[Federal Register Volume 68, Number 249 (Tuesday, December 30, 2003)]
[Notices]
[Pages 75217-75218]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-31930]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. 2003-C-031]


Request For Comments and Notice of Round Table Meeting Regarding 
The Equities of Inter Partes Reexamination Proceedings

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments and notice of round table meeting.

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SUMMARY: The United States Patent and Trademark Office (USPTO) seeks 
comments from former, current and prospective participants and other 
interested parties on whether inter partes reexamination proceedings 
are believed to be inequitable to any of the parties in interest and, 
if so, what changes are suggested to remove such inequities. As a part 
of this effort, USPTO announces the scheduling of a round table meeting 
to receive views on the effectiveness and possible improvement of inter 
partes reexamination proceedings.

DATES: Comments must be received by February 20, 2004, to ensure 
consideration. Requests to participate in the round table meeting must 
be received by January 28, 2004. The USPTO will make reasonable efforts 
to balance the interests represented at the round table meeting. If it 
becomes necessary to limit the number of participants, preference will 
be given to first-in-time requests to participate. The round table 
meeting is tentatively scheduled for February 17, 2004, at USPTO 
offices in Arlington, Virginia.

ADDRESSES: Written comments and requests to participate in the round 
table meeting should be (a) addressed to the United States Patent and 
Trademark Office, Office of Congressional Relations, Room 902, 2121 
Crystal Drive, Arlington, VA 22202, ATTN: Anggie Reilly, Inter Partes 
Reexam; (b) faxed to Anggie Reilly's attention at (703) 305-8885; or 
(c) sent via electronic mail to [email protected]. The 
specific time and location for the round table meeting will be 
communicated to participants and posted on USPTO's Web site at 
www.uspto.gov. That notice also will

[[Page 75218]]

include information for persons wishing to observe the round table 
meeting.

FOR FURTHER INFORMATION CONTACT: Anggie Reilly by telephone at (703) 
305-9300 or by electronic mail at [email protected].

SUPPLEMENTARY INFORMATION:

Background

    Ex parte reexamination of patents, and the procedures for same, 
were enacted by Congress in 1980 to serve as expedited, low-cost 
alternatives to patent litigation in reviewing certain aspects of 
patent validity. Subsequent Congressional review indicated that ex 
parte reexamination of patents was being used infrequently, primarily 
because a third party who requested reexamination was unable to 
participate after initiating the reexamination proceeding. Interested 
parties suggested that the volume of lawsuits in district courts would 
be reduced if third parties were encouraged and able to use 
reexamination procedures that provided an opportunity to argue their 
case for patent invalidity at the USPTO. To address those concerns and 
provide such an opportunity, Congress enacted the ``Optional Inter 
Partes Reexamination Procedure Act of 1999'' as Subtitle F of the 
``American Inventors Protection Act of 1999'' (Pub. L. 106-113). While 
the existing ex parte reexamination procedures remain intact, the 
separate optional inter partes reexamination procedures enacted in 1999 
permit third party requesters to submit a written comment each time the 
patent owner files a response to the USPTO, to appeal an adverse 
decision of the patent examiner to the Board of Patent Appeals and 
Interferences (BPAI), and to participate in a patent owner's appeal to 
the BPAI in support of the patent examiner's rejection of claims. Third 
party requesters did not, however, have the ability to appeal further 
to the Court of Appeals for the Federal Circuit, nor to participate in 
the patent owner's appeal to the Court. In addition, an estoppel 
adverse to a third party requester (which does not exist in ex parte 
reexamination) attaches, if the requester is unsuccessful in the inter 
partes reexamination proceeding. The 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. (35 U.S.C. 315(c).) Also, the requester is estopped from 
later challenging in a civil action any ``fact'' determined in the 
inter partes reexamination. (Section 4607 of the Optional Inter Partes 
Reexamination Procedure Act of 1999.)
    In order to make the optional inter partes procedures a more 
attractive alternative to litigation, Congress enacted, in 2002, 
sections 13105 and 13106 of subtitle A of the 21st Century Department 
of Justice Appropriations Authorization Act (Pub. L. 107-273). Those 
sections (1) provide third party inter partes reexamination requesters 
with the right to appeal to the Court of Appeals for the Federal 
Circuit and to participate in the patent owner's appeal to the Court 
and (2) clarify that reexamination (both ex parte and inter partes 
reexamination) may be based on a patent or printed publication 
previously cited by or to USPTO, or considered by USPTO, as long as a 
substantial new question of patentability is raised. The estoppel 
provisions of the Optional Inter Partes Reexamination Procedure Act of 
1999 were not, however, deleted by the Justice Appropriations 
Authorization Act.
    To assist Congress in its continuing oversight of patent 
operations, Section 4606 of the ``Optional Inter Partes Reexamination 
Procedure Act of 1999'' includes the requirement that the USPTO submit 
to the Congress, within five years of the 1999 enactment, a report 
evaluating whether the inter partes reexamination proceedings 
established by the Act are ``inequitable to any of the parties in 
interest.'' If inequity is determined to exist, the USPTO's report must 
then contain ``recommendations for changes * * * to remove such 
inequity.''

Request for Comments

    To aid the USPTO in compiling the required report to Congress, the 
USPTO requests that interested parties having comments and/or 
recommendations on promoting equity in inter partes reexamination 
proceedings submit same to the USPTO. It is suggested that any such 
input to the USPTO include responses to the following questions:
    (1) Do you qualify as, or do you represent, a small entity?
    (2) Have you been a participant, i.e., a third party requester or a 
patent owner party, in one or more inter partes reexamination 
proceedings?
    (3) Are inter partes reexamination proceedings inequitable to any 
of the parties in interest?
    (4) What particular procedures or lack of procedures do you feel 
are inequitable?
    (5) What administrative action(s) should USPTO take to remove the 
identified inequities?
    (6) What legislative/statutory action(s) should Congress take to 
remove the identified inequities?
    Comments must be received by February 20, 2004, to ensure 
consideration. Such comments should be addressed as indicated above, 
and clearly identified as Comments in response to the Federal Register 
Notice titled ``Request for comments and notice of round table meeting 
regarding The Equities of Inter Partes Reexamination Proceedings.''

Round Table Meeting

    In addition, the USPTO will conduct a round table meeting to hear 
views on the effectiveness and possible improvement of inter partes 
reexamination proceedings. The round table meeting is tentatively 
scheduled for February 17, 2004, in USPTO offices in Arlington, 
Virginia.
    Requests to participate in the round table meeting must be received 
by January 28, 2004. Such requests should be addressed as indicated 
above, and clearly identified as requests to participate in the round 
table meeting. The USPTO will make reasonable efforts to balance the 
interests represented at the round table meeting tentatively scheduled 
for February 17, 2004. If it becomes necessary to limit the number of 
participants, preference will be given to first-in-time requests. 
Notice of the specific time and location for the round table meeting 
will be communicated to participants and posted on USPTO's Web site at 
www.uspto.gov. That notice also will include information for persons 
wishing to observe the round table meeting.

    Dated: December 19, 2003.
Jon W. Dudas,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 03-31930 Filed 12-29-03; 8:45 am]
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