[Federal Register Volume 68, Number 245 (Monday, December 22, 2003)]
[Rules and Regulations]
[Pages 70996-71009]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-31398]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: 2003-P-001]
RIN 0651-AB57


Changes to Implement the 2002 Inter Partes Reexamination and 
Other Technical Amendments to the Patent Statute

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The 21st Century Department of Justice Appropriations 
Authorization Act contains a title relating to intellectual property. 
The patent-related provisions in the intellectual property title of the 
21st Century Department of Justice Appropriations Authorization Act 
include provisions permitting a third party requester in an inter 
partes reexamination proceeding to appeal a final decision by the Board 
of Patent Appeals and Interferences (BPAI) to the U.S. Court of Appeals 
for the Federal Circuit (Federal Circuit), and to participate in the 
patent owner's appeal of a final decision by the BPAI to the Federal 
Circuit. The patent-related provisions of the 21st Century Department 
of Justice Appropriations Authorization Act also include technical 
amendments to the provisions directed to inter partes reexamination, 
18-month publication of patent applications and provisional rights, and 
issuance of patents. The United States Patent and Trademark Office 
(Office) is revising the rules of practice to implement the patent-
related provisions of the 21st Century Department of Justice 
Appropriations Authorization Act, and other miscellaneous changes

[[Page 70997]]

related to appeals in reexamination proceedings.

EFFECTIVE DATE: January 21, 2004.

FOR FURTHER INFORMATION CONTACT: Kenneth M. Schor or Gerald A. Dost, 
Senior Legal Advisors. Kenneth M. Schor may be contacted by telephone 
at (703) 308-6710; by mail addressed to: U.S. Patent and Trademark 
Office, Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 
1450, Alexandria, VA 22313-1450, marked to the attention of Kenneth M. 
Schor; by facsimile transmission to (703) 872-9408, marked to the 
attention of Kenneth M. Schor; or by electronic mail message over the 
Internet addressed to ken[email protected]. Gerald A. Dost may be 
contacted by telephone at (703) 305-8610; by mail addressed to: U.S. 
Patent and Trademark Office, Mail Stop Comments--Patents, Commissioner 
for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the 
attention of Gerald A. Dost; by facsimile transmission to (703) 308-
6916, marked to the attention of Gerald A. Dost; or by electronic mail 
message over the Internet addressed to [email protected].

SUPPLEMENTARY INFORMATION: The American Inventors Protection Act of 
1999 (AIPA), enacted on November 29, 1999, contained a number of 
changes to title 35, United States Code (U.S.C.). See Pub. L. 106-113, 
113 Stat. 1501, 1501A-552 through 1501A-591 (1999). The 21st Century 
Department of Justice Appropriations Authorization Act, enacted on 
November 2, 2002, contained technical corrections to the AIPA, as well 
as other technical amendments to title 35, U.S.C. See Pub. L. 107-273, 
116 Stat. 1758, 1899-1906 (2002). This final rule revises the rules of 
practice in title 37 CFR to implement the patent-related provisions of 
the 21st Century Department of Justice Appropriations Authorization Act 
(and other related miscellaneous changes).
    I. Third Party Requester Appeal Rights to United States Court of 
Appeals for the Federal Circuit: Optional inter partes reexamination 
was newly enacted in the AIPA. The AIPA provided that the patent owner 
in an inter partes reexamination could appeal a decision of the BPAI 
(adverse to patent owner) to the Federal Circuit. The third party 
requester of the inter partes reexamination, however, was specifically 
precluded from appealing a decision of the BPAI to the Federal Circuit. 
See 35 U.S.C. 134(c) as amended by the AIPA, 113 Stat. at 1501A-571. In 
addition, the AIPA did not permit the third party requester to be a 
party to (i.e., participate in) an appeal taken by the patent owner to 
the Federal Circuit.
    The Office published a final rule in December of 2000 revising the 
rules of practice in patent cases to implement the optional inter 
partes reexamination provisions of the AIPA. See Rules to Implement 
Optional Inter Partes Reexamination Proceedings, 65 FR 76755 (Dec. 7, 
2000), 1242 Off. Gaz. Pat. Office 12 (Jan. 2, 2001) (final rule). 
Section 1.983 is promulgated to codify in the rules of practice the 
patent owner's statutory right, under 35 U.S.C. 141, to appeal to the 
Federal Circuit in inter partes reexamination proceedings. Because the 
third-party requester of an inter partes reexamination was previously 
expressly precluded under 35 U.S.C. 134(c) (as amended by the AIPA) 
from appealing the decision of the BPAI to the Federal Circuit, the 
rules of practice did not previously provide for such an appeal. 
Likewise, because there was no authority in the statute for the third 
party requester to participate in an appeal taken by the patent owner 
to the Federal Circuit, no such provision of the rules was provided. 
Finally, because the third-party requester of an inter partes 
reexamination was precluded under 35 U.S.C. 134(c) (as amended by the 
AIPA) from appealing the decision of the BPAI to the Federal Circuit, 
no provision in the rules concerning patent owner participation in a 
third-party requester appeal was provided.
    Section 13106 of Public Law 107-273 now grants the inter partes 
reexamination third party requester the right to appeal an adverse 
decision of the BPAI to the Federal Circuit. See 35 U.S.C. 315(b)(1). 
It further authorizes the third party requester to be a party to any 
appeal taken by the patent owner to the Federal Circuit. See 35 U.S.C. 
315(b)(2). Moreover, section 13106 of Public Law 107-273 also permits 
the patent owner to be a party to an appeal taken by the third party 
requester to the Federal Circuit. This is so because 35 U.S.C. 
315(a)(2) as enacted by the AIPA states that the patent owner involved 
in an inter partes reexamination proceeding ``may be a party to any 
appeal taken by a third-party requester under subsection (b).'' 
Therefore, the Office is revising Sec.  1.983 to implement this 
statutory revision, and making conforming or ancillary amendments to 
Sec. Sec.  1.301, 1.304, and 1.979.
    II. Technical amendments to the inter partes reexamination 
provisions of the American Inventors Protection Act of 1999: Section 
13202 of Public Law 107-273 made technical corrections to statutory 
provisions directed to inter partes and ex parte reexamination. The 
Office is revising Sec. Sec.  1.191, 1.303, and 1.913 to address the 
inter partes and ex parte reexamination technical corrections.
    III. Other miscellaneous changes made to reexamination proceedings: 
Additionally, the Office is revising the inter partes reexamination 
rules to avoid the loss of appeal rights during appeals to the BPAI due 
to certain inadvertent errors on the part of the patent owner or third 
party requester. Further, the Office is revising the inter partes and 
ex parte reexamination appeal rules generally for clarity. These 
revisions are made in Sec. Sec.  1.302, 1.959, 1.965, 1.967, 1.971, and 
1.977.
    IV. Patent and Trademark Efficiency Act Amendments: Section 13203 
of Public Law 107-273 is directed to efficiency amendments to the 
statute. The Office is revising Sec.  1.13(b) to eliminate its 
requirement for an attestation for certified copies of documents, 
similar to the elimination of the attestation requirement in 35 U.S.C. 
153 as provided in section 13203(c) of Public Law 107-273.
    V. Technical amendment related to eighteen-month publication of 
applications and provisional rights: Sections 13204 and 13205 of Public 
Law 107-273 made technical corrections to provisions directed to the 
eighteen-month publication of patent applications and provisional 
rights, and the issuance of patents. The Office is revising Sec. Sec.  
1.14, 1.78, 1.417, and 1.495 to implement the statutory revisions made 
by these sections of Public Law 107-273.

Section-by-Section Discussion

    Section 1.1: Section 1.1(c) is amended to provide separate mail 
stops for ex parte reexamination proceedings and inter partes 
reexamination proceedings. Section 1.1(c) is amended to clarify that 
the mail stop for ex parte reexamination proceedings can only be used 
for the original request papers for ex parte reexamination. The new 
mail stop for inter partes reexamination includes both original request 
papers and all subsequent correspondence filed in the Office (other 
than correspondence to the Office of the General Counsel pursuant to 
Sec.  1.1(a)(3) and Sec.  1.302(c)). Correspondence relating to inter 
partes reexamination proceedings is best handled at one central 
location where Office personnel have specific expertise in inter partes 
reexamination because of the unique nature of inter partes 
reexamination proceedings.
    Section 1.13: Section 1.13(b) is amended to delete ``attested by an 
officer of the United States Patent and

[[Page 70998]]

