[Federal Register: February 23, 2006 (Volume 71, Number 36)]
[Rules and Regulations]
[Page 9260-9262]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr23fe06-4]
=======================================================================
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2006-0007]
RIN 0651-AC02
Clarification of Filing Date Requirements for Ex Parte and Inter
Partes Reexamination Proceedings
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Interim rule.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice relating to the filing date requirements
for ex parte and inter partes reexamination proceedings for consistency
with the provisions of the patent statute governing ex parte and inter
partes reexamination proceedings. The Office is specifically revising
the rules to require that a request for ex parte reexamination or for
inter partes reexamination must meet all the applicable statutory
requirements before a filing date is accorded to the request for ex
parte reexamination or for inter partes reexamination.
DATES: Effective Date: March 27, 2006.
Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before April 24, 2006. No public
hearing will be held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: ac2/comments@uspto.gov. Comments may also be
submitted by mail addressed to: Box Comments--Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, or by facsimile
transmission to (571) 273-7710 marked to the attention of Kenneth M.
Schor. Although comments may be submitted by mail or facsimile, the
Office prefers to receive comments via the Internet. If comments are
submitted by mail, the Office prefers that the comments be submitted on
a DOS formatted 3\1/2\ inch disk accompanied by a paper copy.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia, and will be available via the
Office Internet Web site (address: http://www.uspto.gov). Because
comments will be made available for public inspection, information that
is not desired to be made public, such as an address or phone number,
should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: By telephone--Kenneth M. Schor, at
(571) 272-7710 or Robert J. Spar at (571) 272-7700; by mail addressed
to U.S. Patent and Trademark Office, Mail Stop Comments--Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of Kenneth M. Schor; by facsimile transmission
to (571) 273-7710 marked to the attention of Kenneth M. Schor; or by
electronic mail message over the Internet addressed to
kenneth.schor@uspto.gov.
SUPPLEMENTARY INFORMATION: The Office is revising the rules of practice
in title 37 of the Code of Federal Regulations (CFR) to require that a
request for ex parte reexamination or for inter partes reexamination
must meet all the applicable statutory requirements in 35 U.S.C. 302 or
311 before a filing date is accorded to the request for ex parte
reexamination or for inter partes reexamination. Thus, the Office is
amending the rules to clearly require compliance with all the
requirements of filing an ex parte reexamination request (set forth in
37 CFR 1.510(b)) before a filing date will be assigned to an ex parte
reexamination request, and to clearly require compliance with all the
requirements of filing an inter partes reexamination request (set forth
in 37 CFR 1.915(b)) before a filing date will be assigned to an inter
partes reexamination request.
Section 1.510 sets forth the requirements for the content of a
request for ex parte reexamination. Section 1.915 sets forth the
requirements for the content of a request for inter partes
reexamination.
Former Sec. 1.510(d) states that the filing date of a request for
ex parte reexamination is ``(1) The date on which the request including
the entire fee for requesting reexamination is received in the Patent
and Trademark Office; or (2) The date on which the last portion of the
fee for requesting reexamination is received'' (emphasis added). In
like manner, former Sec. 1.919(a) states that ``[t]he filing date of a
request for inter partes reexamination is the date on which the request
satisfies the fee requirement of Sec. 1.915(a)'' (emphasis added).
Given the former rule language, it may have appeared that compliance
with the provisions of Sec. 1.510(b) or
[[Page 9261]]
Sec. 1.915(b) is not required for obtaining a filing date in
reexamination. However, 35 U.S.C. 302 (for ex parte reexamination)
requires that ``[t]he request must set forth the pertinency and manner
of applying cited prior art to every claim for which reexamination is
requested.'' Likewise, 35 U.S.C. 311(b) (for inter partes
reexamination) requires that the request must ``include the identity of
the real party in interest'' and ``set forth the pertinency and manner
of applying cited prior art to every claim for which reexamination is
requested.'' Reexamination requesters do not always comply with these
statutory requirements when submitting requests for reexamination.
Furthermore, the information missing due to a lack of compliance with
Sec. 1.510(b) or Sec. 1.915(b) is often relevant to the decision on
whether to grant the request for reexamination. This presents a
difficulty for the Office in view of the statutory requirements of 35
U.S.C. 303 (for ex parte reexamination) and 35 U.S.C. 312 (for inter
partes reexamination) that the decision on the request must be issued
within three months of the filing date of the request for reexamination
because the process of notifying the requester of non-compliance and
obtaining the missing information may very well extend beyond the
three-month statutory deadline, or the information may be provided so
close to the deadline that there is not sufficient time to properly
evaluate it.
