§ 1.1 Addresses for non-trademark correspondence with the United States Patent and Trademark Office.
(c) For reexamination proceedings.
(1)
Requests for ex parte reexamination (original request
papers only) and
all subsequent ex parte reexamination correspondence filed in
the Office, other than correspondence to the Office of the General
Counsel pursuant to § 1.1(a)(3) and § 1.302(c),
should be additionally marked "Mail Stop Ex parte
Reexam."
§ 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, terminated,
or decided with prejudice, or the
prosecution of a reexamination proceeding is terminated pursuant to §
1.550(d) or § 1.957(b) or limited pursuant to § 1.957(c),
or a requester paper is refused consideration pursuant to §
1.957(a), the correspondence will be considered timely if
the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
(3) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing or transmission. If the correspondence was sent by facsimile transmission, a copy of the sending unit's report confirming transmission may be used to support this statement.
§ 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 reexamination proceeding
proceeding under 35 U.S.C. 133 (§
1.137(a)):
By a small entity (§ 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 proceeding under 35 U.S.C. 41(a)(7) (§ 1.137(b)):
By a small entity (§ 1.27(a)) -- $750.00
By other than a small entity -- $1,500.00
§ 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.
attorney or agent of record (see § 1.32(b)) in
the patent file at the address listed on the register of patent
attorneys and agents maintained pursuant to §§ 11.5 and
11.11 of this subchapter, or, if no attorney or agent is of record,
to the patent owner or owners at the address or addresses of record.
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 § 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. If
more than one attorney or agent is of record and a correspondence
address has not been specified, correspondence will be held with the
last attorney or agent made of record.
§ 1.137 Revival of abandoned application, terminated or limited reexamination proceeding, 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 proceeding terminated under §§ 1.550(d) or 1.957(b) or limited under § 1.957(c), or a lapsed patent. A grantable petition pursuant to this paragraph must be accompanied by:
(1) The reply required to the outstanding Office action or notice, unless previously filed;
(2) The petition fee as set forth in § 1.17(l);
(3) A showing to the satisfaction of the Director that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unavoidable; and
(4) Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section.
(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 proceeding terminated under §§ 1.550(d) or 1.957(b) or limited under § 1.957(c), or a lapsed patent. A grantable petition pursuant to this paragraph must be accompanied by:
(1) The reply required to the outstanding Office action or notice, unless previously filed;
(2) The petition fee as set forth in § 1.17(m);
(3) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional. The Director may require additional information where there is a question whether the delay was unintentional; and
(4) Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section.
***
(e) Request
for reconsideration. Any request for reconsideration or review
of a decision refusing to revive an abandoned application, a
terminated or limited
reexamination proceeding
prosecution, or 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 § 1.136 for an abandoned application or lapsed patent;
(2) The provisions of § 1.550(c) for a terminated ex parte reexamination proceeding, where the ex parte reexamination was filed under § 1.510; or
(3)
The provisions of § 1.956 for a terminated inter partes
reexamination proceeding
prosecution or an inter partes reexamination
limited as to further prosecution, where the inter partes
reexamination was filed under § 1.913.
§ 1.502 Processing of prior art citations during an ex parte reexamination proceeding.
Citations
by the patent owner under § 1.555 and by an ex parte
reexamination requester under either § 1.510 or § 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 § 1.525 by
persons other than the patent owner, or an ex parte
reexamination requester under either § 1.510 or § 1.535,
will be delayed until the reexamination proceeding has been
terminated concluded
by the issuance and publication of a reexamination certificate.
See § 1.902 for processing of prior art citations in patent and
reexamination files during an inter partes reexamination
proceeding filed under § 1.913.
§ 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 § 1.34(a).
§ 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 § 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 § 1.515 or § 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 § 1.324(b)(1)-(3), including the assignees, and satisfactory proof of the facts and payment of the fee set forth in § 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 § 1.570 or § 1.977 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 § 1.324.
(2) Notwithstanding
the preceding paragraph (1)(1) of this section, if a petition to
correct inventorship satisfying the requirements of § 1.324 is
filed in a reexamination proceeding, and the reexamination proceeding
is terminated concluded
other than by a reexamination certificate under § 1.570 or
§1.977, a certificate of correction indicating the change of
inventorship stated in the petition will be issued upon request by
the patentee.
§ 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 § 1.560(b), the prosecution in the ex parte reexamination proceeding will be a terminated prosectuion, and the Director will proceed to issue and publish a certificate under § 1.570 in accordance with the last action of the Office.
§ 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 consolidated
merged and result in the issuance
of a single certificate under § 1.570. For merger of inter
partes reexamination proceedings, see § 1.989(a). For
merger of ex parte reexamination and inter partes
reexamination proceedings, see § 1.989(b).
(d)
If a reissue application and an ex parte reexamination
proceeding on which an order pursuant to § 1.525 has been mailed
are pending concurrently on a patent, a decision will normally
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 §§ 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 be physically entered into both files. Any ex
parte reexamination proceeding merged with a reissue application
shall be terminated by the grant of the reissued patent. For merger
of a reissue application and an inter partes reexamination,
see § 1.991.
§
1.570 Issuance and publication of ex
parte reexamination certificate after
concludes ex parte reexamination
proceedings.
(a)
Upon the conclusion of To
conclude an ex parte reexamination proceedings,
the Director will issue 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 § 1.525 and has not been merged with any inter partes reexamination proceeding pursuant to § 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.
§ 1.902 Processing of prior art citations during an inter partes reexamination proceeding.
Citations
by the patent owner in accordance with § 1.933 and by an inter
partes reexamination third party requester under § 1.915 or
§ 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 § 1.931
by persons other than the patent owner, or the third party requester
under either § 1.915
1.913 or § 1.948, will be
delayed until the inter partes reexamination proceeding has
been terminated
concluded by the issuance and publication of
a reexamination certificate. See § 1.502 for
processing of prior art citations in patent and reexamination files
during an ex parte reexamination proceeding filed under §
1.510.
§ 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 § 1.34(a).
§ 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 § 1.919
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 § 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.
§ 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 § 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.
§ 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 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. Any
appeal by the parties shall be conducted in accordance with §§
1.959-1.983.
(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 § 1.997 in accordance with the Right of Appeal Notice.
Header
preceding 1.956 changed to read: “Extensions of Time,
Termination of Proceedings
Reexamination Prosecution, and Petitions
To Revive in Inter Partes Reexamination”
§ 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 terminated and the Director will proceed to issue and publish a certificate under § 1.997 in accordance with the last action of the Office.
§
1.958 Petition to revive terminated
inter partes reexamination prosecution
or claims terminated
for lack of patent owner response.
***
§ 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 (§ 1.983),
the inter partes reexamination proceeding will be terminated
and the Director will issue and publish
a certificate under § 1.997 terminating
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.
§ 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 § 1.979(e)
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.
§ 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 § 1.997.
§ 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 § 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 §§ 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 §§ 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
terminated concluded
by the grant of the reissued patent.
§ 41.4 Timeliness.
(b) Late filings. (1) A late filing that results in either an application becoming abandoned or a reexamination proceeding becoming terminated under §§ 1.550(d) or 1.957(b) or a limited under § 1.957(c) of this title may be revived as set forth in § 1.137 of this title.
(2) A late filing that does not result in either an application becoming abandoned or a reexamination proceeding becoming terminated under §§ 1.550(d) or 1.957(b) or limited under §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.