[Federal Register Volume 71, Number 36 (Thursday, February 23, 2006)]
[Rules and Regulations]
[Pages 9260-9262]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 06-1678]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2006-0007]
RIN 0651-AC02


Clarification of Filing Date Requirements for Ex Parte and Inter 
Partes Reexamination Proceedings

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Interim rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
revising the rules of practice relating to the filing date requirements 
for ex parte and inter partes reexamination proceedings for consistency 
with the provisions of the patent statute governing ex parte and inter 
partes reexamination proceedings. The Office is specifically revising 
the rules to require that a request for ex parte reexamination or for 
inter partes reexamination must meet all the applicable statutory 
requirements before a filing date is accorded to the request for ex 
parte reexamination or for inter partes reexamination.

DATES: Effective Date: March 27, 2006.
    Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before April 24, 2006. No public 
hearing will be held.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: ac2/[email protected]. Comments may also be 
submitted by mail addressed to: Box Comments--Patents, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, or by facsimile 
transmission to (571) 273-7710 marked to the attention of Kenneth M. 
Schor. Although comments may be submitted by mail or facsimile, the 
Office prefers to receive comments via the Internet. If comments are 
submitted by mail, the Office prefers that the comments be submitted on 
a DOS formatted 3\1/2\ inch disk accompanied by a paper copy.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (http://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, located in Madison East, Tenth Floor, 
600 Dulany Street, Alexandria, Virginia, and will be available via the 
Office Internet Web site (address: http://www.uspto.gov). Because 
comments will be made available for public inspection, information that 
is not desired to be made public, such as an address or phone number, 
should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: By telephone--Kenneth M. Schor, at 
(571) 272-7710 or Robert J. Spar at (571) 272-7700; 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 (571) 273-7710 marked to the attention of Kenneth M. Schor; or by 
electronic mail message over the Internet addressed to 
[email protected].

SUPPLEMENTARY INFORMATION: The Office is revising the rules of practice 
in title 37 of the Code of Federal Regulations (CFR) to require that a 
request for ex parte reexamination or for inter partes reexamination 
must meet all the applicable statutory requirements in 35 U.S.C. 302 or 
311 before a filing date is accorded to the request for ex parte 
reexamination or for inter partes reexamination. Thus, the Office is 
amending the rules to clearly require compliance with all the 
requirements of filing an ex parte reexamination request (set forth in 
37 CFR 1.510(b)) before a filing date will be assigned to an ex parte 
reexamination request, and to clearly require compliance with all the 
requirements of filing an inter partes reexamination request (set forth 
in 37 CFR 1.915(b)) before a filing date will be assigned to an inter 
partes reexamination request.
    Section 1.510 sets forth the requirements for the content of a 
request for ex parte reexamination. Section 1.915 sets forth the 
requirements for the content of a request for inter partes 
reexamination.
    Former Sec.  1.510(d) states that the filing date of a request for 
ex parte reexamination is ``(1) The date on which the request including 
the entire fee for requesting reexamination is received in the Patent 
and Trademark Office; or (2) The date on which the last portion of the 
fee for requesting reexamination is received'' (emphasis added). In 
like manner, former Sec.  1.919(a) states that ``[t]he filing date of a 
request for inter partes reexamination is the date on which the request 
satisfies the fee requirement of Sec.  1.915(a)'' (emphasis added). 
Given the former rule language, it may have appeared that compliance 
with the provisions of Sec.  1.510(b) or

[[Page 9261]]