Trademark Office authorized by the Director.'' Section 13203(c) of 
Public Law 107-273 eliminated the requirement in 35 U.S.C. 153 that the 
signature of the Director for issued patents be attested to by an 
officer of the Office. To achieve further efficiencies, certified 
copies of documents will no longer include an attestation for the 
Director's signature. Accordingly, Sec.  1.13(b) is amended to 
eliminate the requirement for an attestation for certified copies of 
documents.
    Section 1.14: Section 1.14(g)(2) is amended to correct the 
reference to ``35 U.S.C. 154(d)(4)''.
    Section 1.78: Section 1.78(a)(3) is amended by deleting the phrase 
``in a nonprovisional application.'' Section 4508 of the AIPA as 
originally enacted did not make the eighteen-month publication 
amendments to 35 U.S.C. 119 and 120 applicable to an international 
application unless and until it enters the national stage under 35 
U.S.C. 371. See Public Law 106-113, 113 Stat. at 1501A-566 through 
1501A-567. Section 13205 of Public Law 107-273 amended section 4508 of 
the AIPA to make the eighteen-month publication amendments to 35 U.S.C. 
119 and 120 also applicable during the international stage of an 
international application. With regard to international applications, 
Sec.  1.78(a)(2)(ii) requires that the reference required by Sec.  
1.78(a)(2)(i) be submitted: (1) during the pendency of the later-filed 
application; and (2) within the later of (A) four months from the date 
on which the national stage commenced under 35 U.S.C. 371(b) or (f) in 
the later-filed international application, or (B) sixteen months from 
the filing date of the prior-filed application. Since an abandoned 
international application is not a nonprovisional application, the 
petition procedure set forth in former Sec.  1.78(a)(3) was not 
applicable to a delayed priority claim in an abandoned international 
application. Section 1.78(a)(3) as amended now makes the petition 
procedure set forth in Sec.  1.78(a)(3) applicable to submitting a 
delayed priority claim in an abandoned international application 
including an international application that has not entered the 
national stage under 35 U.S.C. 371. Therefore, when filing a ``bypass'' 
continuation application under 35 U.S.C. 111(a) that claims the benefit 
of the international application with a filing date on or after 
November 29, 2000, that could have but did not claim the benefit of an 
earlier U.S. nonprovisional application or international application 
designating the United States and the benefit claim is to be added, a 
petition under Sec.  1.78(a)(3) will be required in the abandoned 
international application. A ``bypass'' continuation application is an 
application for patent filed under 35 U.S.C. 111(a) that claims the 
benefit of the filing date of an earlier international application 
designating the United States that did not enter the national stage 
under 35 U.S.C. 371. See H.R. Rep. No. 107-685, at 222 (2002). The 
Office previously indicated that to amend a later-filed abandoned 
international application to add a claim to the benefit of a prior-
filed nonprovisional application, or a prior-filed international 
application designating the United States, an applicant need only file 
a petition under Sec.  1.182 to amend an abandoned application (the 
later-filed international application) with the claim to the benefit of 
a prior-filed application. See Requirements for Claiming the Benefit of 
Prior-Filed Applications Under Eighteen-Month Publication of Patent 
Applications, 66 FR 67087, 67092 (Dec. 28, 2001), 1254 Off. Gaz. Pat. 
Office 121, 125 (Jan. 22, 2002) (final rule) (response to comment 6). 
In view of this change to Sec.  1.78(a), applicants should no longer 
rely upon that advice.
    Section 1.191: Section 1.191(a) is amended to delete each 
appearance of the phrase ``for a patent that issued from an original 
application filed in the United States.'' Section 13202(d) of Public 
Law 107-273 provides a technical correction for the effective date set 
forth in the AIPA for appeals to the BPAI as follows:

    Effective Date--The amendments made by Section 4605(b), (c), and 
(e) of the Intellectual Property and Communications Omnibus Reform 
Act, as enacted by Section 1000(a)(9) of Public Law 106-113, shall 
apply to any reexamination filed in the United States Patent and 
Trademark Office on or after the date of enactment of Public Law 
106-113.

    The effective date language in section 4608 of the AIPA limited the 
applicability of the conforming amendments to 35 U.S.C. 134 to a 
reexamination of a patent that issued from an original application 
which was filed on or after November 29, 1999. Thus, the conforming 
amendments to 35 U.S.C. 134 applied only to those ex parte 
reexamination proceedings filed under Sec.  1.510 for patents that 
issued from an original application which was filed on or after 
November 29, 1999. Public Law 107-273 revised the applicability of the 
conforming amendments to 35 U.S.C. 134 such that the conforming 
amendments are applicable to a reexamination of a patent where the 
request for ex parte reexamination was filed on or after November 29, 
1999. Accordingly, Sec.  1.191 is amended to track the statutory 
revision of the effective date.
    Section 1.191(a) is also subdivided into paragraphs (a)(1) (for 
applications and ex parte reexamination proceedings filed before 
November 29, 1999), (a)(2) (for ex parte reexamination proceedings 
filed on or after November 29, 1999), and (a)(3) (for inter partes 
reexamination proceedings).
    Section 1.197: Section 1.197(c) is amended to provide that an 
appeal to the Federal Circuit is terminated when the mandate is issued 
by the Court, rather than when the mandate is received by the Office. 
This change to Sec.  1.197(c) is for consistency with a 1998 amendment 
to Rule 41 of the Federal Rules of Appellate Procedure. The commentary 
on the addition of subdivision (c) to Rule 41 of the Federal Rules of 
Appellate Procedure indicates that this provision is intended to make 
clear that the Court's mandate is effective upon issuance, and that its 
effectiveness is not delayed until receipt of the mandate by the trial 
court or agency.
    Section 1.301: Section 1.301 (last sentence) is amended by 
inserting the phrase ``appeals by patent owners and third party 
requesters in'' before ``inter partes reexamination proceedings.'' The 
revision makes it clear that appeals by third party requesters of inter 
partes reexamination proceedings are controlled by Sec.  1.983.
    Section 1.302: Section 1.302 is amended by adding new paragraphs 
(c) and (d), and redesignating existing paragraph (c) as paragraph (e). 
New paragraph (c) points out that when an appeal is taken to the 
Federal Circuit in an ex parte reexamination proceeding, the appellant 
must serve notice as provided in Sec.  1.550(f). New paragraph (d) 
points out that when an appeal is taken to the Federal Circuit in an 
inter partes reexamination proceeding, the appellant must serve notice 
as provided in Sec.  1.903. These revisions are intended to focus 
parties on the unique service requirements in ex parte and inter partes 
reexamination proceedings, when appealing to the Federal Circuit.
    Section 1.303: Section 1.303 is amended by revising paragraphs (a), 
(b) and (d) to delete the appearance of ``for a patent that issued from 
an original application filed in the United States'' in each paragraph. 
This revision is made for the reasons stated in the discussion of Sec.  
1.191.
    Section 1.304: Section 1.304 is amended by revising paragraph 
(a)(1) to add after the second sentence, the following sentence: ``If a 
request for rehearing or reconsideration of the decision is filed 
within the time period

[[Page 70999]]

