f) After submission of any comments and any reply pursuant to 
paragraph (e) of this section, or after time has expired, the 
reexamination proceeding will be returned to the Board of Patent 
Appeals and Interferences which shall reconsider the matter and issue a 
new decision. The new decision will incorporate the earlier decision, 
except for those portions specifically withdrawn.
    (g) The time period set forth in paragraph (b) of this section is 
subject to the extension of time provisions of Sec. 1.956. The time 
periods set forth in paragraphs (c) and (e) of this section 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
    (4) The new decision of the Board of Patent Appeals and 
Interferences under Sec. 1.977(f).
    (b) Within one month of the date of service of any request for 
rehearing under paragraph (a) of this section, or any further request 
for rehearing under paragraph (c) of this section, any party to the 
appeal may once file comments in opposition to the request for 
rehearing or the further request for rehearing. The comments in 
opposition must be limited to the issues raised in the request for 
rehearing or the further request for rehearing.
    (c) If a party to an appeal files a request for rehearing under 
paragraph (a) of this section, or a further request for rehearing under 
this section, the Board of Patent Appeals and Interferences will issue 
a decision on rehearing. This decision is deemed to incorporate the 
earlier decision, except for those portions specifically withdrawn. If 
the decision on rehearing becomes, in effect, a new decision, and the 
Board of Patent Appeals and Interferences so states, then any party to 
the appeal may, within one month of the new decision, file a further 
request for rehearing of the new decision under this subsection.
    (d) Any request for rehearing shall state the points believed to 
have been misapprehended or overlooked in rendering the decision and 
also state all other grounds upon which rehearing is sought.
    (e) The patent owner may not appeal to the U.S. Court of Appeals 
for the Federal Circuit under 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 
Sec. 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 Sec. 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 Commissioner 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 Commissioner, and then only for the

[[Page 76786]]

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.

    (a) The patent owner in a reexamination proceeding who is 
dissatisfied with the decision of the Board of Patent Appeals and 
Interferences may, subject to 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 Commissioner 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 Commissioner 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 and prosecution 
in the prior inter partes reexamination proceeding has not been 
terminated, a decision may be made to merge the two proceedings or to 
suspend one of the two proceedings. Where merger is ordered, the merged 
examination will normally result in the issuance of a single 
reexamination certificate under 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 through 1.997, except that the rights of any third party 
requester of the ex parte reexamination shall be governed by 
Secs. 1.510 through 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 through 1.997, 
except that such participation shall be limited to issues within the 
scope of inter partes reexamination. The examiner's actions and any 
responses by the patent owner or third party requester in a merged 
proceeding will apply to both the reissue application and the inter 
partes reexamination proceeding and be physically entered into both 
files. Any inter partes reexamination proceeding merged with a reissue 
application shall be terminated by the grant of the reissued patent.


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 Commissioner may suspend the 
inter partes reexamination or the interference. The Commissioner will 
not consider a request to suspend an interference unless a motion under 
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.

[[Page 76787]]

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 Commissioner will issue a certificate in accordance 
with 35 U.S.C. 316 setting forth the results of the inter partes 
reexamination proceeding and the content of the patent following the 
inter partes reexamination proceeding.
    (b) A certificate will be issued in each patent in which an inter 
partes reexamination proceeding has been ordered under 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 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: November 21, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 00-30425 Filed 12-6-00; 8:45 am]
BILLING CODE 3510-16-P