Sec.  1.915(b) is not required for obtaining a filing date in 
reexamination. However, 35 U.S.C. 302 (for ex parte reexamination) 
requires that ``[t]he request must set forth the pertinency and manner 
of applying cited prior art to every claim for which reexamination is 
requested.'' Likewise, 35 U.S.C. 311(b) (for inter partes 
reexamination) requires that the request must ``include the identity of 
the real party in interest'' and ``set forth the pertinency and manner 
of applying cited prior art to every claim for which reexamination is 
requested.'' Reexamination requesters do not always comply with these 
statutory requirements when submitting requests for reexamination. 
Furthermore, the information missing due to a lack of compliance with 
Sec.  1.510(b) or Sec.  1.915(b) is often relevant to the decision on 
whether to grant the request for reexamination. This presents a 
difficulty for the Office in view of the statutory requirements of 35 
U.S.C. 303 (for ex parte reexamination) and 35 U.S.C. 312 (for inter 
partes reexamination) that the decision on the request must be issued 
within three months of the filing date of the request for reexamination 
because the process of notifying the requester of non-compliance and 
obtaining the missing information may very well extend beyond the 
three-month statutory deadline, or the information may be provided so 
close to the deadline that there is not sufficient time to properly 
evaluate it.
    To address this problem, Sec. Sec.  1.510(c) and (d) are revised to 
clearly require compliance with all the requirements of Sec. Sec.  
1.510(a) and (b) in order to obtain an ex parte reexamination filing 
date (and a decision on the request for reexamination). Likewise, Sec.  
1.919(a) is revised to clearly require compliance with all the 
requirements of Sec.  1.915 in order to obtain an inter partes 
reexamination filing date. This revision should not have a significant 
impact on reexamination requesters because the filing date in a 
reexamination proceeding does not have the same legal significance as 
the filing date in other Office patent proceedings (cf. 35 U.S.C. 
102(b)). The rules now simply clearly recite that the statutory 
requirements for a request for reexamination must be fulfilled before a 
filing date will be assigned. See 35 U.S.C. 302 and 35 U.S.C. 311.

Section-by-Section Discussion

    Section 1.510: Section 1.510(c) is revised to provide that if a 
request for ex parte reexamination does not (1) include the fee for 
requesting ex parte reexamination and (2) comply with all the 
requirements of Sec.  1.510(b), then the person identified as 
requesting reexamination will be notified and will generally be given 
an opportunity to complete the request within a specified time. If the 
request is not completed within the time specified, the request will 
not be granted a filing date and no decision on the request will be 
made. The request may be placed in the patent file as a citation if it 
complies with the requirements of Sec.  1.501. Deleted from former 
Sec.  1.510(c) is the sentence: ``If the fee for requesting 
reexamination has been paid but the defect in the request is not 
corrected within the specified time, the determination whether or not 
to institute reexamination will be made on the request as it then 
exists.''
    Section 1.510(c) states that the requester will ``generally'' be 
given an opportunity to complete the request, because, in some 
instances, it may not be practical or even possible to provide an 
opportunity for completion of the request. For example, the request 
might be submitted anonymously (though such is not proper), or without 
an address, or with an inoperative address. In such instances, the 
requester would be notified of the incomplete request by publication in 
the Official Gazette, but an opportunity to complete the request would 
not be provided.
    Section 1.510(d) is revised to provide that the filing date of the 
request for an ex parte reexamination request is the date on which the 
request satisfies all the requirements of Sec. Sec.  1.510(a) and (b). 
Until that point, the request for reexamination is not complete.
    Section 1.915: Section 1.915(d) is revised to provide that if a 
request for inter partes reexamination does not (1) include the fee for 
requesting inter partes reexamination and (2) comply with all the 
requirements of Sec.  1.915(b), then the person identified as 
requesting reexamination will be notified and will generally be given 
an opportunity to complete the request within a specified time. If the 
request is not completed within the time specified, the request will 
not be granted a filing date and no decision on the request will be 
made.
    Section 1.915(d) states that the requester will ``generally'' be 
given an opportunity to complete the request, because, in some 
instances, it may not be practical or even possible to provide an 
opportunity for completion of the request (see discussion of Sec.  
1.510(c)).
    Section 1.915(d) stated, prior to the change made via the present 
rule making, that the reexamination proceeding may be vacated under 
this circumstance. Based on the revision to Sec.  1.919(a) set forth 
immediately below, however, the inter partes request will not be 
granted a filing date under this circumstance; thus, there will be no 
reexamination proceeding to vacate.
    Section 1.919: Section 1.919(a) is revised to require that the 
request for inter partes reexamination must satisfy all the 
requirements for the request set forth in Sec.  1.915, prior to 
assignment of a filing date. Until that point, the request for 
reexamination is not complete.