provided under Sec.  1.979(a), the time for filing an appeal shall 
expire two months after action on the last such request.'' In addition, 
reference to Sec.  1.979(a) in the second sentence is deleted. Further, 
Sec.  1.304 is amended to include all of the current provisions 
relating to interferences in Sec.  1.304(i), and to include a new Sec.  
1.304(ii) which provides that in inter partes reexaminations the time 
for filing a cross-appeal expires: (1) fourteen days after service of 
the notice of appeal to the Federal Circuit; or (2) two months after 
the date of decision of the BPAI, whichever is later.
    Section 1.304(a)(1) now provides that an inter partes third party 
requester can appeal to the Federal Circuit and can participate in the 
patent owner's appeal to the Federal Circuit. The time for filing an 
appeal to the Federal Circuit will expire two months after ``action on 
the last such request made by the parties,'' as opposed to the sentence 
which precedes the added sentence where time for filing an appeal to 
the Federal Circuit is stated to expire two months after ``action on 
the request.'' Thus, the potential for rehearing or reconsideration by 
more than one party is now factored into the time for appeal to the 
Federal Circuit. Since a party may not challenge a BPAI decision in an 
inter partes reexamination in a civil action under 35 U.S.C. 145, Sec.  
1.304(a)(1) provides that ``the time for filing an appeal shall expire 
* * *'' and not ``the time for filing an appeal or commencing a civil 
action shall expire * * *'' (which appears in the sentence which 
precedes the added sentence).
    The revision to Sec.  1.304(a)(1) also conforms to the change to 
Sec.  1.983, by addressing the potential for cross appeal to the 
Federal Circuit in an inter partes reexamination (in addition to that 
in an interference).
    Section 1.417: As discussed with regard to the revision to Sec.  
1.14, the statute has been revised to clarify that a translation of the 
international publication, as opposed to the international application, 
must be filed in order for a patent owner to obtain the provisional 
right of a reasonable royalty under 35 U.S.C. 154(d). Accordingly, 
Sec.  1.417 is amended: (1) To delete ``the international publication 
or''; (2) to add ``of the publication'' after ``English language 
translation''; and (3) to delete ``, unless it is being submitted 
pursuant to Sec.  1.495,''.
    Section 1.495: Section 1.495(c) is amended to change ``if it was 
originally filed in another language (35 U.S.C. 371(c)(2)'' to ``if the 
international application was originally filed in another language and 
if any English language translation of the publication of the 
international application previously submitted under 35 U.S.C. 154(d) 
(Sec.  1.417) is not also a translation of the international 
application as filed (35 U.S.C. 371(c)(2)).'' The purpose of this 
revision is to clarify that if an English language translation of the 
publication has already been filed and the publication was also a 
translation of the international application, a second translation is 
not required. Instead, the translation required by 35 U.S.C. 154(d) 
will satisfy the requirement for a translation under 35 U.S.C. 
371(c)(2). In Sec.  1.495(g), the phrase ``, except for a copy of the 
international publication or translation of the international 
application that is identified as provided in Sec.  1.417,'' is deleted 
because the phrase is unnecessary, since it merely repeats a provision 
of Sec.  1.417.
    Section 1.913: Section 1.913 is amended to add the phrase ``other 
than the patent owner or its privies'' after ``any person,'' because 
section 13202 of Pub. L. 107-273 now clarifies that only the third 
party requester may file a request for inter partes reexamination; a 
patent owner may not file a request for inter partes reexamination. 
This is consistent with the initial position taken by the Office during 
the implementation of optional inter partes reexamination. See Rules to 
Implement Optional Inter partes Reexamination Proceedings, 65 FR 18153, 
18178 (Apr. 6, 2000), 1234 Off. Gaz. Pat. Office 93, 116 (May 23, 2000) 
(proposed rule).
    Section 1.959: Section 1.959 is amended by adding a new paragraph 
(f), which provides a non-extendable one-month period for correcting an 
inadvertent failure to comply with any requirement of Sec.  1.959, when 
a notice of appeal or cross appeal is submitted. The revision of Sec.  
1.959 will permit a remedy of inadvertent defects in a notice of appeal 
or cross appeal.
    Section 1.959 relates to appeals and cross appeals to the BPAI in 
inter partes reexamination proceedings. The requirements for acceptance 
by the Office of a notice of appeal and cross appeal to the BPAI are: 
(1) Payment of the appeal fee set forth in Sec.  1.17(b) (Sec. Sec.  
1.959(a) and (b)); (2) identification of the appealed claim(s) (Sec.  
1.959(c)); and (3) signature by the patent owner, the third party 
requester, or their duly authorized attorney or agent (Sec.  1.959(c)).
    Section 1.959 is amended to provide the third party requester (as 
well as the patent owner) one opportunity to supply, within one month, 
the missing fee or missing portion of the fee that was inadvertently 
not supplied. Section 1.957(a) provides that if ``the third party 
requester files an untimely or inappropriate comment [or] notice of 
appeal * * * in an inter partes reexamination, the paper will be 
refused consideration.'' Thus, if the third party requester 
inadvertently fails to pay the appeal fee, or makes a payment which is 
deficient as to the amount specified in Sec.  1.17(b), the requester's 
notice of appeal (or cross appeal) will not be considered, and 
requester's appeal will otherwise be barred. The failure to submit the 
complete appeal fee is not a ``bona fide attempt to respond and to 
advance the prosecution'' where ``some requirement has been 
inadvertently omitted'' under Sec.  1.957(d) (with requester then given 
a chance to rectify the inadvertency), since Sec.  1.957(d) applies 
only to a patent owner and not to a third party requester. In addition, 
the third party requester does not have the opportunity to ``revive'' 
the appeal, as does the patent owner under Sec.  1.137 (further, an 
extension of the time for filing the notice of appeal (or cross appeal) 
is not provided for by Sec.  1.956, even if the requester becomes aware 
of the inadvertency on the last day to remedy it). Thus, the third 
party requester would be barred from appealing the case when a 
sufficient payment of the fee is inadvertently not made, in the absence 
of the present revision to Sec.  1.959. Yet, estoppel attaches to the 
third party requester which precludes further resolution of the issues 
that the requester wishes to appeal. Under the statute, requester is 
estopped from later asserting in any civil action, or in a subsequent 
inter partes reexamination, the invalidity/unpatentability of any claim 
finally determined to be valid and patentable on any ground the third 
party requester raised or could have raised in the inter partes 
reexamination. Requester is further estopped from later challenging in 
a civil action any fact determined in the inter partes reexamination. 
Accordingly, a requester's loss of appeal rights because of an 
inadvertent payment would be an unduly harsh and extreme measure. Thus, 
the Office is revising Sec.  1.959 to provide the third party requester 
one opportunity to supply, within one month, the missing fee or missing 
portion of the fee. As to the requirements that the notice of appeal 
(or cross appeal) identify the appealed claim(s) and be signed by the 
appellant, it may be that an opportunity to remedy the inadvertent 
failure to comply with same is not precluded by Sec.  1.957(a). The 
refusal of consideration mandated by that section is directed only to 
``untimely or inappropriate'' notices of appeal (and cross appeal). If 
so, the failure to sign or identify as

[[Page 71000]]

required might not render the notice untimely, and the paper might be 
an ``appropriate'' paper, i.e., the type of paper that is entitled to 
entry in an inter partes reexamination, but is not a complete paper. 
However, to cover the possibility that failure to comply with the 
signature or identification of claims requirements of Sec.  1.959(c) 
could permanently bar the requester's appeal, new Sec.  1.959(f) has 
been phrased to explicitly encompass these potential defects in a 
notice of appeal (or cross appeal).
    Sections 1.965 and 1.967: Section 1.965(d) is amended by inserting 
``paragraphs (a) and (c)'' in place of ``paragraph (c).'' Section 
1.967(c) is amended by inserting ``paragraphs (a) and (b)'' in place of 
``paragraph (b).''
    Under former Sec.  1.965, an inadvertent failure to comply with a 
requirement of Sec.  1.965(a) permanently barred the requester's appeal 
from going forward. Under former Sec.  1.967, an inadvertent failure to 
comply with a Sec.  1.967(a) requirement also barred the requester's 
participation via respondent brief in the patent owner's appeal. 
Sections 1.965 and 1.967 are revised to provide the appellant and 
respondent, respectively, with a non-extendable one-month period for 
correcting an inadvertent failure to comply with a requirement of 
Sec. Sec.  1.965(a) and 1.967(a), respectively. This revision of 
Sec. Sec.  1.965 and 1.967 is for reasons analogous to those set forth 
above for the revision of Sec.  1.959. Again, the loss of requester's 
appeal rights because of a Sec.  1.965(a) inadvertency, and the loss of 
requester's participation rights because of a Sec.  1.967(a) 
inadvertency, are considered to be unduly harsh and extreme measures.
    It is noted that Sec.  1.965(b) states: ``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.'' 
Under Sec.  1.965(d), as it has now been revised, the phrase `within 
the time allowed'' in Sec.  1.965(b) includes the filing of an 
``appellant's brief, accompanied by the requisite fee'' within the one-
month period for correcting an inadvertency (in failure to comply with 
a requirement of Sec.  1.965(a) and/or (c)) set forth in Sec.  
1.965(d).
    Section 1.971: Section 1.971 is amended by designating the sole 
current paragraph of the section as paragraph (a), and adding new 
paragraph (b). New paragraph (b) provides a non-extendable one-month 
period for correcting an inadvertent failure to comply with any 
requirement of paragraph (a) of Sec.  1.971, when a rebuttal brief is 
submitted. Existing Sec. Sec.  1.965(d) and 1.967(c) provide relief for 
certain non-compliance inadvertencies in appellant and respondent 
briefs, respectively. However, prior to the present amendment of Sec.  
1.971, there was no relief of this nature provided for rebuttal briefs. 
Section 1.971 is amended (in a new paragraph (b)) to provide similar 
relief for inadvertencies in the rebuttal brief. In addition, the 
phrase ``[n]o new ground of rejection can be proposed by a third party 
requester'' is being changed to ``[n]o new ground of rejection may be 
proposed by a third party requester'' to more correctly state the 
limitation.
    Section 1.977: Section 1.977(g) is amended by inserting the phrase 
``, when the patent owner is responding under paragraph (b)(1) of this 
section'' at the end of the first sentence of the paragraph, and by 
adding the following new sentence as the second sentence: ``The time 
period set forth in paragraph (b) of this section may not be extended 
when the patent owner is responding under paragraph (b)(2) of this 
section.''
    Prior Sec.  1.977(g) provided that ``[t]he time period set forth in 
paragraph (b) of this section is subject to the extension of time 
provisions of Sec.  1.956.'' Thus, an extension of time could be 
obtained for the filing of a patent owner amendment or showing of facts 
under Sec.  1.977(b)(1), or the filing of a patent owner request for 
rehearing of the decision of the BPAI made under Sec.  1.977(b)(2). 
However, Sec.  1.979(g) stated, and continues to state, that the times 
for requesting rehearing under Sec.  1.979(a) may not be extended, and 
a patent owner request for rehearing of the decision of the BPAI made 
under Sec.  1.977(b)(2) is included as Sec.  1.979(a)(2). Thus, the 
time for filing a patent owner request for rehearing under Sec.  
1.977(b)(2) could not be extended. The present amendment to Sec.  
1.977(g) makes it consistent with the language of Sec.  1.979(g). Note 
further that this revision is consistent with the policy for a 
streamlined appeal procedure, which is reflected, for example, in Sec.  
1.959 (no extension of the time for filing the notice of appeal or 
cross appeal), Sec.  1.963 (no extension of the time for filing 
appellant, respondent, and rebuttal briefs), and Sec.  1.979(g) (no 
extension of the time for filing any rehearing request). Thus, it is 
appropriate that an extension of time cannot be obtained for the filing 
of a patent owner request for rehearing of the decision of the BPAI 
made under Sec.  1.977(b)(2), while an extension can be obtained for 
the filing of a patent owner amendment or showing of facts presented 
under Sec.  1.977(b)(1), which may be considered a reopening of the 
examination process, as opposed to the appeal process.
    Section 1.979: Section 1.979 is amended by revising its paragraphs 
(e) and (f) to replace ``patent owner'' (and its possessive) with 
``parties to an appeal to the Board of Patent Appeals and 
Interferences,'' ``party,'' ``any party,'' or ``party's,'' as 
applicable. Section 1.979 is also amended by deleting the first and 
second sentences of paragraph (f). The third sentence of Sec.  1.979(f) 
is amended to add ``to the Board of Patent Appeals and Interferences'' 
after ``An appeal'' to provide additional clarity. Section 1.979 was 
formerly drafted to address the situation where an appeal to the 
Federal Circuit is possible only for the patent owner. The first 
revision modifies the language of Sec.  1.979 to make it applicable to 
all parties to the inter partes reexamination proceeding, i.e., the 
patent owner and any inter partes reexamination third party requester, 
who are the parties to the appeal to the BPAI. The second revision 
deletes the provision for termination of the third party requester's 
appeal, which was (before the enactment of Public Law 107-273) under 
criteria different than that for the patent owner (since a third party 
requester could not appeal to the courts under the statute prior to 
Public Law 107-273). The first revision to the text of Sec.  1.979(f) 
makes the criteria for termination the same for all parties to the 
appeal. Finally, Sec.  1.979(f) is amended to provide that an appeal to 
the Federal Circuit is terminated when the mandate is issued by the 
Federal Circuit, which is consistent with a 1998 amendment to Rule 41 
of the Federal Rules of Appellate Procedure. See the discussion of 
Sec.  1.197 above.
    Undesignated center heading immediately preceding Sec.  1.983: The 
undesignated center heading immediately preceding Sec.  1.983 is 
revised by deleting ``PATENT OWNER'' before ``APPEAL TO THE UNITED 
STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT.'' The undesignated 
center heading immediately preceding Sec.  1.983 was formerly drafted 
to address the situation where appeal to the Federal Circuit was 
possible only by the patent owner. This revision modifies the language 
to make it applicable to all parties to the inter partes reexamination 
proceeding who are the parties to the appeal to the BPAI.
    Section 1.983: Section 13106 of Public Law 107-273 grants the inter 
partes reexamination third party requester the right to appeal an 
adverse decision of the BPAI to the Federal Circuit. 35 U.S.C. 
315(b)(1). It further authorizes the third party requester to be a 
party to any appeal taken by the patent owner to the Federal Circuit. 
See 35 U.S.C.

