[Federal Register Volume 72, Number 72 (Monday, April 16, 2007)]
[Rules and Regulations]
[Pages 18892-18907]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E7-7202]


=======================================================================
-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 41

[Docket No.: PTO-P-2005-0016]
RIN 0651-AB77


Revisions and Technical Corrections Affecting Requirements for Ex 
Parte and Inter Partes Reexamination

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Final rule.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (Office) is 
revising the rules of practice relating to ex parte and inter partes 
reexamination. The Office is designating the correspondence address for 
the patent as the correct address for all communications for patent 
owners in an ex parte reexamination or an inter partes reexamination, 
and simplifying the filing of reexamination papers by providing for the 
use of a single ``mail stop'' address for the filing of substantially 
all ex parte reexamination papers (such is already the case for inter 
partes reexamination papers). The Office is revising the rules to 
prohibit supplemental patent owner responses to an Office action in an 
inter partes reexamination proceeding without a showing of sufficient 
cause. Finally, the Office is making miscellaneous clarifying changes 
as to terminology and applicability of the reexamination rules. The 
Office is not implementing its proposal (that was set forth in the 
proposed rule making) to newly provide for a patent owner reply to a 
request for reexamination, prior to the Office's decision on the 
request.

DATES: Effective Date: May 16, 2007.
    Applicability Date: The changes in this final rule apply to any 
reexamination proceeding (ex parte or inter partes) which is pending 
before the Office as of May 16, 2007 and to any reexamination 
proceeding which is filed after that date.

FOR FURTHER INFORMATION CONTACT: By telephone--Kenneth M. Schor, Senior 
Legal Advisor at (571) 272-7710; 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 (e-mail) over the Internet addressed to 
[email protected].

SUPPLEMENTARY INFORMATION: The Office is revising the rules of practice 
relating to ex parte and inter partes reexamination as follows:
    I: Designating the correspondence address for the patent as the 
correct address for all notices, official letters, and other 
communications for patent owners in an ex parte reexamination or an 
inter partes reexamination. Also, simplifying the filing of 
reexamination papers by providing for the use of ``Mail Stop Ex Parte 
Reexam'' for the filing of all ex parte reexamination papers (not just 
ex parte reexamination requests), other than certain correspondence to 
the Office of the General Counsel.
    II: Prohibiting supplemental patent owner responses to an Office 
action in an inter partes reexamination without a showing of sufficient 
cause.
    III: Making miscellaneous clarifying changes as to the terminology 
and applicability of the reexamination rules, and correcting 
inadvertent errors in the text of certain reexamination rules.

I. Reexamination Correspondence

    Subpart 1--The Patent Owner's Address of Record: Section 1.33(c) 
has been revised to designate the correspondence address for the patent 
to be reexamined, or being reexamined, as the correct address for all 
notices, official letters, and other communications for patent owners 
in reexamination proceedings. Prior to this revision to Sec.  1.33(c), 
all notices, official letters, and other communications for patent 
owners in a reexamination proceeding had been directed to the attorney 
or agent of record in the patent file at the address listed on the 
register of patent attorneys and agents maintained by the Office of 
Enrollment and Discipline (OED) pursuant to Sec.  11.5 and Sec.  11.11 
(hereinafter, the ``attorney or agent of record register address'').
    The correspondence address for any pending reexamination proceeding 
not having the same correspondence address as that of the patent is, by 
way of this revision to Sec.  1.33(c), automatically changed to that of 
the patent file--as of the effective date of this Notice. For any such 
proceeding, it is strongly encouraged that the patent owner 
affirmatively file a Notification of Change of Correspondence Address 
in the reexamination proceeding and/or the patent to conform the 
address of the proceeding with that of the patent and to clarify the 
record as to which address should be used for correspondence. While the 
correspondence address change for the reexamination proceeding is 
automatically effected (by rule) even if the patent owner notification 
is not filed, such a patent owner notification clarifies the record, 
and addresses the possibility that, absent such a patent owner 
notification, correspondence may inadvertently be mailed to an 
incorrect address, causing a delay in the prosecution.
    This revision to Sec.  1.33(c) is based on the following: (1) Prior 
to the revision, the Office had received reexamination filings where 
the request had been served on the patent owner at the correspondence 
address under Sec.  1.33(a) that was the correct address for the 
patent, rather than at the attorney or agent of record register address 
that was the previously prescribed (prior to the present rule revision) 
correspondence address in Sec.  1.33(c) for use in reexamination. This 
occurred because the Sec.  1.33(a) address was, and is, the address 
used for correspondence during

[[Page 18893]]

the pendency of applications, as well as post-grant correspondence in 
patents maturing from such applications. (2) Further, even if a 
potential reexamination requester realized that the attorney or agent 
of record register address was the proper patent owner address to use, 
patent practitioners occasionally move from one firm to another, and a 
potential reexamination requester was then faced with two (or more) 
Sec.  1.33(c) addresses for the practitioners of record; the requester 
then had to decide which practitioner to serve. (3) Finally, the 
``attorney or agent of record register address'' might not be kept up-
to-date. In this regard, the OED regularly has mail returned because 
the register of patent attorneys and agents maintained pursuant to 
Sec.  11.5 and Sec.  11.11 is not up-to-date. On the other hand, a 
practitioner or patent owner was, and is, likely to be inclined to keep 
the Sec.  1.33(a) address up-to-date for prompt receipt of notices 
regarding the patent. Thus, the correspondence address for the patent 
provides a better or more reliable option for the patent owner's 
address than does the address in the register of patent attorneys and 
agents maintained by OED pursuant to Sec.  11.5 and Sec.  11.11 (which 
was the reexamination address for the patent owner called for by Sec.  
1.33(c) prior to the present revision of Sec.  1.33(c)).
    As was pointed out in the notice of proposed rule making (Revisions 
and Technical Corrections Affecting Requirements for Ex Parte and Inter 
Partes Reexamination, 71 FR 16072 (March 30, 2006) 1305 Off. Gaz. Pat. 
Office 132 (April 25, 2006)), a change to the correspondence address 
may be filed with the Office during the enforceable life of the patent, 
and the correspondence address will be used in any correspondence 
relating to maintenance fees unless a separate fee address has been 
specified. See Sec.  1.33(d). A review of randomly selected recent 
listings of inter partes reexamination filings reflected that all had 
an attorney or agent of record for the related patents. There were an 
average of 18.6 attorneys or agents of record for the patents, and for 
those attorneys or agents, an average of 3.8 addresses (according to 
the register of patent attorneys and agents maintained pursuant to 
Sec.  11.5 and Sec.  11.11). Although for half of the patents, all of 
the attorneys or agents had the same address, one patent had 77 
attorneys and agents of record, and the register reflects 18 different 
addresses for these practitioners. In such a patent with many different 
attorneys and agents of record, and many of the practitioners in 
different states, mailing a notice related to a reexamination 
proceeding for the patent to the OED register address of an attorney or 
agent of record in the patented file, even the attorney or agent most 
recently made of record, is likely to result in correspondence not 
being received by the appropriate party (prior to the present rule 
change, the notice would have been mailed to the first-listed attorney 
or agent of record).
    Since the correspondence address of the patent file is used for 
maintenance fee correspondence where a fee address is not specified, 
patent owners already have an incentive to keep the correspondence 
address for a patent file up-to-date. Given the choice of relying on 
either the correspondence address for the patent or the address for the 
attorney/agent of record per the register of patent attorneys and 
agents (as was the case prior to the present revision of Sec.  
1.33(c)), it is more reasonable to rely on the correspondence address 
for the patent. The patentee is responsible for updating the 
correspondence address for the patent, and if the patentee does not, 
then the patentee appropriately bears the risk of a terminated 
reexamination prosecution due to the failure to respond to an Office 
action sent to an obsolete address. Further, use of the correspondence 
address for the patent provides both a potential reexamination 
requester and the Office with one simple address to work with, and the 
requester and the Office should not be confused in the situations where 
attorneys move from firm to firm (as that has become more common). The 
correspondence address for the patent is available in public PAIR 
(Patent Application Information Retrieval) at the Office's Web site 
www.uspto.gov, so that a requester need only click on the address 
button for the patent, and he/she will know what address to use.
    Subpart 2--Reexamination correspondence addressed to the Office: 
Section 1.1(c) is revised to prescribe the use of ``Mail Stop Ex Parte 
Reexam'' for the filing of all ex parte reexamination papers (not just 
ex parte reexamination requests), other than correspondence to the 
Office of the General Counsel pursuant to Sec.  1.1(a)(3) and Sec.  
1.302(c).
    In the final rule Changes to Implement the 2002 Inter Partes 
Reexamination and Other Technical Amendments to the Patent Statute, 68 
FR 70996 (Dec. 22, 2003), 1278 Off. Gaz. Pat. Office 218 (Jan. 20, 
2004), Sec.  1.1(c) was amended to provide separate mail stops for ex 
parte reexamination proceedings and inter partes reexamination 
proceedings. As per that rule making, the mail stop for ex parte 
reexamination proceedings could only be used for the original request 
papers for ex parte reexamination. The new mail stop for inter partes 
reexamination, on the other hand, was to be used for 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)), because the Central 
Reexamination Unit (CRU) was (and still is) the central receiving area 
for all inter partes reexamination proceeding papers. The CRU has now 
also become the central receiving area for all ex parte reexamination 
proceeding papers. Accordingly, the filing of ex parte reexamination 
papers is now simplified by revising Sec.  1.1(c) to require the use of 
``Mail Stop Ex Parte Reexam'' for the filing of all ex parte 
reexamination papers (original request papers and all subsequent 
correspondence), 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 all reexamination proceedings is best handled at one 
central location where Office personnel have specific expertise in 
reexamination because of the unique nature of reexamination 
proceedings. That central location is the CRU.

II. To Prohibit Supplemental Patent Owner Responses to an Office Action 
Without a Showing of Sufficient Cause

    The Office is amending Sec.  1.945 to provide that a patent owner 
supplemental response (which can be filed to address a third-party 
requester's comments on patent owner's initial response to an Office 
action) will be entered only where the patent owner has made a showing 
of sufficient cause as to why the supplemental response should be 
entered.
    Pursuant to Sec.  1.937(b), an inter partes reexamination 
proceeding is ``conducted in accordance with Sec. Sec.  1.104 through 
1.116, the sections governing the application examination process * * * 
except as otherwise provided * * *'' Thus, a patent owner's response to 
an Office action is governed by Sec.  1.111. Prior to the revision of 
Sec.  1.111(a)(2) implemented via the final rule, Changes To Support 
Implementation of the United States Patent and Trademark Office 21st 
Century Strategic Plan, 69 FR 56482 (Sept. 21, 2004), 1287 Off. Gaz. 
Pat. Office 67 (Oct. 12, 2004) (final rule), a patent owner could file 
an unlimited number of supplemental responses to an Office action for 
an inter partes reexamination proceeding, thereby delaying prosecution. 
The changes to Sec.  1.111(a)(2) made in the Strategic Plan final rule, 
in effect, addressed this