To address this problem, Sec. Sec. 1.510(c) and (d) are revised to
clearly require compliance with all the requirements of Sec. Sec.
1.510(a) and (b) in order to obtain an ex parte reexamination filing
date (and a decision on the request for reexamination). Likewise, Sec.
1.919(a) is revised to clearly require compliance with all the
requirements of Sec. 1.915 in order to obtain an inter partes
reexamination filing date. This revision should not have a significant
impact on reexamination requesters because the filing date in a
reexamination proceeding does not have the same legal significance as
the filing date in other Office patent proceedings (cf. 35 U.S.C.
102(b)). The rules now simply clearly recite that the statutory
requirements for a request for reexamination must be fulfilled before a
filing date will be assigned. See 35 U.S.C. 302 and 35 U.S.C. 311.
Section-by-Section Discussion
Section 1.510: Section 1.510(c) is revised to provide that if a
request for ex parte reexamination does not (1) include the fee for
requesting ex parte reexamination and (2) comply with all the
requirements of Sec. 1.510(b), then the person identified as
requesting reexamination will be notified and will generally be given
an opportunity to complete the request within a specified time. If the
request is not completed within the time specified, the request will
not be granted a filing date and no decision on the request will be
made. The request may be placed in the patent file as a citation if it
complies with the requirements of Sec. 1.501. Deleted from former
Sec. 1.510(c) is the sentence: ``If the fee for requesting
reexamination has been paid but the defect in the request is not
corrected within the specified time, the determination whether or not
to institute reexamination will be made on the request as it then
exists.''
Section 1.510(c) states that the requester will ``generally'' be
given an opportunity to complete the request, because, in some
instances, it may not be practical or even possible to provide an
opportunity for completion of the request. For example, the request
might be submitted anonymously (though such is not proper), or without
an address, or with an inoperative address. In such instances, the
requester would be notified of the incomplete request by publication in
the Official Gazette, but an opportunity to complete the request would
not be provided.
Section 1.510(d) is revised to provide that the filing date of the
request for an ex parte reexamination request is the date on which the
request satisfies all the requirements of Sec. Sec. 1.510(a) and (b).
Until that point, the request for reexamination is not complete.
Section 1.915: Section 1.915(d) is revised to provide that if a
request for inter partes reexamination does not (1) include the fee for
requesting inter partes reexamination and (2) comply with all the
requirements of Sec. 1.915(b), then the person identified as
requesting reexamination will be notified and will generally be given
an opportunity to complete the request within a specified time. If the
request is not completed within the time specified, the request will
not be granted a filing date and no decision on the request will be
made.
Section 1.915(d) states that the requester will ``generally'' be
given an opportunity to complete the request, because, in some
instances, it may not be practical or even possible to provide an
opportunity for completion of the request (see discussion of Sec.
1.510(c)).
Section 1.915(d) stated, prior to the change made via the present
rule making, that the reexamination proceeding may be vacated under
this circumstance. Based on the revision to Sec. 1.919(a) set forth
immediately below, however, the inter partes request will not be
granted a filing date under this circumstance; thus, there will be no
reexamination proceeding to vacate.
Section 1.919: Section 1.919(a) is revised to require that the
request for inter partes reexamination must satisfy all the
requirements for the request set forth in Sec. 1.915, prior to
assignment of a filing date. Until that point, the request for
reexamination is not complete.