[[Page 71001]]

315(b)(1). Also, as pointed out above, section 13106 of Public Law 107-
273 implicitly permits the patent owner to be a party to the newly 
provided appeal taken by the third party requester to the Federal 
Circuit. Section 1.983 is amended to track this newly enacted 
legislation by revising its heading, dividing the existing text into 
paragraphs (a) and (b), revising the text of newly designated 
paragraphs (a) and (b), and adding new paragraphs (c) through (f).
    The heading of Sec.  1.983 is amended by changing ``Patent owner 
appeal'' to ``Appeal.''
    Section 1.983(a) is amended to permit the patent owner and any 
third party requester who is a party to an appeal to the BPAI to: (1) 
appeal the BPAI's decision to the Federal Circuit; and (2) be a party 
to any appeal to the Federal Circuit taken from the BPAI's decision.
    Section 1.983(b) is amended to clarify that service of the notice 
of appeal or cross appeal must be made on every other party to the 
reexamination proceeding as required in Sec.  1.903. The explicit 
statement of requirement for service on other parties also provides 
antecedent for the fourteen-day period recited in paragraph (e) of 
Sec.  1.983 that follows.
    Section 1.983 is amended to add paragraphs (c) and (d) to provide 
for a cross appeal to the Federal Circuit within fourteen days of 
service of an opposing party's notice of appeal to the Federal Circuit. 
This is analogous to the cross appeal (within fourteen days of service 
of the notice of appeal) provided for in Sec.  1.304(a)(1) for 
interferences. The interferences model is used, because an interference 
is the only other inter partes proceeding appealed to the Court from 
the decision of the BPAI. It is noted that if the two-month time period 
from the BPAI's decision will expire after the fourteen-day period set 
for a cross appeal, then the later-expiring two-month period will 
control. Thus, where a first party files an appeal to the court (the 
Federal Circuit) fourteen days after the BPAI's decision, an opposing 
party need not file a cross appeal fifteen days later (twenty-nine days 
after the BPAI's decision), but rather has the remainder of the two-
month period to do so.
    A new paragraph (e) is added to Sec.  1.983, to set forth the 
action a party must take in order to participate in an appellant's 
appeal (including cross appeal). Participation in the appellant's 
appeal is directed to providing argument supporting the decision of the 
BPAI. Such participation is in contrast to the cross appeal which is 
provided for in paragraphs (c) and (d) of Sec.  1.983, where a party 
challenges a decision of the BPAI adverse to that party. New paragraph 
(f): Section 13106(d) of Public Law 107-273 provides the effective date 
for the revision to the statute made in section 13106 as follows: 
``[t]he amendments made by this Section apply with respect to any 
reexamination proceeding commenced on or after the date of enactment of 
this Act.''
    Accordingly, Sec.  1.983 is amended to add a new paragraph (f) 
stating: ``[n]otwithstanding any provision of the rules, in any 
reexamination proceeding commenced prior to November 2, 2002, the third 
party requester is precluded from appealing and cross appealing any 
decision of the BPAI to the Federal Circuit, and the third party 
requester is precluded from participating in any appeal taken by the 
patent owner to the Court.''
    Response to comments: The Office published a notice proposing 
changes to the rules of practice to implement the patent-related 
provisions in the intellectual property title of the 21st Century 
Department of Justice Appropriations Authorization Act. See Changes to 
Implement the 2002 Inter Partes Reexamination and other Technical 
Amendments to the Patent Statute, 68 FR 22343 (Apr. 28, 2003), 1270 
Off. Gaz. Pat. Office 106 (May 20, 2003) (proposed rule). The Office 
received six written comments (from intellectual property 
organizations, patent practitioners, and the general public) in 
response to this notice. While the comments were for the most part 
favorable to the changes proposed, a number of issues were raised. The 
comments which raise issues, and the Office's responses to these 
comments, now follow:
    Comment 1: The comments of all three intellectual property 
associations which provided comments focused on the revision that was 
proposed for Sec. Sec.  1.949 and 1.953, to issue a Right of Appeal 
Notice (under Sec.  1.953) after all claims are found patentable, 
without first issuing an Action Closing Prosecution (under Sec.  
1.949). The comments noted that the revision was proposed in an effort 
to streamline inter partes reexamination prosecution, based on the 
assumption that a patent owner ``presumably'' would not file any 
further comments after receiving a notice that all claims are 
patentable. The comments then pointed out that while it is possible 
that this assumption should cover most situations, the proposed 
revision would eliminate an important safeguard for the patent owner in 
circumstances where the assumption is not correct. An example was given 
where a patent owner would wish to respond after all claims are 
allowed, but would be precluded from doing so under the proposal. A 
patent owner receiving notice that all claims are found patentable 
might very well decide to propose an amendment at that point, if the 
patent owner disagrees with the examiner's statement of reasons for 
allowance or statement of claim interpretation. If, as proposed, a 
Right of Appeal Notice would be the paper that first informs a patent 
owner that all claims have been found patentable, then the patent owner 
would be precluded from submitting such an amendment in the proceeding. 
One comment asserted that in the instance of a first action indication 
of patentability of all claims and simultaneous issuance of a Right of 
Appeal Notice, the proposed revision could deny the patent owner its 
statutory right to propose amendments during reexamination pursuant to 
35 U.S.C. 314(a), since amendments to claims are expressly barred once 
the Right of Appeal Notice is issued.
    Based on the above, the comments urge that the Office retain the 
current practice of issuing an Action Closing Prosecution in all cases 
where the request for inter partes reexamination is granted, even after 
all claims in the proceeding have been found patentable.
    Response: In view of the comments, the proposed revision of 
Sec. Sec.  1.949 and 1.953 will not be adopted. The public response 
expresses a view that the need to always provide the patent owner with 
an opportunity to comment after all claims are found patentable 
outweighs the pendency reduction benefit that would result from 
bypassing the issuance of an Action Closing Prosecution and directly 
issuing a Right of Appeal Notice. In view of the preference stated in 
the comments that the patent owner should always be given an 
opportunity to comment after all claims are found patentable (by 
issuing an Action Closing Prosecution under Sec.  1.949, after which 
patent owner can comment under Sec.  1.951(a)), the proposal to revise 
Sec. Sec.  1.949 and 1.953 has been withdrawn.
    One of the comments suggested that the Office's objective of 
streamlining prosecution (after a determination of patentability of all 
claims) could be achieved by providing patent owner with an opportunity 
to expressly waive its right to submit comments/amendments under 
current Sec.  1.951(a) upon notice that all claims have been found 
patentable. It is noted, however, that such a right already exists, 
because the patent owner is free to file, after an Action Closing 
Prosecution under Sec.  1.949, a paper stating that no comments/
amendments will be filed