[[Page 18894]]

undesirable consequence of the rules in reexamination by providing that 
a reply (or response, in reexamination) which is supplemental to a 
Sec.  1.111(b) compliant reply will not be entered as a matter of right 
(with the exception of a supplemental reply filed while action by the 
Office is suspended under Sec.  1.103(a) or (c)).
    Section 1.111(a)(2)(i), as implemented in the Strategic Plan final 
rule, provides that ``the Office may enter'' a supplemental response to 
an Office action under certain conditions. Whether or not the 
supplemental response should be entered, based on the individual 
circumstances for submission of a supplemental response is a question 
to be decided by the Office. In order to fully inform both the Office 
and the requester (so that the requester can provide rebuttal in its 
comments) as to why patent owner deems a supplemental response to be 
worthy of entry, Sec.  1.945 has been revised to require a patent owner 
showing of sufficient cause why entry should be permitted to accompany 
any supplemental response by the patent owner. The showing of 
sufficient cause must provide: (1) A detailed explanation of how the 
criteria of Sec.  1.111(a)(2)(i) is satisfied; (2) an explanation of 
why the supplemental response was not presented together with the 
original response to the Office action; and (3) a compelling reason to 
enter the supplemental response. It is to be noted that in some 
instances, where there is a clear basis for the supplemental response, 
this three-prong showing may be easily satisfied. Thus, for example, 
the patent claim text may have been incorrectly reproduced, where a 
patent claim is amended in the original response. In such an instance, 
the patent owner need only point to the Sec.  1.111(a)(2)(i)(E) 
provision for correction of informalities (e.g., typographical errors), 
and state that the incorrect reproduction of the claim was not noted in 
the preparation of the original response. The compelling reason to 
enter the supplemental response is implicit in such a statement, as the 
record for the proceeding certainly must be corrected as to the 
incorrect reproduction of the claim.
    This revision permits the entry of a supplemental response to an 
Office action where there is a valid reason for it, and a showing to 
that effect is made by the patent owner. At the same time, it provides 
both the Office and the requester with notice of patent owner's reasons 
for desiring entry, and it permits the requester to rebut patent 
owner's stated position.
    It is to be noted that any requester comments filed after a patent 
owner response to an Office action must be filed ``within 30 days after 
the date of service of the patent owner's response.'' 35 U.S.C. 
314(b)(2). Thus, where the patent owner files a supplemental response 
to an Office action, the requester would be well advised to file any 
comments deemed appropriate within 30 days after the date of service of 
the patent owner's supplemental response to preserve requester's 
comment right, in the event the Office exercises its discretion to 
enter the supplemental response. (The requester's comments may address 
whether the patent owner showing is adequate, in addition to addressing 
the merits of the supplemental response.) If the patent owner's 
supplemental response is not entered by the Office, then both the 
supplemental response, and any comments following that supplemental 
response, will either be returned to parties or discarded as the Office 
chooses in its sole discretion. If the supplemental response and/or 
comments were scanned into the electronic Image File Wrapper (IFW) for 
the reexamination proceeding, and thus, the papers cannot be physically 
returned or discarded, then the supplemental response and/or comments 
entries will be marked ``closed'' and ``non-public,'' and they will not 
constitute part of the record of the reexamination proceeding. Such 
papers will not display in the Office's image file wrapper that is made 
available to the public, patent owners, and representatives of patent 
owners, i.e., they will not display in PAIR (Patent Application 
Information Retrieval) at the Office's Web site http://www.uspto.gov.

III. Clarifying Changes as to Reexamination Rule Terminology and 
Applicability, and Correction of Inadvertent Errors in the Text of 
Certain Reexamination Rules

    The Office is making miscellaneous clarifying changes as to the 
terminology and applicability of the reexamination rules. The rule 
changes of sub-parts 1 and 2 below were originally proposed in the 
Changes To Support Implementation of the United States Patent and 
Trademark Office 21st Century Strategic Plan, 68 FR 53816 (Sept. 12, 
2003), 1275 Off. Gaz. Pat. Office 23 (Oct. 7, 2003) (proposed rule) 
(hereinafter the Strategic Plan Proposed Rule). The Office did not 
proceed with those changes in the final rule Changes To Support 
Implementation of the United States Patent and Trademark Office 21st 
Century Strategic Plan, 69 FR 56482 (Sept. 21, 2004), 1287 Off. Gaz. 
Pat. Office 67 (Oct. 12, 2004) (final rule) (hereinafter the Strategic 
Plan Final Rule). The Office then re-presented those proposals in 
Revisions and Technical Corrections Affecting Requirements for Ex Parte 
and Inter Partes Reexamination, 71 FR 16072 (March 30, 2006) 1305 Off. 
Gaz. Pat. Office 132 (April 25, 2006) (proposed rule) after further 
consideration and in view of the changes made by the final rule Rules 
of Practice Before the Board of Patent Appeals and Interferences, 69 FR 
49960 (Aug. 12, 2004), 1286 Off. Gaz. Pat. Office 21 (Sept. 7, 2004) 
(final rule) (hereinafter, the Appeals final rule). The essential 
substance of the changes set forth in sub-parts 1 and 2, remains as 
originally proposed in the Strategic Plan Proposed Rule.
    The four types (sub-parts) of revisions are explained as follows:
    Sub-part 1. The rules are amended to clarify that ``conclusion'' of 
a reexamination ``proceeding'' takes place when the reexamination 
certificate is issued and published, while ``termination'' of the 
``prosecution'' of the proceeding takes place when the patent owner 
fails to file a timely response in an ex parte or inter partes 
reexamination proceeding, or a Notice of Intent to Issue Reexamination 
Certificate (NIRC) is issued, whichever occurs first. This distinction 
is important, because a reexamination prosecution that is terminated 
may be reopened at the option of the Director where appropriate. For 
example, a rejection that was withdrawn during the proceeding may be 
reinstated after the prosecution has terminated, where the propriety of 
that rejection has been reconsidered. In contrast, a reexamination 
proceeding that has been concluded is not subject to being reopened. 
After the reexamination proceeding has been concluded, the Office is 
not permitted to reinstate the identical ground of rejection in a 
subsequent reexamination proceeding, when the same question of 
patentability raised by the prior art in the concluded proceeding is 
the basis of the rejection. See section 13105, part (a), of the Patent 
and Trademark Office Authorization Act of 2002, enacted in Public Law 
107-273, 21st Century Department of Justice Appropriations 
Authorization Act, 116 Stat. 1758 (2002).
    This distinction between terminating the prosecution of the 
reexamination proceeding, and the conclusion of the reexamination 
proceeding, was highlighted by the Federal Circuit decision of In re 
Bass, 314 F.3d 575, 577, 65 USPQ2d 1156, 1157 (Fed. Cir. 2003), wherein 
the court indicated that

:
[[Page 18895]]


    Until a matter has been completed, however, the PTO may 
reconsider an earlier action. See In re Borkowski, 505 F.2d 713, 
718, 184 USPQ 29, 32-33 (CCPA 1974). A reexamination is complete 
upon the statutorily mandated issuance of a reexamination 
certificate, 35 U.S.C. 307(a); the NIRC merely notifies the 
applicant of the PTO's intent to issue a certificate. A NIRC does 
not wrest jurisdiction from the PTO precluding further review of the 
matter.

    Each of the Notice of Intent to Issue Reexamination Certificate 
cover sheet forms (ex parte reexamination Form PTOL 469 and inter 
partes reexamination Form PTOL 2068) specifically states (in its 
opening sentence) that ``[p]rosecution on the merits is (or remains) 
closed in this * * * reexamination proceeding. This proceeding is 
subject to reopening at the initiative of the Office, or upon 
petition.'' This statement in both forms makes the point that the NIRC 
terminates the prosecution in the reexamination proceeding (if 
prosecution has not already been terminated, e.g., via failure to 
respond), but does not (terminate or) conclude the reexamination 
proceeding itself. Rather, it is the issuance and publication of the 
reexamination certificate that concludes the reexamination proceeding. 
The rules are revised accordingly.
    Definitional Consideration: In the Strategic Plan Proposed Rule, 
the terminology used was that a patent owner's failure to file a timely 
response in a reexamination proceeding (and the issuance of the NIRC) 
would ``conclude'' the prosecution of the reexamination proceeding, but 
would not terminate the reexamination proceeding, and the issuance and 
publication of a reexamination certificate would ``terminate'' the 
reexamination proceeding. This usage of ``conclude'' and ``terminate'' 
has been reconsidered, however, and the usage of the terms has been 
reversed to be consistent with the way the Office defines 
``termination,'' as can be observed in the recent Appeals final rule 
(supra.). It is to be noted that the patent statute, in 35 U.S.C. 
307(a), states for ex parte reexamination: ``In a reexamination 
proceeding under this chapter, when the time for appeal has expired or 
any appeal proceeding has terminated, the Director will issue and 
publish a certificate canceling any claim of the patent finally 
determined to be unpatentable, confirming any claim of the patent 
determined to be patentable, and incorporating in the patent any 
proposed amended or new claim determined to be patentable.'' (Emphasis 
added). 35 U.S.C. 316 contains an analogous statement for inter partes 
reexamination. Thus, after the appeal proceeding in the reexamination 
is terminated (which terminates the prosecution in the reexamination), 
the reexamination proceeding is concluded by the issuance and 
publication of the reexamination certificate.
    It is further observed that in the Appeals final rule, Sec.  
1.116(c) states that ``[t]he admission of, or refusal to admit, any 
amendment after a final rejection, a final action, an action closing 
prosecution, or any related proceedings will not operate to relieve the 
* * * reexamination prosecution from termination under Sec.  1.550(d) 
or Sec.  1.957(b) * * *.'' The use of ``termination of the 
prosecution'' is consistent with the presentation in Sec.  1.116(c) in 
the Appeals final rule. As a further indication in the Appeals final 
rule, Sec.  1.197(a) discusses the passing of jurisdiction over an 
application or patent under ex parte reexamination proceeding to the 
examiner after a decision by the Board of Patent Appeals and 
Interferences, and Sec.  1.197(b) then states that ``[p]roceedings on 
an application 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 * * *.'' Thus, the termination (of the appeal) 
does not signify the completion of an application or reexamination 
proceeding. Rather, the application then continues until patenting or 
abandonment, and the reexamination continues until issuance (and 
publication) of the reexamination certificate; at that point these 
proceedings are concluded.
    The above changes are directed to Sec. Sec.  1.502, 1.530(l)(2), 
1.550, 1.565(d), 1.570, 1.902, 1.953, 1.957, 1.958, 1.979, 1.991, 
1.997, and 41.4.
    Sub-part 2. The reexamination rules are revised to state that the 
reexamination certificate is ``issued and published.'' Prior to this 
revision, the rules referred to the issuance of the reexamination 
certificate, but failed to refer to the publication of the certificate.
    Pursuant to 35 U.S.C. 307(a), ``when the time for appeal has 
expired or any appeal proceeding has terminated, the Director will 
issue and publish a certificate * * *'' (emphasis added) for an ex 
parte reexamination proceeding. Likewise, for an inter partes 
reexamination, 35 U.S.C. 316(a) states that ``when the time for appeal 
has expired or any appeal proceeding has terminated, the Director shall 
issue and publish a certificate'' (emphasis added). Any reexamination 
proceeding is concluded when the reexamination certificate has been 
issued and published. It is at that point in time that the Office no 
longer has jurisdiction over the patent that has been reexamined. 
Accordingly, the titles of Sec. Sec.  1.570 and 1.997, as well as 
paragraphs (b) and (d), are now revised to track the language of 35 
U.S.C. 307 and 35 U.S.C. 316, and refer to both issuance and 
publication, to thereby make it clear in the rules when the 
reexamination proceeding is concluded. The other reexamination rules 
containing language referring to the issuance of the reexamination 
certificate are likewise revised. These changes are directed to 
Sec. Sec.  1.502, 1.530, 1.550, 1.565(c), 1.570, 1.902, 1.953, 1.957, 
1.979, and 1.997.
    Sub-part 3. In Sec.  1.137, the introductory text of paragraphs (a) 
and (b) previously stated ``a reexamination proceeding terminated under 
Sec. Sec.  1.550(d) or 1.957(b) or (c).'' [Emphasis added]. As pointed 
out in the discussion of the first sub-part, when the patent owner 
fails to timely respond, it is actually the prosecution of the 
reexamination that is terminated under Sec.  1.550(d) for ex parte 
reexamination, or is terminated under Sec.  1.957(b) for inter partes 
reexamination. For the Sec.  1.957(c) scenario, however, the 
prosecution of the inter partes reexamination proceeding is not 
terminated when the patent owner fails to timely respond pursuant to 
Sec.  1.957(c). Rather, an Office action is issued to permit the third 
party requester to challenge the claims found patentable (as to any 
matter where the requester has preserved the right of such a 
challenge), and the prosecution is ``limited to the claims found 
patentable at the time of the failure to respond, and to any claims 
added thereafter which do not expand the scope of the claims which were 
found patentable at that time.'' Section 1.957(c). Accordingly, the 
introductory text of Sec.  1.137(a), and that of Sec.  1.137(b), is now 
revised to provide for the situation where the prosecution is 
``limited'' pursuant to Sec.  1.957(c) (and the prosecution of the 
reexamination is not ``terminated''). Also, Sec.  1.137(e) is revised 
consistently with Sec.  1.137(a) and Sec.  1.137(b). Further, 
conforming changes are made to Sec. Sec.  1.8 and 41.4, which are 
revised to contain language that tracks that of Sec. Sec.  1.137(a) and 
1.137(b).
    It is noted that Sec.  1.957(c) does, in fact, result in the 
``terminating'' of reexamination prosecution as to the non-patentable 
claims (under Sec.  1.957(b), on the other hand, prosecution is 
terminated in toto). It would be confusing, however, to refer to a 
termination of reexamination prosecution in the Sec.  1.957(c) 
scenario, since the limited termination as to the

