Changes to Rules issued April 16, 2007, effective April 16, 2007

ederal Register Notice

<html> § 1.1 Addresses for non-trademark correspondence with the United States Patent and Trademark Office. ©

<I>For reexamination proceedings. </I></FONT></FONT>

(1)

Requests for <I>ex parte</I> reexamination (<I>original</I> request

papers <STRIKE>only</STRIKE>) 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©, 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<STRIKE>, terminated,</STRIKE> 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©, 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 <STRIKE>proceeding</STRIKE> 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. ©

All notices, official letters, and other communications for the

patent owner or owners in a reexamination proceeding will be directed to the correspondence address. <STRIKE>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.</STRIKE> 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. <STRIKE>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.</STRIKE> § 1.137 Revival of abandoned application, terminated or limited reexamination proceeding, or lapsed patent. (a)

<I>Unavoidable.</I>  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©, 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 &sect; 1.17(l);</FONT></FONT></P>

(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©, 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 &sect; </FONT></FONT><A HREF="http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_17.htm#cfr37s1.17"><U><FONT SIZE=2><FONT FACE="Times New Roman, serif"><FONT COLOR="#0000ff">1.17(m)</FONT></FONT></FONT></U></A><FONT SIZE=2><FONT FACE="Times New Roman, serif">;</FONT></FONT></FONT></P>

(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 &sect; </FONT></FONT><A HREF="http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_20.htm#cfr37s1.20"><U><FONT SIZE=2><FONT FACE="Times New Roman, serif"><FONT COLOR="#0000ff">1.20(d))</FONT></FONT></FONT></U></A><FONT SIZE=2><FONT FACE="Times New Roman, serif">

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 <STRIKE>proceeding</STRIKE> 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© 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 <STRIKE>proceeding</STRIKE> 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 <STRIKE>terminated</STRIKE> 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<STRIKE>(a)</STRIKE>. § 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 <I>ex parte</I> or <I>inter partes</I>

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 <STRIKE>terminated</STRIKE> 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. ©

If <I>ex parte </I>reexamination is ordered while a prior <I>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 <STRIKE>consolidated</STRIKE> 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 <I>ex parte </I>reexamination

proceeding on which an order pursuant to § 1.525 has been mailed are pending concurrently on a patent, a decision will <STRIKE>normally</STRIKE> 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 <STRIKE>after</STRIKE> concludes ex parte reexamination proceeding<STRIKE>s</STRIKE>. (a)

<STRIKE>Upon the conclusion of</STRIKE> <U><FONT COLOR="#0000ff">To

conclude an ex parte reexamination proceeding<STRIKE>s</STRIKE>, 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 <I>ex parte </I>reexamination certificate will be issued <U><FONT COLOR="#0000ff">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 <I>ex parte </I>reexamination certificate has been issued <U><FONT COLOR="#0000ff">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 § <STRIKE>1.915</STRIKE> 1.913 or § 1.948, will be delayed until the inter partes reexamination proceeding has been <STRIKE>terminated</STRIKE> 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. ©

If an <I>inter partes </I>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<STRIKE>(a)</STRIKE>. § 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 § <STRIKE>1.919</STRIKE> 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© 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. <STRIKE>Any appeal by the parties shall be conducted in accordance with §§ 1.959-1.983.</STRIKE> © 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 <STRIKE>Proceedings</STRIKE> 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 <STRIKE>terminated</STRIKE> inter partes reexamination prosecution <STRIKE>or claims</STRIKE> 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 <STRIKE>terminating</STRIKE> 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 <I>inter partes</I>

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 § <STRIKE>1.979(e)</STRIKE> 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 <I>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 <STRIKE>terminated</STRIKE> concluded by the grant of the reissued patent. § 41.4 Timeliness. (b)

<I>Late filings. </I> (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© 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© 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. </html>

Changes to Rules issued April 16, 2007, effective April 16, 2007

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