[[Page 71002]]

under current Sec.  1.951(a). Thus, a new provision is not needed to 
implement the suggestion.
    As a final point, it is noted that (contrary to a statement made in 
one of the comments) under the current practice, an Action Closing 
Prosecution will not be issued in all cases where a request for inter 
partes reexamination is granted. Where all claims are rejected in a 
first Office action (for example) and the patent owner fails to 
respond, a Notice of Intent to Issue a Reexamination Certificate will 
issue canceling all the patent claims, and there is no need for an 
Action Closing Prosecution. Also, if the ordered reexamination is 
vacated, where appropriate, prior to the issuance of an Action Closing 
Prosecution, there will be no Action Closing Prosecution issued in the 
proceeding.
    Comment 2: One comment points out that the effective date language 
in section 4608 of the AIPA changes to 35 U.S.C. 134 and 35 U.S.C. 145 
was to be ``phased in only years after enactment,'' i.e., only for an 
ex parte reexamination that was based upon an original application 
filed on or after November 29, 1999. This would have taken many years 
to become effective, thus providing a gradual transition. Instead, the 
comment notes, Public Law 107-273 accelerates the effective date 
provision to apply to any reexamination filed on or after November 29, 
1999 (i.e., nearly three years ago). The comment urges that this change 
has accelerated the existence of a situation where an examiner can 
``suppress a case from appellate review `forever' simply by refraining 
from making a rejection final.'' The comment requests relief from this 
situation.
    Response: If a patent owner believes that a reexamination 
proceeding is being ``suppressed'' from appellate review by the 
examiner's refraining from making a rejection final, the patent owner 
may file a petition under Sec.  1.181(a) requesting that the most 
recent Office action by the examiner be designated as a final rejection 
so as to permit an appeal. Such a petition should be accompanied by a 
showing as to why the most recent Office action should have been 
designated as a final rejection. If such a petition is denied by the 
Technology Center Director, the patent owner could seek further review 
by way of a petition under Sec.  1.181(a)(3) requesting higher level 
review of the decision of the Technology Center Director. Since a 
petition under Sec.  1.181 does not operate to stay the reexamination 
proceeding (Sec.  1.181(f)), it is advisable that the petition under 
Sec.  1.181(a) be accompanied by a notice of appeal and appeal fee set 
forth in Sec.  1.17(b) (which will be refunded as unnecessary if the 
petition is denied) and a request for an extension of time under Sec.  
1.550(c) to respond to the most recent Office action (since an appeal 
is not a proper response to a non-final Office action and the period 
for response to the Office action continues to run if the petition is 
denied). However, it must be remembered that in no case can the period 
for response be extended so as to expire later than six months from the 
date of the most recent Office action.
    Comment 3: Two comments have suggested that the Office permit inter 
partes reexamination of patents issuing from original applications 
filed in the United States prior to November 29, 1999. One of the 
comments argues that the Office's statement that the effective date 
language in section 4608 of the AIPA limited the applicability of inter 
partes reexamination (and conforming amendments) to patents issuing 
from original applications filed in the United States on or after 
November 29, 1999, is ``bad law, bad policy for the patent system and 
bad policy for the Patent and Trademark Office.'' The commenter then 
presents a constitutional argument to support this. The same comment 
further argues that the inter partes reexamination effective date 
provision of the AIPA has been repealed by implication, based upon the 
legislative expansion of third party requester appeal rights provided 
by Public Law 107-273. The comment further urges that, if its proposal 
is not adopted, then third party requester participation in ex parte 
reexamination which would be analogous to that provided by statute for 
inter partes reexamination should be permitted by rule for patents 
issuing from an original application filed in the United States prior 
to November 29, 1999.
    Response: Section 4608 (effective date) of the AIPA provides: 
``this subtitle and the amendments made by this subtitle shall take 
effect on the date of the enactment of this Act [November 29, 1999] and 
shall apply to any patent that issues from an original application 
filed in the United States on or after that date [November 29, 1999].'' 
See Pub. L. 106-113, 113 Stat. at 1501A-572. The plain language of the 
statute is clear and is not ambiguous. The enacted inter partes 
provisions of the AIPA are clearly stated (in Section 4608) to apply 
``to any patent that issues from an original application filed in the 
United States on or after'' the date of enactment (November 29, 1999).
    To the extent that it is argued that this provision is unwise and 
should not be adhered to, and that Art. I, Sec.  8, cl. 8 of the U.S. 
Constitution (Congress shall have the power * * * ``[t]o promote the 
progress of science and useful arts, by securing for limited times to 
authors and inventors the exclusive right to their respective writings 
and discoveries'') provides a basis for the Office to ignore the 
limitations in the AIPA on the applicability of inter partes 
reexamination, it is noted that the Federal courts have generally held 
that the power of Congress to legislate on the subject of patents is 
plenary by the terms of the Constitution. See e.g., McClurg v. 
Kingsland, 42 U.S. (1 How.) 202, 206 (1843); see also Owen v. Heimann, 
12 F.2d 173, 174 (D.C. Cir.), cert. denied, 271 U.S. 685 (1926) 
(``Congress has full power to prescribe to whom and upon what terms and 
conditions a patent shall issue''); Kling v. Haring, 11 F.2d 202, 204-
05 (D.C. Cir.), cert. denied, 271 U.S. 671 (1926) (same). In any event, 
administrative agencies do not have the authority to declare 
unconstitutional the laws they are charged with administering.  See, 
e.g., Oestereich v. Selective Service Board, 393 U.S. 233, 242 (1968); 
McGowan v. Marshall, 604 F.2d 885, 892 (5th Cir. 1979); and Buckeye 
Industries, Inc. v. Secretary of Labor, 587 F.2d 231 (5th Cir. 1979).
    As to the argument that the inter partes reexamination effective 
date provision of the AIPA has been repealed by implication, based upon 
the legislative expansion of third party requester appeal rights 
provided by Public Law 107-273, Congress is well versed in the 
mechanism for changing an effective date of prior legislation (as it 
did for the eighteen-month publication provisions of the AIPA), and 
Congress did not do so for the inter partes reexamination effective 
date provisions of the AIPA. It is noted that a proposed revision to 
the inter partes reexamination eligibility effective date was 
explicitly placed before Congress by way of Section 3(a) of H.R. 2231 
introduced on June 19, 2001, and referred to the House committee. See 
H.R. 2231, 107th Cong., 1st Sess. (2001). Thus, an explicit provision 
to revise the inter partes reexamination effective date was before 
Congress; yet, it was not carried forward into Public Law 107-273.
    As to the suggestion that third party requester participation 
rights (analogous to those provided by statute for inter partes 
reexamination) should be provided by rule for ex parte for patents 
issuing from an original application filed in the United States prior 
to November 29, 1999, the statute does not provide authority for a 
third party

[[Page 71003]]

requester of a reexamination proceeding requested under 35 U.S.C. 302 
to file a paper directed to the issues during the examination of the 
reexamination proceeding. The statute and its intent are clear that the 
reexamination proceeding under 35 U.S.C. 302 must be ex parte and third 
party requester participation is barred by statute. See Syntex (U.S.A.) 
Inc. v. U.S. Patent and Trademark Office, 882 F.2d 1570, 1573, 11 
USPQ2d 1866, 1868-69 (Fed. Cir. 1989) (third parties do not participate 
before the Office). While the third party requester is permitted by 
statute pursuant to 35 U.S.C. 304 to file a ``reply'' prior to the 
examination stage if the patent owner files a statement under 35 U.S.C. 
304, that is the only paper directed to the merits of the proceeding 
authorized to a requester that files an ex parte reexamination.
    Comment 4: One comment points out that a reexamination requester 
may ``piggyback'' a second or subsequent reexamination onto an ongoing 
reexamination proceeding with the possibility of merged proceedings and 
thus thwart a final rejection being made as the second action in the 
ongoing reexamination, with a first Office action then being issued for 
the merged proceeding. The commenter further notes that a requester 
could ``hamstring a reexamination proceeding to keep a case bottled up 
in the examining corps forever'' by filing multiple requests for 
reexamination based on the same patent.
    Response: Section 2283 of the Manual of Patent Examining Procedure 
states that:

    Once the files are returned to the examiner for issuance of an 
Office action, the examiner should prepare an Office action at the 
most advanced point possible for the first proceeding. Thus, if the 
first proceeding is ready for a final rejection and the second 
proceeding does not provide any new information which would call for 
a new ground of rejection, the examiner should issue a final 
rejection for the merged proceeding using the guidelines for the 
prosecution stage set forth below.