Rule Making Considerations

    Administrative Procedure Act: The changes in this interim rule 
merely revise the rules of practice (37 CFR 1.510 and 1.915) to require 
that a request for ex parte reexamination or for inter partes 
reexamination meets the requirements in 35 U.S.C. 302 and 311 for a 
request for ex parte reexamination or for inter partes reexamination 
before a filing date is accorded to the request for ex parte 
reexamination or for inter partes reexamination. Therefore, these rule 
changes involve interpretive rules, or rules of agency practice and 
procedure under 5 U.S.C. 553(b)(A), and prior notice and an opportunity 
for public comment were not required pursuant to 5 U.S.C. 553(b)(A) (or 
any other law). See Bachow Communications Inc. v. FCC, 237 F.3d 683, 
690 (DC Cir. 2001) (rules governing an application process are ``rules 
of agency organization, procedure, or practice'' and are exempt from 
the Administrative Procedure Act's notice and comment requirement); see 
also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 
1347, 1351 (Fed. Cir. 1996) (the rules of practice promulgated under 
the authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are 
not substantive rules (to which the notice and comment requirements of 
the Administrative Procedure Act apply)), and Fressola v. Manbeck, 36 
USPQ2d 1211, 1215 (D.D.C. 1995) (``it is doubtful whether any of the 
rules formulated to govern patent and trade-mark practice are other 
than `interpretative rules, general statements of policy, * * * 
procedure, or practice.' '') (quoting C.W. Ooms, The United States 
Patent Office and the Administrative Procedure Act, 38 Trademark Rep. 
149, 153 (1948)). Accordingly, prior notice and an opportunity for 
public comment were not required pursuant to 5 U.S.C. 553(b)(A) (or any 
other law).
    Regulatory Flexibility Act: As discussed previously, the changes in 
this interim rule involve rules of agency practice and procedure under 
5 U.S.C. 553(b)(A), and prior notice and an opportunity for public 
comment were not required pursuant to 5 U.S.C.

[[Page 9262]]

553(b)(A) (or any other law). As prior notice and an opportunity for 
public comment were not required pursuant to 5 U.S.C. 553 (or any other 
law) for the changes in this interim rule, a regulatory flexibility 
analysis under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is 
not required for the changes in this interim rule. 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 (August 4, 1999).
    Executive Order 12866: This rulemaking has been determined to be 
not significant for purposes of Executive Order 12866 (September 30, 
1993).
    Paperwork Reduction Act: This interim rule involves information 
collection requirements which are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collection of information involved in 
this interim rule has been reviewed and previously approved by OMB 
under OMB control number 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 interim rule do 
not affect the information collection requirements associated with the 
information collection under OMB control number 0651-0033. The 
principal impacts of the changes in this interim rule are to clarify 
the requirement for compliance with all the requirements of filing a 
reexamination before a filing date will be assigned to a reexamination.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this burden 
to: (1) The Office of Information and Regulatory Affairs, Office of 
Management and Budget, New Executive Office Building, Room 10202, 725 
17th Street, NW., Washington, DC 20503, Attention: Desk Officer for the 
Patent and Trademark Office; and (2) Robert J. Spar, Director, Office 
of Patent Legal Administration, Commissioner for Patents, P.O. Box 
1450, Alexandria, Virginia 22313-1450.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

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

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

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), unless otherwise noted.

0
2. Section 1.510 is amended by revising paragraphs (c) and (d) to read 
as follows:


Sec.  1.510  Request for ex parte reexamination.

* * * * *
    (c) If the request does not include the fee for requesting ex parte 
reexamination required by paragraph (a) of this section and all of the 
parts required by paragraph (b) of this section, then the person 
identified as requesting reexamination will be so notified and will 
generally be given an opportunity to complete the request within a 
specified time. Failure to comply with the notice will result in the ex 
parte reexamination request not being granted a filing date, and will 
result in placement of the request in the patent file as a citation if 
it complies with the requirements of Sec.  1.501.
    (d) The filing date of the request for ex parte reexamination is 
the date on which the request satisfies all the requirements of 
paragraphs (a) and (b) of this section.
* * * * *

0
3. Section 1.915 is amended by revising paragraph (d) as follows:


Sec.  1.915  Content of request for inter partes reexamination.

* * * * *
    (d) If the inter partes request does not meet all the requirements 
of subsection 1.915(b), the person identified as requesting inter 
partes reexamination will be so notified and will generally be given an 
opportunity to complete the formal requirements of the request within a 
specified time. Failure to comply with the notice will result in the 
inter partes reexamination request not being granted a filing date.

0
4. Section 1.919 is amended by revising paragraph (a) to read as 
follows:


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

    (a) The filing date of a request for inter partes reexamination is 
the date on which the request satisfies all the requirements for the 
request set forth in Sec.  1.915.
* * * * *

    Dated: February 16, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 06-1678 Filed 2-22-06; 8:45 am]
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