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Revisions and Technical Corrections Affecting Requirements for Reexamination
Docket No.: PTO-P-2005-0016, 37 CFR Parts 1 and 41, RIN 0651-AB77, 04/16/2007
Basic Information
The United States Patent and Trademark Office (USPTO) of the Department of Commerce has issued revisions and technical corrections to the prior rules regarding requirements for ex-parte and inter partes re-examination. Such changes, issued on April 16, 2007 and made effective on May 16, 2007, briefly refer to:
(1) ex parte and inter partes reexamination in practice, where the correspondence address for the patent was assigned as the correct address for all communications for patent owners in an ex parte reexamination or inter partes reexamination. The old rule required that all notices, official letters, and other communications for patent owners in a reexamination proceeding should be sent to the attorney or agent of record in the patent file at the address listed on the register of patent attorneys and agents maintained by the Office of Enrollment and Discipline (OED) ;
(2) filing of reexamination papers, where the rules on such filings have been simplified by directing the use of a single “mail stop” address for the filing of substantially all ex parte reexamination papers, as has been done with respect to inter partes reexamination papers;
(3) the tendering of responses by patent owners, where the USPTO has disallowed supplemental patent owner responses to an Office action in an inter partes reexamination proceeding, unless the patent owner can present a sufficient cause; and
(4) clarification of changes pertaining to reexamination rule terminology and applicability, and correction of inadvertent errors in the text of certain reexamination rules. An example of this clarification is the distinction provided for under the new rule between “terminating the prosecution of the reexamination proceeding,” on one hand, and the “conclusion of the reexamination proceeding,” on the other, in the light of the Federal Circuit decision in the case of In re Bass, 314 F.3d 575, 577, 65 USPQ2d 1156, 1157 (Fed. Cir. 2003).
These amendments in the rules would apply to any reexamination proceeding (ex parte or inter partes) that is pending before the USPTO as of May 16, 2007and to any reexamination proceeding that is filed after that date.
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