[[Page 18896]]

non-patentable claims could easily be confused with the termination of 
the entirety of the prosecution of Sec.  1.957(b). Accordingly, the 
Sec.  1.957(c) ``limited'' scope of prosecution to the scope of the 
claims found patentable is the language deemed better suited for use in 
the rules.
    Sub-part 4. Section 1.8(b) is revised to explicitly provide a 
remedy for an inter partes reexamination proceeding where 
correspondence was mailed or transmitted in accordance with paragraph 
Sec.  1.8(a) by a patent owner, and pursuant to Sec.  1.957(c), the 
reexamination prosecution is not terminated, but is rather ``limited to 
the claims found patentable at the time of the failure to respond, and 
to any claims added thereafter which do not expand the scope of the 
claims which were found patentable at that time.'' Pursuant to the 
previous version of Sec.  1.8(b), a remedy was provided for having 
correspondence considered to be timely filed, where correspondence was 
mailed or transmitted in accordance with paragraph Sec.  1.8(a) but not 
timely received in the Office, and ``the application [was] held to be 
abandoned or the proceeding is dismissed, terminated, or decided with 
prejudice.'' [Emphasis added.] It could have appeared that Sec.  1.8(b) 
did not apply to the Sec.  1.957(c) scenario where prosecution is 
``limited'' rather than ``terminated.'' Therefore, Sec.  1.8(b) is 
revised to explicitly apply the Sec.  1.8(b) remedy in the Sec.  
1.957(c) scenario as well.
    In addition, the certificate of mailing and transmission is 
available to a third party requester filing papers in an inter partes 
reexamination. See MPEP 2624 and 2666.05. Just as a Sec.  1.8(b) remedy 
is (and was) provided for the patent owner in the Sec.  1.957(b) and 
Sec.  1.957(c) scenarios, Sec.  1.8(b) is now revised to explicitly 
provide a remedy for the requester in the Sec.  1.957(a) scenario.
    Sub-part 5. The final rule Rules of Practice Before the Board of 
Patent Appeals and Interferences 69 FR 49960 (Aug. 12, 2004), 1286 Off. 
Gaz. Pat. Office 21 (Sept. 7, 2004) (final rule) revised the 
reexamination appeal rules to remove and reserve Sec. Sec.  1.961 to 
1.977. In addition, Sec. Sec.  1.959, 1.979, 1.993 were revised and new 
Sec. Sec.  41.60 through 41.81 were added. Revisions of some of the 
reexamination rules referring to these sections were inadvertently not 
made, and have now been made via this Notice. Further, Sec. Sec.  
1.510(f) and 1.915(c) are revised to change Sec.  1.34(a) to Sec.  
1.34, to update the two sections to conform with the revision of Sec.  
1.34 made in final rule Revision of Power of Attorney and Assignment 
Practice 69 FR 29865 (May 26, 2004) (final rule).
    In addition, in the final rule Clarification of Filing Date 
Requirements for Ex Parte and Inter Partes Reexamination Proceedings, 
71 FR 44219 (Aug. 4, 2006) (final rule), the following errors appear. 
At page 44222, it is stated:

    ``If after receiving a `Notice of Failure to Comply with * * * 
Reexamination Request Filing Requirements,' the requester does not 
remedy the defects in the request papers that are pointed out, then 
the request papers will not be given a filing date, and a control 
number will not be assigned * * *. If any identified non-compliant 
item has not been corrected, then a filing date (and a control 
number) will not be assigned to the request papers.'' [Emphasis 
added]

    The Office will, however, be assigning control numbers and receipt 
dates to requests for reexamination that are not compliant with the 
reexamination filing date requirements. Thus, the text should read, and 
is hereby corrected to read:

    ``If after receiving a `Notice of Failure to Comply with * * * 
Reexamination Request Filing Requirements,' the requester does not 
remedy the defects in the request papers that are pointed out, then 
the request papers will not be given a filing date. The simplest 
case * * *. If any identified non-compliant item has not been 
corrected, then a filing date will not be assigned to the request 
papers.''

    Comments Received: The Office published a notice proposing the 
changes to ex parte and inter partes reexamination practice for 
comment. See Revisions and Technical Corrections Affecting Requirements 
for Ex Parte and Inter Partes Reexamination, 71 FR 16072 (March 30, 
2006) 1305 Off. Gaz. Pat. Office 132 (April 25, 2006) (hereinafter, the 
``Revisions and Technical Corrections proposed rule''). In response to 
the Revisions and Technical Corrections proposed rule, the Office 
received four sets of written comments--one from an intellectual 
property organization, two from corporations, and one from a law firm. 
There were no comments received from individual patent practitioners or 
others.
    The following four proposals were set forth in the Revisions and 
Technical Corrections proposed rule:
    Proposal I: To newly provide for a patent owner reply to a request 
for an ex parte reexamination or an inter partes reexamination prior to 
the examiner's decision on the request.
    Proposal II: To prohibit supplemental patent owner responses to an 
Office action in an inter partes reexamination without a showing of 
cause.
    Proposal III: To designate the correspondence address for the 
patent as the correct address for all notices, official letters, and 
other communications for patent owners in an ex parte reexamination or 
an inter partes reexamination. Also, to simplify the filing of 
reexamination papers by providing for the use of ``Mail Stop Ex parte 
Reexam'' for the filing of all ex parte reexamination papers (not just 
ex parte reexamination requests), other than certain correspondence to 
the Office of the General Counsel.
    Proposal IV: To make miscellaneous clarifying changes as to the 
terminology and applicability of the reexamination rules, and to 
correct inadvertent errors in the text of certain reexamination rules.
    After reviewing the comments, this notice of final rule making: (a) 
Adopts Proposals II--IV of the Revisions and Technical Corrections 
proposed rule for revision of the rules of practice, while making only 
stylistic and non-substantive changes to the relevant rules, which 
changes are discussed below, and (b) does not adopt Proposal I of the 
Revisions and Technical Corrections proposed rule.
    The comments taking issue with the proposals, and the Office's 
responses to those comments, now follow. Comments generally in support 
of a change that has been adopted are only discussed in some instances.

I. Comments as to Proposal I of the Revisions and Technical Corrections 
Proposed Rule

    Proposal I, as set forth in the Revisions and Technical Corrections 
proposed rule, was to newly provide for a patent owner reply to a 
request for reexamination, prior to the Office's decision on the 
request. Comments against implementing the proposal in any form, were 
advanced by a major intellectual property organization and one of the 
two corporations that commented on the proposal. One comment, which was 
advanced by the other corporation that commented, was in favor of 
implementing the proposal even more liberally in favor of the patent 
owner than was proposed.
    1. The corporate comment in favor of implementation of Proposal I: 
This comment states that commenter believes this proposed rule change 
allows for greater input from involved parties before an Examiner 
determines whether reexamination should be declared, and that the 
greater input would further the goal of a fair and efficient, well-
informed reexamination. The comment further states that the proposed 
rule change would allow patentees to inform the Patent Office of facts 
that may bear upon the decision on the reexamination

[[Page 18897]]

request, such as the outcome of litigation involving prior art 
submitted to the Patent Office with the request, and other relevant 
factors.
    The comment then goes on to request ``further clarification and 
certain modifications to the proposed rule change.'' The commenter 
urges that patent owner's reply to a Director-ordered examination 
should be allowed. The commenter asserts that the discarding/returning 
of a non-compliant patent owner reply to a request for reexamination 
(without a chance for re-submission) seems unduly harsh, and is unlike 
other Office rules that allow a submission to be corrected if not in 
proper form. The commenter further requests that various options as to 
relief from the 50-page limit for the reply be implemented. Finally, 
the commenter suggests implementation of the Electronic Filing System 
(EFS) to expedite submission of the reply to the request.
    2. The intellectual property organization comment opposed to 
implementation of Proposal I: The commenter points out that evidence 
has not been proffered to suggest a need for a patent owner to have an 
opportunity to reply to a request for reexamination before a decision 
has been made by the Office. It is asserted that no evidence has been 
advanced as to granted reexaminations that should not have been granted 
based on incomplete/inaccurate information, or because of the allegedly 
low statutory threshold of a ``substantial new question of 
patentability'' to order reexamination, or because of an examiner 
inexperienced in reexamination practices. The commenter later provides 
a statistical analysis to show that the Office's reexamination 
statistics do not justify implementation of Proposal I without such 
evidence.
    The comment states that the Office has made a substantial 
improvement in the handling of reexamination proceedings by creating 
the new Central Reexamination Unit (CRU) dedicated to these 
proceedings, resulting in better management of reexamination 
proceedings, more timely, detailed and thorough Office actions, and an 
increase of the quality of the work product. Given this, it seems 
premature to introduce the opportunity for a patent owner to file a 
reply before the Office makes a decision on the request before it is 
determined that the expertise being applied in the new reexamination 
unit will not avoid or at least minimize any problem that is 
identified. In addition, there is a concern that placing additional and 
perhaps unnecessary burdens on the new CRU will inhibit either the 
quality or special dispatch of the work being performed by the CRU.
    The comment identifies a ``significant concern with the proposed 
practice * * * that it has the potential to significantly alter the 
balance between the patent owner and a third party in ex parte 
reexaminations in further favor of the patent owner.'' The comment 
continues,--``The ex parte reexamination proceeding is recognized as 
being one that is biased heavily in favor of the patent owner by 
excluding participation by the third party after the request is filed 
(unless the patent owner files a statement after the request is granted 
that would trigger only one additional opportunity for the third party 
to reply to any statement filed by the patent owner) * * *. [U]nder the 
proposal, the patent owner effectively would have an opportunity to 
file a patent owner's statement before the PTO decision on the request 
and thereafter exclude the third party from further participation in 
the proceeding by simply not filing any patent owner's statement.'' The 
comment concludes that the Office ``should not bias the ex parte 
proceeding in further favor of the patent owner, and should not take 
steps that will create additional and unnecessary burdens on the 
reexamination unit that are likely to further weaken the incentives for 
third parties to provide useful information relevant to patentability 
to the [Office].'' The commenter then adds that ``[e]ven in an inter 
partes proceeding, we are not aware of any justification for 
unnecessarily adding to the burdens of the reexamination unit or 
providing opportunities for the patent owner to delay the initiation of 
inter partes reexamination.''
    3. The corporate comment opposed to implementation of Proposal I: 
The comment points out some generally favorable aspects of Proposal I, 
but counters with a recognition that ``the impact of the issuance and 
enforcement of potentially invalid patents [is] so detrimental to the 
public as to warrant giving the requester every opportunity to proffer 
prior art to the Office for its consideration even though some 
inefficiencies may result.'' Commenter expresses a concern that 
``permitting the patent owner to respond to the requester's comments 
before a reexamination determination is made'' could ``have the 
additional unintended affect [sic, effect] of going beyond merely 
addressing whether or not there is a substantial new question of 
patentability, thus discouraging third party requesters from using the 
reexamination process.'' The commenter notes the potential that the 
proposal ``will delay the issuance of orders because of the time spent 
by the examiner in reviewing the patent owner's comments. It will also 
begin an unofficial `mini' reexamination proceeding before the examiner 
actually has made a decision to order reexamination. That is, it will 
be difficult for the examiner to avoid considering why the subject 
matter as claimed was not anticipated or rendered obvious by the prior 
art cited in the request in view of the patent owner's reply before the 
order granting reexamination is made. This will result in the 
discouraging of third party requester's [sic] from utilizing the 
reexamination process because of the perception that the Office may 
unintentionally address `the merits' rather than merely determining 
whether or not the requester raised a substantial new question of 
patentability.'' The commenter expresses a final concern that 
``allowing patent owner comments may actually cause an increase in 
petition filings. Ultimately, this churn between the Office and the 
requester could create a different source of Office delays as well as 
expense for the requester before the order even issues.'' The commenter 
further states: ``Particularly for requests worthy of proceeding to 
reexamination, the Office should take care to ensure that patent 
owner's response does not delay issuance of the order and reexamination 
process.''
    Proposal I is not adopted for the detailed reasons set forth in the 
intellectual property organization and corporate comments opposed to 
implementation of Proposal I. Reexamination practice will, however, in 
the future be re-evaluated to determine whether this proposal should be 
reconsidered at a later date.
    The corporate comment opposed to implementation of Proposal I 
provided suggestions to address some of its concerns, and these will 
now be addressed. The suggestions include strictly limiting the patent 
owner's response with review to ensure that the patent owner does not 
``comment on the merits, rather than just the issue of whether a new 
question of patentability is raised'' and ``placing a high burden on 
the patent holder to overcome a request, such as by clear and 
convincing evidence.'' Such suggestions, however, would unduly 
complicate and prolong the reexamination proceeding with a requirement 
for a highly subjective determination as to what would be, or would not 
be, prohibited in a patent owner's direct reply to a reexamination 
request.

