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 § 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 § 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 § 1.915(a)” (emphasis added). Given the former rule language, it may have appeared that compliance with the provisions of § 1.510(b) or ( printed page 9261) § 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 § 1.510(b) or § 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, §§ 1.510(c) and (d) are revised to clearly require compliance with all the requirements of §§ 1.510(a) and (b) in order to obtain an ex parte reexamination filing date (and a decision on the request for reexamination). Likewise, § 1.919(a) is revised to clearly require compliance with all the requirements of § 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. See35 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 § 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 § 1.501. Deleted from former § 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 §§ 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 § 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 § 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 § 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 § 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. ( printed 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. See5 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.

For the reasons set forth in the preamble, 37 CFR part 1 is amended as follows:

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.

2. Section 1.510 is amended by revising paragraphs (c) and (d) to read as follows:

3. Section 1.915 is amended by revising paragraph (d) as follows:

4. Section 1.919 is amended by revising paragraph (a) to read as follows: