[Federal Register Volume 75, Number 150 (Thursday, August 5, 2010)]
[Notices]
[Pages 47269-47270]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-19337]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2010-0056]


Pilot Program for Waiver of Patent Owner's Statement in Ex Parte 
Reexamination Proceedings

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) 
recognizes the need to reduce the pendency of reexamination proceedings 
and improve the efficiency of the reexamination process. The USPTO is 
considering a number of short and long-range initiatives that can be 
implemented in three phases. In phase I, the USPTO will implement 
streamlined procedures, as well as optional programs in which patent 
owners and third party requesters may elect to participate in order to 
gain the benefit of shorter pendency. In phases II and III, the USPTO 
will consider the data gathered from phase I and the feedback from the 
patent owners and other stakeholders, and implement process changes 
that are likely to improve efficiency. Such changes may include 
internal procedural changes, rule making that includes opportunities 
for the public to comment, and/or administrative proposals for 
statutory changes to enhance the efficiency of the USPTO in conducting 
reexamination proceedings. As part of phase I to reduce pendency and 
improve efficiency in ex parte reexamination proceedings, the USPTO is 
implementing, in this notice, a pilot program in which patent owners 
may waive the right to file a patent owner's statement upon a request 
made by the USPTO. This will enable USPTO in suitable cases to issue 
the first Office action on the merits together with or soon after the 
reexamination order, and thereby reduce the pendency of the proceeding 
by about three to five months.

DATES: Effective Date: The changes set forth in this notice will take 
effect on August 5, 2010.

FOR FURTHER INFORMATION CONTACT: Robert A. Clarke, Kenneth M. Schor or 
Joni Y. Chang, Office of Patent Legal Administration, Office of the 
Associate Commissioner for Patent Examination Policy, by telephone at 
571-272-7735, 571-272-7710 or 571-272-7720, or by mail addressed to: 
Mail Stop Comments Patents, Commissioner for Patents, P.O. Box 1450, 
Alexandria, VA 22313-1450.
    Inquiries regarding the current reexamination practice may be 
directed to the Office of Patent Legal Administration, by telephone at 
(571) 272-7703, or by electronic mail at [email protected].

SUPPLEMENTARY INFORMATION:
    I. Background: The USPTO recognizes the need to reduce the pendency 
of reexamination proceedings and improve the efficiency of the 
reexamination process. As of March 31, 2010, the average time to reach 
notice of intent to issue reexamination certificate (NIRC) for ex parte 
reexamination proceedings was about twenty-five months. Many of our 
stakeholders have expressed the desire to have a proceeding in which 
patent owners can resolve patent

[[Page 47270]]