[[Page 18898]]

    The commenter that favored implementing Proposal I suggested 
implementing the proposal more liberally in favor of the patent owner 
than was proposed by the Office. Such points are, however, moot, as the 
proposal is not being adopted. The following is also added with respect 
to the suggestions made. As to the assertion that the discarding/
returning of a non-compliant patent owner reply without a chance for 
re-submission is unlike other Office rules that allow a submission to 
be corrected if not in proper form, in this instance there is a three-
month statutory period running against the Office to decide the 
request. A reply correction cycle would make it unduly burdensome for 
the Office to comply with the three-month statutory mandate. As to the 
various options as to liberalizing the 50-page limit for the reply 
suggested by commenter, this too would impact on the Office's ability 
to comply with the three-month statutory mandate.
    As to the suggestion for a patent owner reply to a Director-ordered 
reexamination, the following is observed: After reexamination is 
ordered at the initiative of the USPTO Director, the patent owner does 
in fact have the right to reply via a patent owner's statement under 
Sec.  1.530. This right of ``reply'' takes place before the proceeding 
enters into the examination stage, and is essentially what the 
commenter is requesting. As to a notification to patent owner prior to 
reexamination being ordered at the initiative of the USPTO Director, 
which the commenter also refers to, there is no official proceeding at 
that point in which to notify the patent owner of the intent to 
initiate a reexamination. Also, if such a notice of intent to initiate 
a reexamination were issued as suggested by the commenter, that would 
be tantamount to ordering reexamination since a substantial new 
question of patentability would be needed in each case. The effect 
would be the same as initiating reexamination followed by a patent 
owner's statement under Sec.  1.530 filed prior to the examination 
stage of the proceeding, which is provided for in the current practice. 
Further, the suggestion also is subject to the above-discussed concerns 
raised in the intellectual property organization and corporate comments 
opposed to implementation of Proposal I.

II. Comments as to Proposal II of the Revisions and Technical 
Corrections Proposed Rule

    Proposal II, as set forth in the Revisions and Technical 
Corrections proposed rule, was to prohibit a supplemental patent owner 
response to an Office action (which can be filed to address a third 
party requester's comments on patent owner's initial response to an 
Office action) without an adequate showing of sufficient cause for 
entry. This would be implemented by revising Sec.  1.945. Three 
comments addressed this proposal.
    1. The law firm comment expresses a belief that the proposed 
revision to Sec.  1.945 would achieve the Office's purpose of (1) 
providing assistance to the Office in exercising its discretion to 
enter supplemental replies pursuant to Sec.  1.111(a)(2) in inter 
partes reexamination proceedings, and (2) discouraging patent owners 
from filing superfluous supplemental replies that delay the 
proceedings. The commenter, however, raises certain concerns as to the 
proposal.
    Commenter correctly points out that, pursuant to the proposal, the 
showing of sufficient cause would be required to provide: (1) A 
detailed explanation of how the criteria of Sec.  1.111(a)(2)(i) is 
satisfied; (2) an explanation of why the supplemental response could 
not have been presented together with the original response to the 
Office action; and (3) a compelling reason to enter the supplemental 
response. The commenter then asserts that an explanation of why the 
supplemental response ``could not'' have been presented together with 
the original response is not workable. The commenter suggests use of 
``was not'' in place of ``could not'' to address the concern. This 
point is well taken and is adopted. Once the patent owner explains why 
the supplemental response ``was not'' presented together with the 
original response, the Office can evaluate the reason in terms of the 
equities it provides. Thus, if the patent owner was reasonably not 
aware of a certain fact or circumstance that generated patent owner's 
basis for the supplemental response, that will be a factor to be 
balanced against the delay in the proceeding and additional resources 
to be expended by the requester and the Office.
    Commenter also asserts that there is no guidance of what would be a 
``compelling reason'' to enter the supplemental response.
    This point is addressed here in terms of equities. A patent owner 
would need to show that its position would be prejudiced by the lack of 
entry of a supplemental response in a way that cannot be addressed 
later in the proceeding, and that the adverse effect on patent owner is 
significant enough to counter-balance the delay in the proceeding and 
additional resources to be expended by the requester and the Office. 
Thus, if the patent owner simply was not aware of an argument, or even 
rebuttal art, that the requester submitted in commenting on the Office 
action and patent owner's response, a supplemental response will not be 
entered for the purpose of addressing the argument, or rebuttal art. 
The purpose of the response is to respond to the Office action, not to 
reply to the requester or to reshape the patent owner's response after 
obtaining requester's input. Likewise, if the purpose of the 
supplemental response is merely to reconfigure claims without making a 
material change to the substance, or to add some claims for additional 
scope of protection, such would not provide a compelling reason.
    2. The intellectual property organization comment supports 
implementation of Proposal II. Commenter, however, requests 
clarification as follows: ``If a patent owner files a supplemental 
response to a PTO action in an inter partes reexamination proceeding, 
we understand that it must be accompanied by a showing of sufficient 
cause. We further understand that the filing of that supplemental 
response, whether or not accompanied by an appropriate showing and 
whether or not the PTO ultimately enters the supplemental response, 
will trigger an opportunity for the third party to file written 
comments that may address both the supplemental response and any 
showing of sufficient cause. Please confirm whether our understanding 
is correct.''
    In response, the following is provided. It is mandated by statute 
that any requester comments filed after a patent owner response to an 
Office action must be filed ``within 30 days after the date of service 
of the patent owner's response.'' 35 U.S.C. 314(b)(2). Thus, where the 
patent owner files a supplemental response to an Office action, the 
requester would be well advised to file any comments deemed appropriate 
(to address the merits and/or showing of sufficient cause) within 30 
days after the date of service of the patent owner's supplemental 
response, in case the Office exercises its discretion to enter the 
supplemental response. If the supplemental response is not entered, 
both the supplemental response and any comments following that 
supplemental response will either be returned to parties or discarded 
as the Office chooses in its sole discretion. If the supplemental 
response and/or comments were scanned into the electronic Image File 
Wrapper (IFW) for the reexamination proceeding, and thus, the papers 
cannot be physically returned or discarded, then the

[[Page 18899]]

supplemental response and/or comments entries will be marked ``closed'' 
and ``non-public,'' and they will not constitute part of the record of 
the reexamination proceeding. Such papers will not display in the 
Office's image file wrapper that is made available to the public, 
patent owners, and representatives of patent owners, i.e., they will 
not display in PAIR at the Office's Web site http://www.uspto.gov.
    3. One of the two corporate comments opposes Proposal II. Commenter 
states that `` `compelling reasons' for entering a supplemental reply 
is not the standard set by sections 111(a)(2)(i)(A)-(F), and no 
justification has been suggested for why a patentee should be subjected 
to such an obstacle. We submit that the undefined but presumably 
considerable `compelling reason' standard is unnecessary, and will 
unfairly prevent patentees from presenting information to the Patent 
Office that will assist in achieving a correct outcome in 
reexaminations. This will reduce the quality and reliability of 
reexamination decisions, and thus this proposed rule should not be 
implemented.''
    The comment is noted, but it is not persuasive in view of the 
following: Sections 1.111(a)(2)(i)(A) through (a)(2)(i)(F) were 
implemented with a focus on applications for patents, in which the 
prosecution is ex parte. For reexamination, however, there is a unique 
statutory mandate for special dispatch, which calls for measures to 
minimize delays in the proceeding. In an ex parte reexamination 
proceeding, delay brought about by a supplemental patent owner response 
can be acceptable where the delay is insignificant, in order to achieve 
the benefits to which the commenter alludes. In inter partes 
reexamination, however, each time the patent owner supplementally 
responds, the requester may, be statute, respond within a given time 
period; the Office must then process a whole new set of papers for the 
parties. Accordingly, the delay in inter partes reexamination is 
magnified, when the patent owner supplementally responds. The potential 
for extension of the prosecution each time the patent owner files a 
supplemental patent owner response is unique to inter partes 
reexamination, and will not be permitted without sufficient cause 
having been shown.
    The Office has been receiving supplemental patent owner responses 
purporting to meet the conditions of Sec.  1.111(a)(2)(i)(F), which 
have resulted in undue delays in the proceedings, requiring the Office 
to evaluate whether such supplemental responses comply with any of the 
provisions of Sec. Sec.  1.111(a)(2)(i)(A) through (a)(2)(i)(F).
    Furthermore, the reexamination statute gives the third party 
requester an absolute right to file comments on the patent owner's 
response. Accordingly, the Office is forced to evaluate two sets of 
papers from each party, causing yet further delay. In addition, the 
Office has seen patent owners file multiple supplemental responses 
causing dramatic delays in the administrative process (a typical 
situation is discussed in the next paragraph). While it is not uncommon 
for adverse parties to want to have ``the last word,'' the Office needs 
to set reasonable limits in order to control the administrative 
process, as well as comply with the statutory mandate for special 
dispatch in inter partes reexamination.
    A typical situation is as follows. A patent owner wishes to respond 
to the requester's comments on the patent owner's response, and the 
patent owner thus files a supplemental response to address the 
requester's comments. The requester may then choose to supplementally 
comment on patent owner's supplemental response. Multiple iterations of 
patent owner responses addressing requester comments followed by 
further requester comments may then take place. The Office has 
experienced this situation in a number of proceedings, and the Office 
has needed to address each set of supplemental responses and 
supplemental comments--to first ascertain why patent owner filed the 
supplemental response and the equities presented by the parties, and 
then to decide whether to either close from public view (or return) the 
papers, or to enter them, and the Office must perform all the attendant 
processing. The present rule revision requires the patent owner to 
state, up front, the basis for seeking entry of a supplemental 
response, and it gives the requester an opportunity for rebuttal. This 
provides the Office with a mechanism for immediately weeding out any 
inappropriate supplemental response. Also, the requirement that patent 
owner provide the basis for entry will alert the patent owner to 
situations where no appropriate basis exists, such that patent owner 
will realize it should not make a submission. This will save (a) the 
patent owner the effort of making the submission, only to have it 
returned, (b) the requester the effort of making a supplemental 
comment, only to have it returned, and (c) the Office from having to 
expend the resources to address and process the submissions.
    It is further to be noted that, in a litigation setting, the courts 
have established controls to limit the extent of briefing, and the 
Office is likewise justified in limiting the parties' responses to an 
Office action. Moreover, regardless of how many patent owner responses 
are permitted, it should be noted that the inter partes reexamination 
statute (35 U.S.C. 314) specifically contemplates that the requester 
has the right to respond to every patent owner submission, thereby 
giving the requester ``the last word.'' There is no intent in the 
statute to provide the patent owner with a chance to file a ``last 
word'' supplemental response to address the requester's comments. 
Indeed, 35 U.S.C. 314(b)(2) ends the iteration of addressing the Office 
action by stating that ``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.'' As a 
final point, 35 U.S.C. 314(b)(1) provides the patent owner with the 
ability to respond to what the Office action says, not to the 
requester's comments, and that continues to be available in the 
proceeding. Such is the statutory framework for providing prosecution 
by parties, while, at the same time, maintaining the requirement for 
special dispatch in the inter partes reexamination proceeding.
    Proposal II has been adopted in revised form--an explanation is 
required as to why the supplemental response ``was not'' presented 
together with the original response to the Office action, rather than 
the proposed explanation of why the supplemental response ``could not'' 
have been presented.