See Manual of Patent Examining Procedure Sec.  2283 (8th. ed. 2001) 
(Rev. 1, Feb. 2003) (MPEP).
    Thus, the examiner is directed to, where possible, prepare an 
Office action at the most advanced point possible for the ongoing 
(first) proceeding, which in the commenter's scenario is the final 
rejection stage. If, however, a new issue (e.g., new art, combining the 
old art a new way, or new evidence) that precludes a final rejection is 
raised by the later request, a final rejection would not be issued. In 
that instance, public policy dictates that the substance of the later 
request be considered and applied in order that only valid patent 
claims result from the reexamination proceeding, i.e., to prevent the 
public from being barred from using claimed subject matter for which 
protection is not warranted. It is noted that even in this situation, 
the patent owner would be free to file a petition under Sec.  1.181 
requesting that the Office action be designated as a final rejection 
(see response to comment 2).
    A patent owner faced with the filing of multiple reexamination 
requests on a patent may obtain relief if it can be shown that the 
newly filed reexamination request was filed: (1) by the same real party 
in interest who filed a previous request (rather than another party who 
wishes to approach the issue in its own way), and (2) without providing 
a new issue in the form of new art or viewing art previously applied in 
the reexamination proceeding in a new light. If a bona fide new issue 
is, however, raised by the later request, public policy dictates that 
the substance of the later request be considered and applied in order 
to resolve the new issue such that only valid patent claims result from 
the reexamination proceeding.
    Comment 5: One comment raises a concern that there is no express 
requirement in Sec.  1.953 for an examiner to set forth grounds for not 
making any third party proposed rejections (as is required in existing 
Sec.  1.949) upon a determination of patentability of all claims.
    Response: Initially, it is noted that Sec.  1.953 (c) states ``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''. Thus, the commenter's concern is in fact 
addressed in the rule.
    It is also noted that in any Office action (in an inter partes 
reexamination) where an examiner declines to adopt a rejection proposed 
by a third party requester, the examiner must explicitly identify the 
proposed rejection, state that the proposed rejection is not adopted, 
and set forth grounds for not adopting the proposed rejection. This 
will be covered in a new chapter of the MPEP which will be directed to 
inter partes reexamination. It is noted, however, that if the third 
party requester then fails to address and contest the refusal to adopt 
the proposed rejection at the first opportunity to do so, such will be 
taken as an acquiescence to the examiner's position. In such a case, 
the proposed ground of rejection will be withdrawn from further 
consideration in the proceeding, will not be addressed in future Office 
actions, and will not serve as a basis for appeal in any subsequent 
appeal that may be taken by the requester in the proceeding.
    Comment 6: Two comments suggested that an inconsistency was raised 
by the statement in the notice of proposed rule making that an Action 
Closing Prosecution (or Right of Appeal Notice) can be issued ``even 
though the Office action being issued is the first action on the 
merits.'' It is argued that if a request for reexamination does not 
present prior art printed publications and patents that provide a prima 
facie case of unpatentability (or come ``exceedingly close'' to it), 
then the Office should not have issued an order for reexamination in 
the first place, but rather should have denied the request (and thus 
the first Office action stage should not be reached). Stated another 
way, it is argued that finding all the claims patentable over the art 
at the first action stage should be inconsistent with ordering 
reexamination based on such art.
    Response: A finding that all of the claims are patentable over the 
art at the first action stage is not inconsistent with the prior order 
of reexamination based on such art. See MPEP 2240. The initial decision 
on a request for reexamination is based upon whether or not a 
``substantial new question of patentability'' is raised by the art (the 
patents and/or printed publications). See id. Where a finding is made 
that a substantial new question of patentability has been raised, the 
examiner has only determined that there is a ``substantial likelihood'' 
that a reasonable examiner would consider the art of record important 
in deciding whether or not the claims are patentable. See MPEP 2242. 
After reexamination has been ordered, it is then determined, in the 
examination stage of the proceeding, whether or not the claims are 
patentable over the art. See MPEP 2240. At the time when the first 
Office action is issued, if one or more claims are not patentable over 
the art, the claims will be rejected based on that art. If claims are 
found patentable over the art, the action will state that finding (and 
supporting reasons). A decision that all the claims are patentable at 
this point does not negate the initial finding that a substantial new 
question of patentability was raised by the art, because reexamination 
will be ordered as long as a reasonable

[[Page 71004]]

examiner would consider the art of record important in deciding whether 
or not the claims are patentable; there is no requirement that the 
claims be prima facie obvious over the art. The Federal Circuit has 
specifically indicated that:

    The inquiry occasioned by a request for reexamination is solely 
whether a reexamination order should issue and is not directed 
toward resolution of validity. The requestor's burden is simply to 
show a basis for issuance of the order, a burden unrelated to that 
assigned in [35 U.S.C.] 282. A refusal of reexamination leaves 
untouched the [35 U.S.C.] 282 presumption to which the patent is 
entitled in the courtroom.

See In re Etter, 756 F.2d 852, 857 n.5, 225 USPQ 1, 4 n.5 (Fed. Cir. 
1985).
    It is also noted that the third party requester is not entitled 
(under 35 U.S.C. 315(b)) to appeal a finding of claim patentability in 
situations in which the Director does not issue a determination 
pursuant to 35 U.S.C. 312 and 313 that a substantial new question of 
patentability has been presented. See 35 U.S.C. 312(c) (a determination 
made under 35 U.S.C. 312(a) by the Director on the request for 
reexamination is ``final and non-appealable''). Refusing to order 
reexamination where a substantial new question has been found to be 
present, but all the claims are found to be patentable over the art, 
would deprive the requester of the right to appeal the finding of claim 
patentability (under 35 U.S.C. 315(b)).
    Comment 7: One comment suggests that the policy of issuing an 
Action Closing Prosecution (or Right of Appeal Notice) as the first 
action on the merits where all claims are patentable may be ``contrary 
to the letter of the law.'' The comment notes that according to 35 
U.S.C. 314(a), ``reexamination shall be conducted according to the 
procedures established for initial examination under the provisions of 
sections 132 and 133.'' These sections (35 U.S.C. 132 and 133) are 
directed to prosecution before the examiner and not proceedings on 
appeal to the BPAI. The comment urges that 35 U.S.C. 132(a) indicates 
that ``each interested party shall get two bites at the apple. By 
analogy to initial examination, 35 U.S.C. 132(a) should be construed, 
in the context of inter partes reexamination, to loosely read: 
``Whenever, on reexamination, any claim in a patent is confirmed to be 
patentable, the Director shall notify the Third Party Requester 
thereof, stating the reasons for such confirmation, together with such 
information and references as may be useful in judging of the propriety 
of continuing the Reexamination of the patent; and if after receiving 
such notice, the Third Party Requester persists, the previously-
confirmed patent claim shall be reassessed.'' Thus, the commenter 
believes that the statute provides the third party requester with a 
right to address the finding of claims patentable during the 
examination stage of the inter partes reexamination proceeding.
    Response: 35 U.S.C. 132(a) reads in part: ``Whenever, on 
examination, any claim for a patent is rejected, or any objection or 
requirement made, the Director shall notify the applicant thereof, 
stating the reasons for such rejection, or objection or requirement, 
together with such information and references as may be useful in 
judging of the propriety of continuing the prosecution of his 
application; and if after receiving such notice, the applicant persists 
in his claim for a patent, with or without amendment, the application 
shall be reexamined''. 35 U.S.C. 132(a) provides for an applicant's 
opportunity to participate in an application, and by virtue of the 
incorporation of 35 U.S.C. 132(a) into 35 U.S.C. 314(a), it also 
provides for a patent owner's opportunity to participate during the 
examination stage of the inter partes reexamination proceeding. 35 
U.S.C. 132(a), by virtue of its incorporation into 35 U.S.C. 314(a), 
does not confer any participation rights on a third party requester.
    Further, 35 U.S.C. 314(b)(2) states: ``Each time that the patent 
owner files a response to an action on the merits from the Patent and 
Trademark Office, the third-party requester shall have one opportunity 
to file written comments addressing issues raised by the action of the 
Office or the patent owner's response thereto, if those written 
comments are received by the Office within 30 days after the date of 
service of the patent owner's response''. The third party requester may 
file a paper during the examination stage of the inter partes 
reexamination proceeding if, and only if, the patent owner files a 
response to an Office action. Thus, the third party requester is 
precluded by statute from participation in the examination stage of the 
inter partes reexamination proceeding if the patent owner fails to 
respond to all Office actions issued. Thus, contrary to the commenter's 
argument, the third party requester certainly is not ensured of the 
opportunity to participate during the examination stage of the inter 
partes reexamination proceeding. It is only the requester's right to 
appeal any rejection proposed and not adopted that is ensured by the 
statute.
    As a final point, issuance of an Action Closing Prosecution as the 
first action on the merits (where all claims are patentable) is 
entirely consistent with the statute, since it provides the requester 
with the rights provided by statute to comment if and only if the 
patent owner responds to the Action Closing Prosecution.
    In conclusion, the inter partes third party requester of 
reexamination is permitted by statute only to comment pursuant to 35 
U.S.C. 314(b)(2) if the patent owner responds to an Office action, and 
to appeal and participate in appeals pursuant to 35 U.S.C. 315(b). No 
further participation in an inter partes reexamination proceeding is 
authorized by 35 U.S.C. chapter 31.

Rule Making Considerations

    Administrative Procedure Act: The changes in this notice conform 
the patent-related rules of practice in 37 CFR to the changes to title 
35 U.S.C. contained in Public Law 107-273. Therefore, these changes 
involve interpretive rules or rules of agency practice and procedure 
under 5 U.S.C. 553(b)(A). See Bachow Communications Inc. v. FCC, 237 
F.3d 683, 690 (D.C. Cir. 2001); Paralyzed Veterans of America v. West 
138 F.3d 1434, 1436 (Fed. Cir. 1998); and Komjathy v. National 
Transportation Safety Board, 832 F.2d 1294, 1296-97 (D.C. Cir. 1987). 
Therefore, prior notice and opportunity for public comment are not 
required pursuant to 5 U.S.C. 553(b) or (c) (or any other law).
    Regulatory Flexibility Act: As prior notice and an opportunity for 
public comment are not required pursuant to 5 U.S.C. 553 (or any other 
law), an initial regulatory flexibility analysis under the Regulatory 
Flexibility Act (5 U.S.C. 601 et seq.) is not required. See 5 U.S.C. 
603.
    Executive Order 13132: This rule making does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Executive Order 12866: This rule making has been determined to be 
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    Paperwork Reduction Act: This notice 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 collections of information involved in 
this notice have been reviewed and previously approved by OMB under OMB 
control numbers: 0651-0021, 0651-0031, 0651-0032, and 0651-0033. The 
United States Patent and Trademark Office is not resubmitting any 
information collection to OMB for its review and approval, because the 
changes in this notice do

[[Page 71005]]

not affect the information collection requirements associated with the 
information collection under these OMB control numbers.
    The title, description and respondent description of each of the 
information collections are shown below with an estimate of each of the 
annual reporting burdens. Included in each estimate is the time for 
reviewing instructions, gathering and maintaining the data needed, and 
completing and reviewing the collection of information. The changes in 
this notice conform the patent-related rules of practice in 37 CFR to 
the changes to title 35 U.S.C. contained in Public Law 107-273.