validity issues in a shorter time frame. The USPTO is considering a 
number of short and long-range initiatives that can be implemented in 
three phases to reduce pendency and improve efficiency in reexamination 
proceedings. In phase I, the USPTO will implement streamlined 
procedures and optional programs in which patent owners and third party 
requesters may elect to participate in order to gain the benefit of 
shorter pendency. For example, the USPTO recently implemented the 
streamlined procedure for appeal brief review in ex parte reexamination 
proceedings. See Streamlined Procedure for Appeal Brief Review in Ex 
Parte Reexamination Proceedings, 75 FR 29321 (May 25, 2010). In the 
instant notice, the USPTO is implementing a pilot program in which 
patent owners may waive the right to file a patent owner's statement in 
response to a request from the USPTO. The USPTO will also publish 
notices to implement additional optional procedures and seek public 
comments on other procedural changes in the near future. In phases II 
and III, the USPTO will consider the data gathered from phase I and the 
feedback from the patent owners and other stakeholders, and implement 
process changes through internal procedural changes, rule making that 
includes opportunities for the public to comment, and/or administrative 
proposals for statutory changes to enhance reexamination proceedings. 
The USPTO welcomes feedback on improving its processes. Suggestions may 
be directed to the Office of Patent Legal Administration at (571) 272-
7701 for the general examination process, or (571) 272-7703 for the 
reexamination or reissue process.
    II. Overview of the Pilot Program: As part of phase I to reduce 
pendency and improve efficiency in ex parte reexamination proceedings, 
the USPTO will implement a pilot program in which the USPTO will 
contact the patent owner and request the optional waiver of the right 
to file a patent owner's statement after the proceeding has been 
granted a filing date and before the examiner begins his or her review. 
This will enable the USPTO in suitable cases to issue the first Office 
action on the merits (including an NIRC) together with or soon after 
the order for reexamination, and thereby reduce the pendency of the 
proceeding by about three to five months.
    Under the current procedure, a patent owner may file a statement 
under 35 U.S.C. 304 within two months from the issuance of an ex parte 
reexamination order in a reexamination proceeding, and a third party 
requester may file a reply (under 35 U.S.C. 304) to the patent owner's 
statement within two months from the date of service of the patent 
owner's statement. Last year, approximately ten percent of patent 
owners filed a patent owner's statement under 35 U.S.C. 304 after the 
USPTO had ordered an ex parte reexamination of a patent. When ex parte 
reexamination is ordered, the examiner generally starts to prepare the 
first Office action on the merits after the receipt of the patent 
owner's statement and the third party requester's reply, or after the 
expiration of the time period for filing the statement and reply. As of 
March 31, 2010, the average time to order an ex parte reexamination 
from the filing of an ex parte reexamination request was about two 
months and the average time to issue a first Office action on the 
merits from the filing of an ex parte reexamination request was between 
seven to eight months.
    If the patent owner waives the right to file a patent owner's 
statement in response to a request from the USPTO, the examiner will be 
able to act on the first Office action on the merits immediately after 
determining that reexamination will be ordered, and in a suitable case 
issue the reexamination order and the first Office action on the merits 
(including an NIRC) at the same time. This will eliminate the delay of 
waiting for a patent owner's statement and the third-party requester's 
reply and will permit the examiner to utilize his or her time more 
efficiently by drafting the order and the first Office action on the 
merits (including an NIRC) together. Moreover, by performing the 
threshold analysis of determining and preparing an action on the merits 
concurrently when a request raises a substantial new question of 
patentability (SNQ), the overall efficiency of the USPTO in performing 
the reexamination process should be increased. The Central 
Reexamination Unit (CRU) has experience in performing the threshold SNQ 
analysis and concurrently preparing an Office action on the merits, and 
the reexamination order and Office action are typically mailed together 
in inter partes reexamination proceedings. See 37 CFR 1.935.
    III. Waiver Procedure under the Pilot Program: Under the pilot 
program for waiving the patent owner's statement announced in this 
notice, the CRU will contact, via telephone, the patent owner to 
request the optional waiver of the patent owner's statement after the 
proceeding has been granted a filing date and before the examiner 
begins his or her review. The telephone communication will be limited 
to the CRU requesting the waiver of the patent owner's statement and 
agreement (or non-agreement) to the waiver by the patent owner. 
Discussion of the merits of the proceedings, e.g., the patentability of 
claims in patents, will not be permitted. The CRU will make the 
agreement or non-agreement of record in the reexamination file in an 
interview summary and a copy will be mailed to the patent owner and any 
third party requester. The patent owner is not required to complete a 
written statement of the telephone communication under 37 CFR 1.560(b) 
or otherwise, and such a statement should not be filed as it will slow 
the process. If the patent owner agrees to the waiver of the right to 
file a patent owner's statement, the examiner will typically issue the 
reexamination order and the first Office action on the merits on the 
same day as the order, or within a few days thereafter.
    The Office intends to make available to the public statistics on 
the number of patent owners that agree to waive the statement and the 
impact on pendency due to waiving the statement right. This data is 
expected to form a portion of the data used in the decision making 
processes in phases II and III.

    Dated: July 16, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2010-19337 Filed 8-4-10; 8:45 am]
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