III. Comments as to Proposal III of the Revisions and Technical 
Corrections Proposed Rule

    The second part of Proposal III, as set forth in the Revisions and 
Technical Corrections, was to simplify the filing of reexamination 
papers by providing for the use of ``Mail Stop Ex Parte Reexam'' for 
the filing of all ex parte reexamination papers (not just ex parte 
reexamination requests), other than certain correspondence to the 
Office of the General Counsel. No issues were raised by the comments as 
to that part of Proposal III.
    The first part of Proposal III, as set forth in the Revisions and 
Technical Corrections proposed rule, was to designate the 
correspondence address for the patent as the correct address for all 
notices, official letters, and other communications for patent owners 
in a reexamination. It was that part of Proposal III that was commented 
upon.

[[Page 18900]]

    1. One of the corporate comments supports the Proposal II rule 
change as to the designation of the correspondence address for the 
patent as the correct address for communications for patent owners in a 
reexamination, and recognizes the need to ease the burden on the Office 
in corresponding with patent owners in reexamination proceedings. 
Commenter, however, strongly encourages the Office to promptly post all 
correspondence electronically since ``the correspondence address will 
be the only address used for mailings by the Office'' under the 
proposal, ``and no double correspondence will be sent.''
    In response, all correspondence for a reexamination proceeding is 
in fact promptly posted electronically in the Office's Image File 
Wrapper (IFW) for that proceeding, and is available via the Office's 
public PAIR (Patent Application Information Retrieval) system. One of 
the benefits resulting from the Office's somewhat recent creation of 
the Central Reexamination Unit is that reexamination correspondence is 
now mailed by a central unit dedicated solely to reexamination, which 
is in a position to ensure prompt entry of correspondence into the IFW.
    2. The intellectual property organization comment likewise supports 
Proposal III. Commenter, however, identifies a concern that ``the 
Office states that it will automatically change the correspondence 
address to that of the patent file.'' Commenter suggests that, despite 
the rule revision, the correspondence address of the patent owner and 
any third party, should be maintained by the Office as ``whatever 
correspondence address has been established,'' and ``a specific 
requirement of the patent owner to comply with the adopted regulation'' 
should be made. This suggestion is presented to reduce ``the risk of 
termination of the prosecution of a reexamination proceeding by sending 
correspondence to the patent owner at an address different than has 
already been established in the pending reexamination proceeding.''
    This suggestion is not adopted; however, for inter partes 
reexamination proceedings, an accommodation will be made by the Office 
as is discussed below. Retaining the old attorney or agent of record 
register address as that of the patent owner's correspondence address 
in the face of the rule change which mandates otherwise can only lead 
to uncertainty and confusion. This would result in a situation where 
some correspondence addresses are done one way and others are done 
another way. Third party requesters would be placed in a quandary as to 
which address to serve. The same would be true for parties serving 
papers under MPEP 2286 or 2686 (notifications of existence of prior or 
concurrent proceedings). Retaining the address used for correspondence 
in the reexamination proceeding different from that used during the 
pendency of applications (as well as post-grant correspondence in 
patents maturing from such applications) will also make it difficult 
for members of the public reviewing the patent and its associated files 
and materials. Furthermore, searching out all the instances where the 
correspondence address would be in need of a change in view of the 
``adopted regulation'' in order to send the suggested ``specific 
requirement of the patent owner to comply with the adopted regulation'' 
would place a huge and undue burden on Office resources. The ex parte 
reexamination data captured by the Office through Sept. 30, 2006, will 
be used to illustrate this. There are 1,944 ex parte reexamination 
proceedings pending. The Office would need to check to see which of the 
8,252 total ex parte reexamination proceedings are the 1,944 pending 
reexamination proceedings. Then, Notices would need to be sent out for 
all of them, and the Office would also need to do the PALM work. For 
inter partes reexamination proceedings, however, there are 
approximately 200 pending proceedings. Accordingly, the Office intends 
to issue, in the near future, a notice in all pending inter partes 
reexamination proceedings, notifying the parties about this rule change 
and the patent owner's correct address. It is to be noted that 
requester paper service on patent owner occurs far more often in inter 
partes reexamination, than such service on patent owner in ex parte 
reexamination. Thus, the major impact of commenter's concern in this 
area has been addressed.
    IV. Proposal IV has been adopted as it was proposed--none of the 
comments took issue with any aspect of this proposal.

Section-by-Section Discussion

    Section 1.1: Section 1.1(c)(1) is amended to provide for use of 
``Mail Stop Ex Parte Reexam'' for the filing of all ex parte 
reexamination papers other than certain correspondence to the Office of 
the General Counsel. Paragraph (c)(1) of Sec.  1.1(c) has been changed 
from its prior reading ``Requests for ex parte reexamination (original 
request papers only) should be additionally marked `Mail Stop Ex Parte 
Reexam' '' to now read ``Requests for ex parte reexamination (original 
request papers) and all subsequent ex parte 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 Ex Parte Reexam.' ''
    Section 1.8: Section 1.8(b) is amended to recite ``In the event 
that correspondence is considered timely filed by being mailed or 
transmitted in accordance with paragraph (a) of this section, but not 
received in the * * * Office after a reasonable amount of time has 
elapsed from the time of mailing or transmitting of the correspondence 
* * * or the prosecution of a reexamination proceeding is terminated 
pursuant to Sec.  1.550(d) or Sec.  1.957(b) or limited pursuant to 
Sec.  1.957(c), or a requester paper is refused consideration pursuant 
to Sec.  1.957(a), the correspondence will be considered timely if the 
party who forwarded such correspondence:''. The language ``the 
prosecution of a reexamination proceeding is terminated'' (for Sec.  
1.550(d) and Sec.  1.957(b)) clarifies that the reexamination 
proceeding is not concluded under Sec.  1.550(d) or Sec.  1.957(b), but 
rather, the prosecution of the reexamination is terminated. The 
language ``or the prosecution of a reexamination proceeding is * * * 
limited pursuant to Sec.  1.957(c)'' more appropriately sets forth that 
the Sec.  1.8(b) remedy is applied to avoid the Sec.  1.957(c) 
consequences of a patent owner's failure to respond in an inter partes 
reexamination. The language ``or a requester paper is refused 
consideration pursuant to Sec.  1.957(a)'' more appropriately sets 
forth that the Sec.  1.8(b) remedy is applied to avoid the Sec.  
1.957(a) consequences of a failure to file a requester paper in an 
inter partes reexamination.
    Section 1.17: Sections 1.17(l) and (m) are revised to clarify that 
a reexamination proceeding is not concluded under Sec.  1.550(d) or 
Sec.  1.957(b), but rather, the prosecution of a reexamination is 
terminated under Sec.  1.550(d) or Sec.  1.957(b), or reexamination 
prosecution is limited under Sec.  1.957(c). No change is made as to 
the fee amounts.
    Section 1.33: Section 1.33(c) is revised to replace the prior 
recitation of ``the attorney or agent of record (see Sec.  1.32(b)) in 
the patent file at the address listed on the register of patent 
attorneys and agents maintained pursuant to Sec. Sec.  11.5 and 11.11 
or, if no attorney or agent is of record, to the patent owner or owners 
at the address or addresses of record'' with ``correspondence 
address.'' As Sec.  1.33(c) is now revised, all notices, official

[[Page 18901]]