    OMB Number: 0651-0021.
    Title: Patent Cooperation Treaty.
    Form Numbers: PCT/RO/101, PCT/RO/134, PCT/RO/144, PTO-1382, PCT/
IPEA/401, PCT/IB/328, PCT/SB/61/PCT, PCT/SB/64/PCT.
    Type of Review: Approved through December of 2003.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal 
Government and State, Local and Tribal Governments.
    Estimated Number of Respondents: 331,407.
    Estimated Time Per Response: Between 15 minutes and 4 hours.
    Estimated Total Annual Burden Hours: 401,202.
    Needs and Uses: The information collected is required by the Patent 
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify 
the filing of patent applications on the same invention in different 
countries. It provides for a centralized filing procedure and a 
standardized application format.

    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08A, PTO/SB/08B, PTO/SB/21-27, PTO/SB/30-32, 
PTO/SB/35-37, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/67-68, PTO/SB/91-92, 
PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B, PTO-2055-A/B, PTOL-413A, 
eIDS, EFS form.
    Type of Review: Approved through July of 2006.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal 
Government and State, Local and Tribal Governments.
    Estimated Number of Respondents: 2,208,339.
    Estimated Time Per Response: 1 minute 48 seconds to 8 hours.
    Estimated Total Annual Burden Hours: 830,629 hours.
    Needs and Uses: During the processing of an application for a 
patent, the applicant/agent may be required or desire to submit 
additional information to the Office concerning the examination of a 
specific application. The specific information required or which may be 
submitted includes: Information Disclosure Statements; Terminal 
Disclaimers; Petitions to Revive; Express Abandonments; Appeal Notices; 
Petitions for Access; Powers to Inspect; Certificates of Mailing or 
Transmission; Statements under Sec.  3.73(b); Amendments, Petitions and 
their Transmittal Letters; and Deposit Account Order Forms.

    OMB Number: 0651-0032.
    Title: Initial Patent Application.
    Form Number: PTO/SB/01-07, PTO/SB/13PCT, PTO/SB/16-19, PTO/SB/29 
and 29A, PTO/SB/101-110.
    Type of Review: Approved through July of 2006.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions, Farms, Federal 
Government, and State, Local, or Tribal Governments.
    Estimated Number of Respondents: 454,287.
    Estimated Time Per Response: 22 minutes to 10 hours and 45 minutes.
    Estimated Total Annual Burden Hours: 4,171,568 hours.
    Needs and Uses: The purpose of this information collection is to 
permit the Office to determine whether an application meets the 
criteria set forth in the patent statute and regulations. The standard 
Fee Transmittal form, New Utility Patent Application Transmittal form, 
New Design Patent Application Transmittal form, New Plant Patent 
Application Transmittal form, Declaration, Provisional Application 
Cover Sheet, and Plant Patent Application Declaration will assist 
applicants in complying with the requirements of the patent statute and 
regulations, and will further assist the Office in processing and 
examination of the application.

    OMB Number: 0651-0033.
    Title: Post Allowance and Refiling.
    Form Numbers: PTO/SB/44, PTO/SB/50-51, PTO/SB/51S, PTO/SB/52-53, 
PTO/SB/55-58, PTOL-85B.
    Type of Review: Approved through January of 2004.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions, Farms, State, Local 
and Tribal Governments, and Federal Government.
    Estimated Number of Respondents: 205,480.
    Estimated Time Per Response: 1.8 minutes to 2 hours.
    Estimated Total Annual Burden Hours: 63,640 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, United States Patent and Trademark Office, P.O. Box 
1450, Alexandria, Virginia, 22313-1450, or to the Office of Information 
and Regulatory Affairs, Office of Management and Budget, New Executive 
Office Building, Room 10235, 725 17th Street, NW., Washington, DC 
20503, Attention: Desk Officer for the Patent and Trademark Office.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and recordkeeping 
requirements, Small Businesses.

0
For the reasons set forth in the preamble, 37 CFR part 1 is amended as 
follows:

[[Page 71006]]

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).

0
2. Section 1.1 is amended by revising paragraph (c) to read:


Sec.  1.1  Addresses for non-trademark correspondence with the United 
States Patent and Trademark Office.

* * * * *
    (c) For reexamination proceedings. (1) Requests for ex parte 
reexamination (original request papers only) should be additionally 
marked ``Mail Stop Ex parte Reexam.''
    (2) Requests for inter partes reexamination (original request 
papers) and all subsequent inter partes reexamination correspondence 
filed in the Office, other than correspondence to the Office of the 
General Counsel pursuant to Sec.  1.1(a)(3) and Sec.  1.302(c), should 
be additionally marked ``Mail Stop Inter partes Reexam.''
* * * * *

0
3. Section 1.13 is amended by revising paragraph (b) to read:


Sec.  1.13  Copies and certified copies.

* * * * *
    (b) Certified copies of patents, patent application publications, 
and trademark registrations and of any records, books, papers, or 
drawings within the jurisdiction of the United States Patent and 
Trademark Office and open to the public or persons entitled thereto 
will be authenticated by the seal of the United States Patent and 
Trademark Office and certified by the Director, or in his or her name, 
upon payment of the fee for the certified copy.

0
4. Section 1.14 is amended by revising paragraph (g)(2) to read as 
follows:


Sec.  1.14  Patent applications preserved in confidence.

* * * * *
    (g) * * *
    (2) A copy of an English language translation of a publication of 
an international application which has been filed in the United States 
Patent and Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be 
furnished upon written request including a showing that the publication 
of the application in accordance with PCT Article 21(2) has occurred 
and that the U.S. was designated, and upon payment of the appropriate 
fee (Sec.  1.19(b)(4)).
* * * * *

0
5. Section 1.78 is amended by revising paragraph (a)(3) to read as 
follows:


Sec.  1.78  Claiming benefit of earlier filing date and cross-
references to other applications.

    (a) * * *
    (3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2) 
of this section is presented after the time period provided by 
paragraph (a)(2)(ii) of this section, the claim under 35 U.S.C. 120, 
121, or 365(c) for the benefit of a prior-filed copending 
nonprovisional application or international application designating the 
United States of America may be accepted if the reference identifying 
the prior-filed application by application number or international 
application number and international filing date was unintentionally 
delayed. A petition to accept an unintentionally delayed claim under 35 
U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed application 
must be accompanied by:
    (i) The reference required by 35 U.S.C. 120 and paragraph (a)(2) of 
this section to the prior-filed application, unless previously 
submitted;
    (ii) The surcharge set forth in Sec.  1.17(t); and
    (iii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(2)(ii) of this section and the date the 
claim was filed was unintentional. The Director may require additional 
information where there is a question whether the delay was 
unintentional.
* * * * *

0
6. Section 1.191 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.191  Appeal to Board of Patent Appeals and Interferences.

    (a)(1) Every applicant for a patent or for reissue of a patent, and 
every owner of a patent involved in an ex parte reexamination 
proceeding filed under Sec.  1.510 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 for reply provided under 
Sec. Sec.  1.134 and 1.136 (for applications) or Sec.  1.550(c) (for ex 
parte reexamination proceedings).
    (2) Every owner of a patent involved in an ex parte reexamination 
proceeding filed under Sec.  1.510 on or after November 29, 1999, any 
of whose claims has been 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 for reply provided under 
Sec. Sec.  1.134 and 1.550(c).
    (3) Appeals to the Board of Patent Appeals and Interferences in 
inter partes reexamination proceedings filed under Sec.  1.913 are 
controlled by Sec. Sec.  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.
* * * * *

0
7. Section 1.197 is amended by revising paragraph (c) to read as 
follows:


Sec.  1.197  Action following decision.

* * * * *
    (c) Termination of proceedings. (1) Proceedings are considered 
terminated by the dismissal of an appeal or the failure to timely file 
an appeal to the court or a civil action (Sec.  1.304) except:
    (i) Where claims stand allowed in an application; or
    (ii) Where the nature of the decision requires further action by 
the examiner.
    (2) The date of termination of proceedings is the date on which the 
appeal is dismissed or the date on which the time for appeal to the 
Court or review by civil action (Sec.  1.304) expires. If an appeal to 
the Court or a civil action has been filed, proceedings are considered 
terminated when the appeal or civil action is terminated. An appeal to 
the U.S. Court of Appeals for the Federal Circuit is terminated when 
the mandate is issued by the Court. A civil action is terminated when 
the time to appeal the judgment expires.

0
8. 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 Director (see Sec. Sec.  
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 
appeals by patent owners and third party requesters in inter partes 
reexamination proceedings filed under Sec.  1.913, Sec.  1.983 is 
controlling.

0
9. Section 1.302 is revised to read as follows:

[[Page 71007]]

Sec.  1.302  Notice of appeal.

    (a) When an appeal is taken to the U.S. Court of Appeals for the 
Federal Circuit, the appellant shall give notice thereof to the 
Director within the time specified in Sec.  1.304.
    (b) In interferences, the notice must be served as provided in 
Sec.  1.646.
    (c) In ex parte reexamination proceedings, the notice must be 
served as provided in Sec.  1.550(f).
    (d) In inter partes reexamination proceedings, the notice must be 
served as provided in Sec.  1.903.
    (e) Notices of appeal directed to the Director shall be mailed to 
or served by hand on the General Counsel as provided in Sec.  104.2.