Rule Making Considerations
Administrative Procedure Act: The changes in this interim rule
merely revise the rules of practice (37 CFR 1.510 and 1.915) to require
that a request for ex parte reexamination or for inter partes
reexamination meets the requirements in 35 U.S.C. 302 and 311 for a
request for ex parte reexamination or for inter partes reexamination
before a filing date is accorded to the request for ex parte
reexamination or for inter partes reexamination. Therefore, these rule
changes involve interpretive rules, or rules of agency practice and
procedure under 5 U.S.C. 553(b)(A), and prior notice and an opportunity
for public comment were not required pursuant to 5 U.S.C. 553(b)(A) (or
any other law). See Bachow Communications Inc. v. FCC, 237 F.3d 683,
690 (DC Cir. 2001) (rules governing an application process are ``rules
of agency organization, procedure, or practice'' and are exempt from
the Administrative Procedure Act's notice and comment requirement); see
also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d
1347, 1351 (Fed. Cir. 1996) (the rules of practice promulgated under
the authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are
not substantive rules (to which the notice and comment requirements of
the Administrative Procedure Act apply)), and Fressola v. Manbeck, 36
USPQ2d 1211, 1215 (D.D.C. 1995) (``it is doubtful whether any of the
rules formulated to govern patent and trade-mark practice are other
than `interpretative rules, general statements of policy, * * *
procedure, or practice.' '') (quoting C.W. Ooms, The United States
Patent Office and the Administrative Procedure Act, 38 Trademark Rep.
149, 153 (1948)). Accordingly, prior notice and an opportunity for
public comment were not required pursuant to 5 U.S.C. 553(b)(A) (or any
other law).
Regulatory Flexibility Act: As discussed previously, the changes in
this interim rule involve rules of agency practice and procedure under
5 U.S.C. 553(b)(A), and prior notice and an opportunity for public
comment were not required pursuant to 5 U.S.C.
[[Page 9262]]
553(b)(A) (or any other law). As prior notice and an opportunity for
public comment were not required pursuant to 5 U.S.C. 553 (or any other
law) for the changes in this interim rule, a regulatory flexibility
analysis under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is
not required for the changes in this interim rule. See 5 U.S.C. 603.
Executive Order 13132: This rule making does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (August 4, 1999).
Executive Order 12866: This rulemaking has been determined to be
not significant for purposes of Executive Order 12866 (September 30,
1993).
Paperwork Reduction Act: This interim rule involves information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). The collection of information involved in
this interim rule has been reviewed and previously approved by OMB
under OMB control number 0651-0033. The United States Patent and
Trademark Office is not resubmitting any information collection to OMB
for its review and approval because the changes in this interim rule do
not affect the information collection requirements associated with the
information collection under OMB control number 0651-0033. The
principal impacts of the changes in this interim rule are to clarify
the requirement for compliance with all the requirements of filing a
reexamination before a filing date will be assigned to a reexamination.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this burden
to: (1) The Office of Information and Regulatory Affairs, Office of
Management and Budget, New Executive Office Building, Room 10202, 725
17th Street, NW., Washington, DC 20503, Attention: Desk Officer for the
Patent and Trademark Office; and (2) Robert J. Spar, Director, Office
of Patent Legal Administration, Commissioner for Patents, P.O. Box
1450, Alexandria, Virginia 22313-1450.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small Businesses, and Biologics.
0
For the reasons set forth in the preamble, 37 CFR part 1 is amended as
follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
0
2. Section 1.510 is amended by revising paragraphs (c) and (d) to read
as follows:
Sec. 1.510 Request for ex parte reexamination.
* * * * *
(c) If the request does not include the fee for requesting ex parte
reexamination required by paragraph (a) of this section and all of the
parts required by paragraph (b) of this section, then the person
identified as requesting reexamination will be so notified and will
generally be given an opportunity to complete the request within a
specified time. Failure to comply with the notice will result in the ex
parte reexamination request not being granted a filing date, and will
result in placement of the request in the patent file as a citation if
it complies with the requirements of Sec. 1.501.
(d) The filing date of the request for ex parte reexamination is
the date on which the request satisfies all the requirements of
paragraphs (a) and (b) of this section.
* * * * *
0
3. Section 1.915 is amended by revising paragraph (d) as follows:
Sec. 1.915 Content of request for inter partes reexamination.
* * * * *
(d) If the inter partes request does not meet all the requirements
of subsection 1.915(b), the person identified as requesting inter
partes reexamination will be so notified and will generally be given an
opportunity to complete the formal requirements of the request within a
specified time. Failure to comply with the notice will result in the
inter partes reexamination request not being granted a filing date.
0
4. Section 1.919 is amended by revising paragraph (a) to read as
follows:
Sec. 1.919 Filing date of request for inter partes reexamination.
(a) The filing date of a request for inter partes reexamination is
the date on which the request satisfies all the requirements for the
request set forth in Sec. 1.915.
* * * * *
Dated: February 16, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 06-1678 Filed 2-22-06; 8:45 am]
BILLING CODE 3510-16-P