letters, and other communications for the patent owner or owners in a 
reexamination proceeding will be directed to the correspondence address 
for the patent. As previously discussed, a change to the correspondence 
address may be filed with the Office during the enforceable life of the 
patent.
    Section 1.137: Sections 1.137(a), (b), and (e) are amended to more 
appropriately set forth the Sec.  1.550(d) and Sec.  1.957(b) 
consequences of the patent owner's failure to make a required response. 
To do so, the introductory text of Sec.  1.137(a) and Sec.  1.137(b) is 
now revised to recite ``a reexamination prosecution becoming terminated 
under Sec. Sec.  1.550(d) or 1.957(b)'' (emphasis added), rather than 
the previous recitation of ``a reexamination proceeding becoming 
terminated under Sec. Sec.  1.550(d) or 1.957(b)'' (emphasis added). In 
Sec.  1.137(e), ``a terminated ex parte reexamination prosecution'' and 
``a terminated inter partes reexamination prosecution or an inter 
partes reexamination limited as to further prosecution'' are inserted 
in place of the previous recitation of ``a terminated ex parte 
reexamination proceeding'' and ``a terminated inter partes 
reexamination proceeding,'' respectively.
    Sections 1.137(a), (b) and (e) are amended to clarify that the 
reexamination proceedings under Sec.  1.957(c) referred to in Sec.  
1.137 are limited as to further prosecution; the prosecution is not 
terminated. To make this clarification, the introductory text portions 
of Sec.  1.137(a) and Sec.  1.137(b) are revised to recite that the 
prosecution is ``limited under Sec.  1.957(c),'' rather than 
``terminated.'' Section 1.137(e) is revised to also refer to 
``revival'' of ``an inter partes reexamination limited as to further 
prosecution.'' The heading of Sec.  1.137 is also revised to add 
``limited.''
    Section 1.502: Section 1.502 is amended to state that the 
``reexamination proceeding'' is ``concluded by the issuance and 
publication of a reexamination certificate.'' That is the point at 
which citations (having an entry right in the patent) that were filed 
after the order of ex parte reexamination will be placed in the patent 
file.
    Section 1.510: Section 1.510(f) is revised to change Sec.  1.34(a) 
to Sec.  1.34. This change updates the section to conform to the 
revision of Sec.  1.34 made in Revision of Power of Attorney and 
Assignment Practice, 69 FR 29865 (May 26, 2004) (final rule).
    Section 1.530: Section 1.530(a) is amended to provide for the 
disposition of the unauthorized paper being explicitly set forth in the 
Sec.  1.530(a), i.e., the paper will be returned or discarded at the 
Office's option. This explicit recitation of the Office's discretion 
was proposed at the last line of the discussion of Sec.  1.530(a) in 
the Section-by-Section analysis of the proposed rule making notice and 
was not commented on. If the unauthorized paper was scanned into the 
electronic Image File Wrapper (IFW) for the reexamination proceeding, 
and thus, the paper cannot be physically returned or discarded, then 
the unauthorized paper entry will be marked ``closed'' and ``non-
public,'' and it will not constitute part of the record of the 
reexamination proceeding. Such papers will not display in the Office's 
image file wrapper that is made available, via PAIR, to the public, 
patent owners, and representatives of patent owners.
    Section 1.530(k) is amended to state that proposed amendments in ex 
parte or inter partes reexamination are not effective until the 
reexamination certificate is both ``issued and published'' to conform 
Sec.  1.530(k) with the language of 35 U.S.C. 307. Sections 1.530(l)(1) 
and (l)(2) are amended to delete the references to ``1.977'' and add 
instead ``1.997.'' This corrects the prior reference to non-existent 
Sec.  1.977. In addition, Sec.  1.530(l)(2) is revised to recite that 
the reexamination proceeding is ``concluded'' by a reexamination 
certificate under Sec.  1.570 or Sec.  1.997, as opposed to 
``terminated,'' which applies to a reexamination prosecution.
    Section 1.550: Section 1.550(d) is amended to recite that ``[i]f 
the patent owner fails to file a timely and appropriate response to any 
Office action or any written statement of an interview required under 
Sec.  1.560(b), the prosecution in the ex parte reexamination 
proceeding will be a terminated prosecution, and the Director will 
proceed to issue and publish a certificate concluding the reexamination 
proceeding under Sec.  1.570 * * *.'' This makes it clear that the 
patent owner's failure to timely file a required response (or interview 
statement) will result in the ``terminating of prosecution of the 
reexamination proceeding,'' but will not ``conclude the reexamination 
proceeding.'' It is to be noted that the prosecution will be a 
terminated prosecution as of the day after the response was due and not 
timely filed. In this instance, the Notice of Intent to Issue 
Reexamination Certificate (NIRC) will be subsequently issued; however, 
it will not be the instrument that operates to terminate the 
prosecution, since that will have already automatically occurred upon 
the failure to respond. Further, ``issued and published'' is used to 
conform Sec.  1.550(d) to the language of 35 U.S.C. 307.
    Section 1.565: Section 1.565(c) is amended to set forth that merged 
(consolidated) ex parte reexamination proceedings will result in the 
``issuance and publication'' of a single certificate under Sec.  1.570. 
As pointed out above, this tracks the statutory language. Section 
1.565(d) is further amended to make it clear that the issuance of a 
reissue patent for a merged reissue-reexamination proceeding effects 
the conclusion of the reexamination proceeding. This is distinguished 
from the termination of the reexamination prosecution, as pointed out 
above. As a further technical change, ``consolidated'' in the prior 
version of Sec.  1.565(c) is revised to now recite ``merged,'' for 
consistency with the terminology used in Sec.  1.565(d). There is no 
difference in the meaning of the two terms, and the use of different 
terms in the two subsections was confusing. In addition, in Sec.  
1.565(d), the prior recitation of ``normally'' is replaced by 
``usually'' (``normally'' was an inadvertent inappropriate choice of 
terminology). The same term (``usually'') would be added to Sec.  
1.565(c). As was pointed out in the Notice of Proposed Rule Making, 
there are instances where the Office does not merge (consolidate) an 
ongoing ex parte reexamination proceeding with a subsequent 
reexamination or reissue proceeding, which are addressed on a case-by-
case basis. The following examples are again set forth. If the 
prosecution in an ongoing ex parte reexamination proceeding has 
terminated (e.g., a Notice of Intent to Issue Reexamination Certificate 
has issued), the ex parte reexamination proceedings will generally not 
be merged (consolidated) with a subsequent reexamination proceeding or 
reissue application. If an ongoing ex parte reexamination proceeding is 
ready for decision by the Board of Patent Appeals and Interferences, or 
is on appeal to the U.S. Court of Appeals for the Federal Circuit, it 
would be inefficient (and contrary to the statutory mandate for special 
dispatch in reexamination) to ``pull back'' the ongoing ex parte 
reexamination proceeding for merger with a subsequent reexamination 
proceeding or reissue application. As a final example, an ongoing ex 
parte reexamination proceeding might be directed to one set of claims 
for which a first accused infringer (with respect to the first set) has 
filed the ongoing request for reexamination. A later reexamination 
request might then be directed to a different set of claims for

[[Page 18902]]

which a second accused infringer (with respect to the second set) has 
filed the request. In this instance, where there are simply no issues 
in common, merger would serve only to delay the resolution of the first 
proceeding without providing any benefit to the public (this would run 
counter to the statutory mandate for ``special dispatch'' in 
reexamination proceedings). If reexamination is to act as an effective 
alternative to litigation, the ability to decide the question of 
whether to merge/consolidate based on the merits of a particular fact 
pattern must be, and is, reserved to the Office.
    Section 1.570: The heading of Sec.  1.570 and Sec.  1.570(a) are 
amended to make it clear that the issuance and publication of the ex 
parte reexamination certificate ``concludes'' the reexamination 
``proceeding.'' The failure to timely respond, or the issuance of the 
NIRC, terminate prosecution, but do not conclude the reexamination 
proceeding. For consistency with the language of 35 U.S.C. 307, Sec.  
1.570, paragraphs (b) and (d), are amended to recite that the 
reexamination certificate is both ``issued and published.''
    Section 1.902: Section 1.902 is amended to state that the 
``reexamination proceeding'' is ``concluded by the issuance and 
publication of a reexamination certificate.'' That is the point at 
which citations (having a right to entry in the patent) that were filed 
after the order of inter partes reexamination will be placed in the 
patent file.
    Section 1.915: Section 1.915(c) is revised to change the prior 
recitation of ``Sec.  1.34(a)'' to Sec.  1.34. This change updates the 
section to conform to the revision of Sec.  1.34 made in Revision of 
Power of Attorney and Assignment Practice, 69 FR 29865 (May 26, 2004) 
(final rule).
    Section 1.923: In the first sentence of Sec.  1.923, the prior 
recitation of ``Sec.  1.919'' is changed to ``Sec.  1.915,'' since it 
is Sec.  1.915 that provides for the request; Sec.  1.919 provides for 
the filing date of the request.
    Section 1.945: Prior to the present revision, Sec.  1.945 provided 
that ``[t]he patent owner will be given at least thirty days to file a 
response to any Office action on the merits of the inter partes 
reexamination.'' Section 1.945 is now revised to address the filing of 
a supplemental response to an Office action. Any supplemental response 
to an Office action will be entered only where the supplemental 
response is accompanied by a showing of sufficient cause why the 
supplemental response should be entered. The showing of sufficient 
cause must provide: (1) A detailed explanation of how the requirements 
of Sec.  1.111(a)(2)(i) are satisfied; (2) an explanation of why the 
supplemental response was not presented together with the original 
response to the Office action; and (3) a compelling reason to enter the 
supplemental response.
    Where the patent owner files a supplemental response to an Office 
action, the requester may file its comments under Sec.  1.947 within 30 
days after the date of service of the patent owner's supplemental 
response, in order to preserve requester's statutory comment right, in 
the event the Office exercises its discretion to enter the supplemental 
response. (The comments may address the merits of the proceeding and/or 
the adequacy of the showing of sufficient cause why the supplemental 
response should be entered.) If the requester fails to file comments, 
and the Office enters the supplemental response after 30 days from its 
filing, the requester will be statutorily barred from commenting at 
this stage, because, pursuant to 35 U.S.C. 314(b)(2), any requester 
comments filed after a patent owner response to an Office action must 
be filed ``within 30 days after the date of service of the patent 
owner's response.'' If the requester files comments and the patent 
owner's supplemental response is not entered by the Office, then both 
the supplemental response, and any comments following that supplemental 
response, will either be returned to the parties or discarded as the 
Office chooses in its sole discretion. If the supplemental response 
and/or comments were scanned into the electronic Image File Wrapper 
(IFW) for the reexamination proceeding, and thus, the papers cannot be 
physically returned or discarded, then the supplemental response and/or 
comments entries will be marked ``closed'' and ``non-public,'' and they 
will not constitute part of the record of the reexamination proceeding. 
Such papers will not display in the Office's image file wrapper that is 
made available, via PAIR, to the public, patent owners, and 
representatives of patent owners.
    The decision on the sufficiency of the showing will not be issued 
until after receipt of requester comments under Sec.  1.947 on the 
supplemental response, or the expiration of the 30-day period for 
requester comments (whichever comes first). The decision will be 
communicated to the parties either prior to, or with, the next Office 
action on the merits, as is deemed appropriate for the handling of the 
case.
    A showing of sufficient cause will not be established by an 
explanation that the supplemental response is needed to address the 
requester's comments (on patent owner's response), and could not have 
been presented together with the original response because it was not 
known that requester would raise a particular point. The inter partes 
reexamination statute (35 U.S.C. 314) provides for the patent owner to 
respond to an Office action, and the requester to comment on that 
response. There is no intent in the statute to provide the patent owner 
with a chance to file a supplemental response to address the 
requester's comments. Indeed, 35 U.S.C. 314(b)(2) ends the iteration of 
addressing the Office action by stating that ``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.''
    As pointed out above, no corresponding rule revision is needed in 
ex parte reexamination, since there is no third party requester comment 
on a patent owner response (that a patent owner will wish to address), 
and Sec.  1.111(a)(2) adequately deals with patent owner supplemental 
responses.
    Section 1.953: The prior version of Sec.  1.953(b) stated: ``Any 
appeal by the parties shall be conducted in accordance with Sec. Sec.  
1.959-1.983.'' This reference to Sec. Sec.  1.959 through 1.983 is not 
correct, as some of the referenced rules had been deleted and others 
added. Instead of revising the incorrect reference, the entire sentence 
has been deleted as being out of place in Sec.  1.953, which is not 
directed to the appeal process, but is rather directed to an Office 
action notifying parties of the right to appeal. Section 1.953(c) is 
amended to state that if a notice of appeal is not timely filed after a 
Right of Appeal Notice (RAN), then ``prosecution in the inter partes 
reexamination proceeding will be terminated.'' This will not, however, 
conclude the reexamination proceeding.
    Section 1.956: The subheading preceding Sec.  1.956 is amended to 
refer to termination of the prosecution of the reexamination, rather 
than the termination or conclusion of the reexamination proceeding, 
since termination of the prosecution of the reexamination is what the 
sections that follow address. It is Sec.  1.997 (Issuance of Inter 
Partes Reexamination Certificate) that deals with conclusion of the 
reexamination proceeding.
    Section 1.957: Section 1.957(b) is amended to recite that ``[i]f no 
claims are found patentable, and the patent owner fails to file a 
timely and