0
10. Section 1.303 is amended by revising paragraphs (a), (b), and (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 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 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 on or after 
November 29, 1999, and for any inter partes reexamination proceeding, 
no remedy by civil action under 35 U.S.C. 145 is available.

0
11. Section 1.304 is amended by revising paragraph (a)(1) 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) or Sec.  1.658(b), the time for 
filing an appeal or commencing a civil action shall expire two months 
after action on the request. If a request for rehearing or 
reconsideration of the decision is filed within the time period 
provided under Sec.  1.979(a), the time for filing an appeal shall 
expire two months after action on the last such request.
    (i) In interferences, the time for filing a cross-appeal or cross-
action expires:
    (A) Fourteen days after service of the notice of appeal or the 
summons and complaint; or
    (B) Two months after the date of decision of the Board of Patent 
Appeals and Interferences, whichever is later.
    (ii) In inter partes reexaminations, the time for filing a cross-
appeal expires:
    (A) Fourteen days after service of the notice of appeal; or
    (B) Two months after the date of decision of the Board of Patent 
Appeals and Interferences, whichever is later.
* * * * *

0
12. Section 1.417 is revised to read as follows:


Sec.  1.417  Submission of translation of international publication.

    The submission of an English language translation of the 
publication of an international application pursuant to 35 U.S.C. 
154(d)(4) must clearly identify the international application to which 
it pertains (Sec.  1.5(a)) and be clearly identified as a submission 
pursuant to 35 U.S.C. 154(d)(4). Otherwise, the submission will be 
treated as a filing under 35 U.S.C. 111(a). Such submissions should be 
marked ``Mail Stop PCT.''

0
13. Section 1.495 is amended by revising paragraphs (c) and (g) to read 
as follows:


Sec.  1.495  Entering the national stage in the United States of 
America.

* * * * *
    (c) If applicant complies with paragraph (b) of this section before 
expiration of thirty months from the priority date but omits either a 
translation of the international application, as filed, into the 
English language, if the international application was originally filed 
in another language and if any English language translation of the 
publication of the international application previously submitted under 
35 U.S.C. 154(d) (Sec.  1.417) is not also a translation of the 
international application as filed (35 U.S.C. 371(c)(2)), or the oath 
or declaration of the inventor (35 U.S.C. 371(c)(4) and Sec.  1.497), 
if a declaration of inventorship in compliance with Sec.  1.497 has not 
been previously submitted in the international application under PCT 
Rule 4.17(iv) within the time limits provided for in PCT Rule 26ter.1, 
applicant will be so notified and given a period of time within which 
to file the translation and/or oath or declaration in order to prevent 
abandonment of the application. The payment of the processing fee set 
forth in Sec.  1.492(f) is required for acceptance of an English 
translation later than the expiration of thirty months after the 
priority date. The payment of the surcharge set forth in Sec.  1.492(e) 
is required for acceptance of the oath or declaration of the inventor 
later than the expiration of thirty months after the priority date. A 
``Sequence Listing'' need not be translated if the ``Sequence Listing'' 
complies with PCT Rule 12.1(d) and the description complies with PCT 
Rule 5.2(b).
* * * * *
    (g) The documents and fees submitted under paragraphs (b) and (c) 
of this section must be clearly identified as a submission to enter the 
national stage under 35 U.S.C. 371. Otherwise, the submission will be 
considered as being made under 35 U.S.C. 111(a).
* * * * *

0
14. Section 1.913 is revised to read as follows:


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

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

0
15. Section 1.959 is amended by adding a new paragraph (f) to read as 
follows:


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

* * * * *
    (f) If a notice of appeal or cross appeal is timely filed but does 
not comply with any requirement 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 notice 
of appeal or cross appeal. If the appellant does not then file an 
amended notice of appeal or cross appeal within the one-month period, 
or files a notice which does not overcome all the reasons for non-
compliance stated in the

[[Page 71008]]

notification of the reasons for non-compliance, that appellant's appeal 
or cross appeal will stand dismissed.

0
16. Section 1.965 is amended by revising paragraph (d) to read as 
follows:


Sec.  1.965  Appellant's brief in inter partes reexamination.

* * * * *
    (d) If a brief is filed which does not comply with all the 
requirements of paragraphs (a) and (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.

0
17. Section 1.967 is amended by revising paragraph (c) to read as 
follows:


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

* * * * *
    (c) If a respondent's brief is filed which does not comply with all 
the requirements of paragraphs (a) and (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.

0
18. Section 1.971 is revised to read as follows:


Sec.  1.971  Rebuttal brief in inter partes reexamination.

    (a) 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 may 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.
    (b) If a rebuttal brief is filed which does not comply with all the 
requirements of paragraph (a) 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 rebuttal 
brief. If the appellant does not file an amended rebuttal brief during 
the one-month period, or files an amended rebuttal brief which does not 
overcome all the reasons for non-compliance stated in the notification, 
that appellant's rebuttal brief will not be considered.

0
19. Section 1.977 is amended by revising paragraph (g) to read as 
follows:


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

* * * * *
    (g) The time period set forth in paragraph (b) of this section is 
subject to the extension of time provisions of Sec.  1.956, when the 
patent owner is responding under paragraph (b)(1) of this section. The 
time period set forth in paragraph (b) of this section may not be 
extended when the patent owner is responding under paragraph (b)(2) of 
this section. The time periods set forth in paragraphs (c) and (e) of 
this section may not be extended.

0
20. Section 1.979 is amended by revising paragraphs (e) and (f) to read 
as follows:


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

* * * * *
    (e) The parties to an appeal to the Board of Patent Appeals and 
Interferences 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 any 
party to an appeal to the Board of Patent Appeals and Interferences who 
is dissatisfied with the final decision of the Board of Patent Appeals 
and Interferences.
    (f) An appeal to the Board of Patent Appeals and Interferences by a 
party is considered terminated by the dismissal of that party's appeal, 
the failure of the party to timely request rehearing under Sec.  
1.979(a) or (c), or the failure of the party 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 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 appeal is considered 
terminated when the mandate is issued by the U.S. Court of Appeals for 
the Federal Circuit. Upon termination of an appeal, if no other appeal 
is present, the reexamination proceeding will be terminated and the 
Director will issue a certificate under Sec.  1.997.
* * * * *

0
21. The undesignated center heading immediately preceding Sec.  1.983 
is revised to read as follows:

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

0
22. Section 1.983 is revised to read as follows:


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

    (a) The patent owner or third party requester in an inter partes 
reexamination proceeding who is a party to an appeal to the Board of 
Patent Appeals and Interferences and who is dissatisfied with the 
decision of the Board of Patent Appeals and Interferences may, subject 
to Sec.  1.979(e), appeal to the U.S. Court of Appeals for the Federal 
Circuit and may be a party to any appeal thereto taken from a 
reexamination decision of the Board of Patent Appeals and 
Interferences.
    (b) The appellant must take the following steps in such an appeal:
    (1) In the U.S. Patent and Trademark Office, timely file a written 
notice of appeal directed to the Director in accordance with Sec. Sec.  
1.302 and 1.304;
    (2) In the U.S. Court of Appeals for the Federal Circuit, file a 
copy of the notice of appeal and pay the fee, as provided for in the 
rules of the U.S. Court of Appeals for the Federal Circuit; and
    (3) Serve a copy of the notice of appeal on every other party in 
the reexamination proceeding in the manner provided in Sec.  1.248.
    (c) If the patent owner has filed a notice of appeal to the U.S. 
Court of Appeals for the Federal Circuit, the third party requester may 
cross appeal to the U.S. Court of Appeals for the Federal Circuit if 
also dissatisfied with the decision of the Board of Patent Appeals and 
Interferences.
    (d) If the third party requester has filed a notice of appeal to 
the U.S. Court of Appeals for the Federal Circuit, the

[[Page 71009]]

patent owner may cross appeal to the U.S. Court of Appeals for the 
Federal Circuit if also dissatisfied with the decision of the Board of 
Patent Appeals and Interferences.
    (e) A party electing to participate in an appellant's appeal must, 
within fourteen days of service of the appellant's notice of appeal 
under paragraph (b) of this section, or notice of cross appeal under 
paragraphs (c) or (d) of this section, take the following steps:
    (1) In the U.S. Patent and Trademark Office, timely file a written 
notice directed to the Director electing to participate in the 
appellant's appeal to the U.S. Court of Appeals for the Federal Circuit 
by mail to, or hand service on, the General Counsel as provided in 
Sec.  104.2;
    (2) In the U.S. Court of Appeals for the Federal Circuit, file a 
copy of the notice electing to participate in accordance with the rules 
of the U.S. Court of Appeals for the Federal Circuit; and
    (3) Serve a copy of the notice electing to participate on every 
other party in the reexamination proceeding in the manner provided in 
Sec.  1.248.
    (f) Notwithstanding any provision of the rules, in any 
reexamination proceeding commenced prior to November 2, 2002, the third 
party requester is precluded from appealing and cross appealing any 
decision of the Board of Patent Appeals and Interferences to the U.S. 
Court of Appeals for the Federal Circuit, and the third party requester 
is precluded from participating in any appeal taken by the patent owner 
to the U.S. Court of Appeals for the Federal Circuit.

    Dated: December 9, 2003.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 03-31398 Filed 12-19-03; 8:45 am]
BILLING CODE 3510-16-P