[[Page 18903]]

appropriate response * * *, the prosecution in the reexamination 
proceeding will be a terminated prosecution, and the Director will 
proceed to issue and publish a certificate concluding the reexamination 
proceeding under Sec.  1.997 * * *.'' (Emphasis added). This makes it 
clear that the patent owner's failure to timely file a required 
response, where no claim has been found patentable, will result in the 
terminating of prosecution of the reexamination proceeding, but will 
not conclude the reexamination proceeding. As previously discussed for 
ex parte reexamination, the prosecution will be a terminated 
prosecution as of the day after the response was due and not timely 
filed. In this instance, the NIRC will be subsequently issued; however, 
it will not be the instrument that operates to terminate the 
prosecution, since that will have already automatically occurred upon 
the failure to respond. Also, ``issued and published'' is used to 
conform Sec.  1.550(d) to the language of 35 U.S.C. 316.
    Section 1.958: The heading of Sec.  1.958 is amended to refer to 
the termination of prosecution of the reexamination, rather than the 
termination or conclusion of the reexamination proceeding, since that 
is what the rule addresses.
    Section 1.979: Section 1.979(b) is amended to recite that ``[u]pon 
judgment in the appeal before the Board of Patent Appeals and 
Interferences, if no further appeal has been taken (Sec.  1.983), the 
prosecution in the inter partes reexamination proceeding will be 
terminated and the Director will issue and publish a certificate under 
Sec.  1.997 concluding the proceeding.'' This makes it clear that the 
termination of an appeal for an inter partes reexamination proceeding 
will result in a terminating of prosecution of the reexamination 
proceeding if no other appeal is present, but will not conclude the 
reexamination proceeding. Rather, it is the reexamination certificate 
under Sec.  1.997 that concludes the reexamination proceeding.
    In addition, the title of Sec.  1.979 is amended to add ``appeal'' 
before proceedings, and thus recite ``Return of Jurisdiction from the 
Board of Patent Appeals and Interferences; termination of appeal 
proceedings.'' This makes it clear that it is the appeal proceedings 
that are terminated; the reexamination proceeding is not terminated or 
concluded.
    Section 1.983: In Sec.  1.983(a), the prior incorrect reference to 
Sec.  1.979(e) is changed to recite the correct reference: Sec.  41.81.
    Section 1.989: Section 1.989(a) is amended to set forth that 
consolidated (merged) reexamination proceedings containing an inter 
partes reexamination proceeding will result in the issuance and 
publication of a single certificate under Sec.  1.570. As pointed out 
above, this tracks the statutory language.
    Section 1.991: In Sec.  1.991, ``and 41.60-41.81'' is added to the 
previously recited ``Sec. Sec.  1.902 through 1.997,'' since Sec. Sec.  
41.60-41.81 provide the requester with participation rights. Further, 
Sec.  1.991 is amended to make it clear that the issuance of a reissue 
patent for a merged reissue-reexamination proceeding effects the 
conclusion of the reexamination proceeding. This is distinguished from 
the termination of the reexamination prosecution, as pointed out above.
    Section 1.997: Both the heading of Sec.  1.997 and Sec.  1.997(a) 
are amended to make it clear that the issuance and publication of the 
inter partes reexamination certificate effects the conclusion of the 
reexamination proceeding. The failure to timely respond, or the 
issuance of the NIRC, does not conclude the reexamination proceeding. 
Section 1.997(a) is also revised to make its language consistent with 
that of Sec.  1.570(a). For consistency with the language of 35 U.S.C. 
316, Section 1.997, paragraphs (b) and (d), are amended to recite that 
the reexamination certificate is both issued and published.
    Section 41.4: Paragraph (b) of Sec.  41.4 is amended to (1) recite 
to ``a reexamination prosecution becoming terminated under Sec. Sec.  
1.550(d) or 1.957(b)'' rather than the prior recitation of ``a 
reexamination proceeding becoming terminated under Sec. Sec.  1.550(d) 
or 1.957(b),'' and (2) refer to the prosecution as being ``limited'' 
under Sec.  1.957(c) rather than ``terminated'' under Sec.  1.957(c). 
These changes track those made in Sec.  1.137; see the discussion of 
Sec.  1.137.

Rule Making Considerations

    Regulatory Flexibility Act: For the reasons set forth herein, the 
Deputy General Counsel for General Law of the United States Patent and 
Trademark Office has certified to the Chief Counsel for Advocacy of the 
Small Business Administration that the changes implemented in this 
notice will not have a significant economic impact on a substantial 
number of small entities. See 5 U.S.C. 605(b). The Office has issued 
between about 150,000 and 190,000 patents each year during the last 
five fiscal years. The Office receives fewer than 100 requests for 
inter partes reexamination each year. The principal impact of the 
changes in this final rule is to prohibit supplemental patent owner 
responses to an Office action in an inter partes reexamination without 
a showing of sufficient cause.
    The change in this final rule to prohibit supplemental patent owner 
responses to an Office action in an inter partes reexamination without 
a showing of sufficient cause will not have a significant economic 
impact on a substantial number of small entities for two reasons. 
First, assuming that all patentees in an inter partes reexamination are 
small entities and that all would have submitted a supplemental 
response without sufficient cause, the change would impact fewer than 
100 small entity patentees each year. Second, there is no petition or 
other fee for the showing of sufficient cause that would be necessary 
under the implemented change for a supplemental patent owner's response 
to an Office action in an inter partes reexamination.
    Therefore, the changes implemented in this notice will not have a 
significant economic impact on a substantial number of small entities.
    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: 0651-0027, 0651-0031, 0651-0033, and 0651-0035. The 
United States Patent and Trademark Office is not resubmitting the other 
information collections listed above to OMB for its review and approval 
because the changes in this notice do not affect the information 
collection requirements associated with the information collections 
under these OMB control numbers. The principal impacts of the changes 
in this final rule are to: (1) Prohibit supplemental patent owner 
responses to an Office action in an inter partes reexamination without 
a showing of sufficient cause, (2) designate the correspondence address 
for the patent as the correspondence address for all communications for 
patent owners in ex

[[Page 18904]]

parte and inter partes reexaminations, and (3) provide for the use of a 
single ``mail stop'' address for the filing of substantially all ex 
parte reexamination papers (as is already the case for inter partes 
reexamination papers).
    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 to 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 A. Clarke, Acting Director, Office of 
Patent Legal Administration, Commissioner for Patents, P.O. Box 1450, 
Alexandria, VA 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

37 CFR Part 1

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

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers.


0
For the reasons set forth in the preamble, 37 CFR parts 1 and 41 are 
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 1.1 is amended by revising paragraph (c)(1) to read as 
follows:


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

* * * * *
    (c) * * *
    (1) Requests for ex parte reexamination (original request papers) 
and all subsequent ex parte 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 Ex Parte Reexam.''
* * * * *

0
3. Section 1.8 is amended by revising the introductory text of 
paragraph (b) to read as follows:


Sec.  1.8  Certificate of mailing or transmission.

* * * * *
    (b) In the event that correspondence is considered timely filed by 
being mailed or transmitted in accordance with paragraph (a) of this 
section, but not received in the U.S. Patent and Trademark Office after 
a reasonable amount of time has elapsed from the time of mailing or 
transmitting of the correspondence, or after the application is held to 
be abandoned, or after the proceeding is dismissed or decided with 
prejudice, or the prosecution of a reexamination proceeding is 
terminated pursuant to Sec.  1.550(d) or Sec.  1.957(b) or limited 
pursuant to Sec.  1.957(c), or a requester paper is refused 
consideration pursuant to Sec.  1.957(a), the correspondence will be 
considered timely if the party who forwarded such correspondence:
* * * * *

0
4. Section 1.17 is amended by revising paragraphs (l) and (m) to read 
as follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (l) For filing a petition for the revival of an unavoidably 
abandoned application under 35 U.S.C. 111, 133, 364, or 371, for the 
unavoidably delayed payment of the issue fee under 35 U.S.C. 151, or 
for the revival of an unavoidably terminated or limited reexamination 
prosecution under 35 U.S.C. 133 (Sec.  1.137(a)):
    By a small entity (Sec.  1.27(a))--$250.00.
    By other than a small entity--$500.00.
    (m) For filing a petition for the revival of an unintentionally 
abandoned application, for the unintentionally delayed payment of the 
fee for issuing a patent, or for the revival of an unintentionally 
terminated or limited reexamination prosecution under 35 U.S.C. 
41(a)(7) (Sec.  1.137(b)):
    By a small entity (Sec.  1.27(a))--$750.00.
    By other than a small entity--$1,500.00.
* * * * *

0
5. Section 1.33 is amended by revising paragraph (c) to read as 
follows:


Sec.  1.33  Correspondence respecting patent applications, 
reexamination proceedings, and other proceedings.

* * * * *
    (c) All notices, official letters, and other communications for the 
patent owner or owners in a reexamination proceeding will be directed 
to the correspondence address. Amendments and other papers filed in a 
reexamination proceeding on behalf of the patent owner must be signed 
by the patent owner, or if there is more than one owner by all the 
owners, or by an attorney or agent of record in the patent file, or by 
a registered attorney or agent not of record who acts in a 
representative capacity under the provisions of Sec.  1.34. Double 
correspondence with the patent owner or owners and the patent owner's 
attorney or agent, or with more than one attorney or agent, will not be 
undertaken.
* * * * *

0
6. Section 1.137 is amended by revising its heading, the introductory 
text of paragraph (a), the introductory text of paragraph (b), and 
paragraph (e) to read as follows:


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

    (a) Unavoidable. If the delay in reply by applicant or patent owner 
was unavoidable, a petition may be filed pursuant to this paragraph to 
revive an abandoned application, a reexamination prosecution terminated 
under Sec. Sec.  1.550(d) or 1.957(b) or limited under Sec.  1.957(c), 
or a lapsed patent. A grantable petition pursuant to this paragraph 
must be accompanied by:
* * * * *
    (b) Unintentional. If the delay in reply by applicant or patent 
owner was unintentional, a petition may be filed pursuant to this 
paragraph to revive an abandoned application, a reexamination 
prosecution terminated under Sec. Sec.  1.550(d) or 1.957(b) or limited 
under Sec.  1.957(c), or a lapsed patent. A grantable petition pursuant 
to this paragraph must be accompanied by:
* * * * *
    (e) Request for reconsideration. Any request for reconsideration or 
review of a decision refusing to revive an abandoned application, a 
terminated or limited reexamination prosecution, or

[[Page 18905]]

lapsed patent upon petition filed pursuant to this section, to be 
considered timely, must be filed within two months of the decision 
refusing to revive or within such time as set in the decision. Unless a 
decision indicates otherwise, this time period may be extended under:
    (1) The provisions of Sec.  1.136 for an abandoned application or 
lapsed patent;
    (2) The provisions of Sec.  1.550(c) for a terminated ex parte 
reexamination prosecution, where the ex parte reexamination was filed 
under Sec.  1.510; or
    (3) The provisions of Sec.  1.956 for a terminated inter partes 
reexamination prosecution or an inter partes reexamination limited as 
to further prosecution, where the inter partes reexamination was filed 
under Sec.  1.913.
* * * * *

0
7. Section 1.502 is revised to read as follows:


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

    Citations by the patent owner under Sec.  1.555 and by an ex parte 
reexamination requester under either Sec.  1.510 or Sec.  1.535 will be 
entered in the reexamination file during a reexamination proceeding. 
The entry in the patent file of citations submitted after the date of 
an order to reexamine pursuant to Sec.  1.525 by persons other than the 
patent owner, or an ex parte reexamination requester under either Sec.  
1.510 or Sec.  1.535, will be delayed until the reexamination 
proceeding has been concluded by the issuance and publication of a 
reexamination certificate. See Sec.  1.902 for processing of prior art 
citations in patent and reexamination files during an inter partes 
reexamination proceeding filed under Sec.  1.913.

0
8. Section 1.510 is amended by revising paragraph (f) to read as 
follows:


Sec.  1.510  Request for ex parte reexamination.

* * * * *
    (f) If a request is filed by an attorney or agent identifying 
another party on whose behalf the request is being filed, the attorney 
or agent must have a power of attorney from that party or be acting in 
a representative capacity pursuant to Sec.  1.34.

0
9. Section 1.530 is amended by revising paragraphs (a), (k) and (l) to 
read as follows:


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

    (a) Except as provided in Sec.  1.510(e), no statement or other 
response by the patent owner in an ex parte reexamination proceeding 
shall be filed prior to the determinations made in accordance with 
Sec.  1.515 or Sec.  1.520. If a premature statement or other response 
is filed by the patent owner, it will not be acknowledged or considered 
in making the determination, and it will be returned or discarded (at 
the Office's option).
* * * * *
    (k) Amendments not effective until certificate. Although the Office 
actions will treat proposed amendments as though they have been 
entered, the proposed amendments will not be effective until the 
reexamination certificate is issued and published.
    (l) Correction of inventorship in an ex parte or inter partes 
reexamination proceeding.
    (1) When it appears in a patent being reexamined that the correct 
inventor or inventors were not named through error without deceptive 
intention on the part of the actual inventor or inventors, the Director 
may, on petition of all the parties set forth in Sec.  1.324(b)(1)-(3), 
including the assignees, and satisfactory proof of the facts and 
payment of the fee set forth in Sec.  1.20(b), or on order of a court 
before which such matter is called in question, include in the 
reexamination certificate to be issued under Sec.  1.570 or Sec.  1.997 
an amendment naming only the actual inventor or inventors. The petition 
must be submitted as part of the reexamination proceeding and must 
satisfy the requirements of Sec.  1.324.
    (2) Notwithstanding paragraph (1)(1) of this section, if a petition 
to correct inventorship satisfying the requirements of Sec.  1.324 is 
filed in a reexamination proceeding, and the reexamination proceeding 
is concluded other than by a reexamination certificate under Sec.  
1.570 or Sec.  1.997, a certificate of correction indicating the change 
of inventorship stated in the petition will be issued upon request by 
the patentee.

0
10. Section 1.550 is amended by revising paragraph (d) to read as 
follows:


Sec.  1.550  Conduct of ex parte reexamination proceedings.

* * * * *
    (d) If the patent owner fails to file a timely and appropriate 
response to any Office action or any written statement of an interview 
required under Sec.  1.560(b), the prosecution in the ex parte 
reexamination proceeding will be a terminated prosecution, and the 
Director will proceed to issue and publish a certificate concluding the 
reexamination proceeding under Sec.  1.570 in accordance with the last 
action of the Office.
* * * * *

0
11. Section 1.565 is amended by revising paragraphs (c) and (d) to read 
as follows:


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

* * * * *
    (c) If ex parte reexamination is ordered while a prior ex parte 
reexamination proceeding is pending and prosecution in the prior ex 
parte reexamination proceeding has not been terminated, the ex parte 
reexamination proceedings will usually be merged and result in the 
issuance and publication of a single certificate under Sec.  1.570. For 
merger of inter partes reexamination proceedings, see Sec.  1.989(a). 
For merger of ex parte reexamination and inter partes reexamination 
proceedings, see Sec.  1.989(b).
    (d) If a reissue application and an ex parte reexamination 
proceeding on which an order pursuant to Sec.  1.525 has been mailed 
are pending concurrently on a patent, a decision will usually be made 
to merge the two proceedings or to suspend one of the two proceedings. 
Where merger of a reissue application and an ex parte reexamination 
proceeding is ordered, the merged examination will be conducted in 
accordance with Sec. Sec.  1.171 through 1.179, and the patent owner 
will be required to place and maintain the same claims in the reissue 
application and the ex parte reexamination proceeding during the 
pendency of the merged proceeding. The examiner's actions and responses 
by the patent owner in a merged proceeding will apply to both the 
reissue application and the ex parte reexamination proceeding and will 
be physically entered into both files. Any ex parte reexamination 
proceeding merged with a reissue application shall be concluded by the 
grant of the reissued patent. For merger of a reissue application and 
an inter partes reexamination, see Sec.  1.991.
* * * * *

0
12. Section 1.570 is amended by revising its heading and paragraphs 
(a), (b) and (d), to read as follows:

[[Page 18906]]

Sec.  1.570  Issuance and publication of ex parte reexamination 
certificate concludes ex parte reexamination proceeding.

    (a) To conclude an ex parte reexamination proceeding, the Director 
will issue and publish an ex parte reexamination certificate in 
accordance with 35 U.S.C. 307 setting forth the results of the ex parte 
reexamination proceeding and the content of the patent following the ex 
parte reexamination proceeding.
    (b) An ex parte reexamination certificate will be issued and 
published in each patent in which an ex parte reexamination proceeding 
has been ordered under Sec.  1.525 and has not been merged with any 
inter partes reexamination proceeding pursuant to Sec.  1.989(a). Any 
statutory disclaimer filed by the patent owner will be made part of the 
ex parte reexamination certificate.
* * * * *
    (d) If an ex parte reexamination certificate has been issued and 
published which cancels all of the claims of the patent, no further 
Office proceedings will be conducted with that patent or any reissue 
applications or any reexamination requests relating thereto.
* * * * *

0
13. Section 1.902 is revised to read as follows:


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

    Citations by the patent owner in accordance with Sec.  1.933 and by 
an inter partes reexamination third party requester under Sec.  1.915 
or Sec.  1.948 will be entered in the inter partes reexamination file. 
The entry in the patent file of other citations submitted after the 
date of an order for reexamination pursuant to Sec.  1.931 by persons 
other than the patent owner, or the third party requester under either 
Sec.  1.913 or Sec.  1.948, will be delayed until the inter partes 
reexamination proceeding has been concluded by the issuance and 
publication of a reexamination certificate. See Sec.  1.502 for 
processing of prior art citations in patent and reexamination files 
during an ex parte reexamination proceeding filed under Sec.  1.510.

0
14. Section 1.915 is amended by revising paragraph (c) to read as 
follows:


Sec.  1.915  Content of request for inter partes reexamination.

* * * * *
    (c) If an inter partes request is filed by an attorney or agent 
identifying another party on whose behalf the request is being filed, 
the attorney or agent must have a power of attorney from that party or 
be acting in a representative capacity pursuant to Sec.  1.34.
* * * * *

0
15. Section 1.923 is revised to read as follows:


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

    Within three months following the filing date of a request for 
inter partes reexamination under Sec.  1.915, the examiner will 
consider the request and determine whether or not a substantial new 
question of patentability affecting any claim of the patent is raised 
by the request and the prior art citation. The examiner's determination 
will be based on the claims in effect at the time of the determination, 
will become a part of the official file of the patent, and will be 
mailed to the patent owner at the address as provided for in Sec.  
1.33(c) and to the third party requester. If the examiner determines 
that no substantial new question of patentability is present, the 
examiner shall refuse the request and shall not order inter partes 
reexamination.

0
16. Section 1.945 is revised to read as follows:


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

    (a) The patent owner will be given at least thirty days to file a 
response to any Office action on the merits of the inter partes 
reexamination.
    (b) Any supplemental response to the Office action will be entered 
only where the supplemental response is accompanied by a showing of 
sufficient cause why the supplemental response should be entered. The 
showing of sufficient cause must include:
    (1) An explanation of how the requirements of Sec.  1.111(a)(2)(i) 
are satisfied;
    (2) An explanation of why the supplemental response was not 
presented together with the original response to the Office action; and
    (3) A compelling reason to enter the supplemental response.

0
17. Section 1.953 is amended by revising paragraphs (b) and (c) to read 
as follows:


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

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

0
18. The undesignated center heading immediately preceding Sec.  1.956 
is revised to read as follows:

Extensions of Time, Terminating of Reexamination Prosecution, and 
Petitions To Revive in Inter Partes Reexamination

0
19. Section 1.957 is amended by revising paragraph (b) to read as 
follows:


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

* * * * *
    (b) If no claims are found patentable, and the patent owner fails 
to file a timely and appropriate response in an inter partes 
reexamination proceeding, the prosecution in the reexamination 
proceeding will be a terminated prosecution and the Director will 
proceed to issue and publish a certificate concluding the reexamination 
proceeding under Sec.  1.997 in accordance with the last action of the 
Office.
* * * * *

0
20. Section 1.958 is amended by revising its heading to read as 
follows:


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

* * * * *

[[Page 18907]]


0
21. Section 1.979 is amended by revising its heading and paragraph (b) 
to read as follows:


Sec.  1.979  Return of Jurisdiction from the Board of Patent Appeals 
and Interferences; termination of appeal proceedings.

* * * * *
    (b) Upon judgment in the appeal before the Board of Patent Appeals 
and Interferences, if no further appeal has been taken (Sec.  1.983), 
the prosecution in the inter partes reexamination proceeding will be 
terminated and the Director will issue and publish a certificate under 
Sec.  1.997 concluding the proceeding. If an appeal to the U.S. Court 
of Appeals for the Federal Circuit has been filed, that appeal is 
considered terminated when the mandate is issued by the Court.

0
22. Section 1.983 is amended by revising paragraph (a) 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.  41.81, 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.
* * * * *

0
23. Section 1.989 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.989  Merger of concurrent reexamination proceedings.

    (a) If any reexamination is ordered while a prior inter partes 
reexamination proceeding is pending for the same patent and prosecution 
in the prior inter partes reexamination proceeding has not been 
terminated, a decision may be made to merge the two proceedings or to 
suspend one of the two proceedings. Where merger is ordered, the merged 
examination will normally result in the issuance and publication of a 
single reexamination certificate under Sec.  1.997.
* * * * *

0
24. Section 1.991 is revised to read as follows:


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

    If a reissue application and an inter partes reexamination 
proceeding on which an order pursuant to Sec.  1.931 has been mailed 
are pending concurrently on a patent, a decision may be made to merge 
the two proceedings or to suspend one of the two proceedings. Where 
merger of a reissue application and an inter partes reexamination 
proceeding is ordered, the merged proceeding will be conducted in 
accordance with Sec. Sec.  1.171 through 1.179, and the patent owner 
will be required to place and maintain the same claims in the reissue 
application and the inter partes reexamination proceeding during the 
pendency of the merged proceeding. In a merged proceeding the third 
party requester may participate to the extent provided under Sec. Sec.  
1.902 through 1.997 and 41.60 through 41.81, except that such 
participation shall be limited to issues within the scope of inter 
partes reexamination. The examiner's actions and any responses by the 
patent owner or third party requester in a merged proceeding will apply 
to both the reissue application and the inter partes reexamination 
proceeding and be physically entered into both files. Any inter partes 
reexamination proceeding merged with a reissue application shall be 
concluded by the grant of the reissued patent.

0
25. Section 1.997 is amended by revising its heading and paragraphs 
(a), (b), and (d) to read as follows:


Sec.  1.997  Issuance and publication of inter partes reexamination 
certificate concludes inter partes reexamination proceeding.

    (a) To conclude an inter partes reexamination proceeding, the 
Director will issue and publish an inter partes reexamination 
certificate in accordance with 35 U.S.C. 316 setting forth the results 
of the inter partes reexamination proceeding and the content of the 
patent following the inter partes reexamination proceeding.
    (b) A certificate will be issued and published in each patent in 
which an inter partes reexamination proceeding has been ordered under 
Sec.  1.931. Any statutory disclaimer filed by the patent owner will be 
made part of the certificate.
* * * * *
    (d) If a certificate has been issued and published which cancels 
all of the claims of the patent, no further Office proceedings will be 
conducted with that patent or any reissue applications or any 
reexamination requests relating thereto.
* * * * *

PART 41--PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND 
INTERFERENCES

0
26. The authority citation for 37 CFR part 41 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 
135.


0
27. Section 41.4 is amended by revising paragraph (b) to read as 
follows:


Sec.  41.4  Timeliness.

* * * * *
    (b) Late filings. (1) A late filing that results in either an 
application becoming abandoned or a reexamination prosecution becoming 
terminated under Sec. Sec.  1.550(d) or 1.957(b) of this title or 
limited under Sec.  1.957(c) of this title may be revived as set forth 
in Sec.  1.137 of this title.
    (2) A late filing that does not result in either an application 
becoming abandoned or a reexamination prosecution becoming terminated 
under Sec. Sec.  1.550(d) or 1.957(b) of this title or limited under 
Sec.  1.957(c) of this title will be excused upon a showing of 
excusable neglect or a Board determination that consideration on the 
merits would be in the interest of justice.
* * * * *

    Dated: April 9, 2007.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
 [FR Doc. E7-7202 Filed 4-13-07; 8:45 am]
BILLING CODE 3510-16-P