By Donald Zuhn --
Last week, the U.S. Patent and Trademark Office published a notice in the Federal Register (76 Fed. Reg. 22854) proposing a number of changes to ex parte and inter partes reexamination proceedings. In addition, the USPTO announced that it was seeking public comment regarding the proposed changes and that the Office would be holding a public meeting on June 1, 2011 to discuss the proposed changes.
The notice indicates that the proposed changes are intended to streamline the procedures governing ex parte and inter partes reexamination proceedings, by seeking to achieve faster, more efficient resolution of the substantial new question of patentability (SNQ) for which reexamination is ordered. While some of the proposed changes discussed in the notice impact both ex parte and inter partes reexamination proceedings, other changes are specific to either ex parte or inter partes reexamination proceedings.
Changes impacting both ex parte and inter partes reexamination proceedings include:
• Require requester to separately explain how each SNQ presented in the request is "new" relative to other examinations of the patent claims (rather than merely stating what the SNQ is believed to be).
• Require requester to explain how the references apply to every limitation of every claim for which reexamination is requested.
• Require requester to explain how multiple SNQs raised in the same request are non-cumulative of each other; cumulative SNQs will be deemed to constitute a single SNQ.
• Permit the examiner to select one or more representative rejections from among a group of adopted rejections.
• Limit requester's declaration and other evidence mainly to the request -- new evidence may be submitted only to rebut point made in Office action or patent owner's response or statement.
• Limit patent owner's amendments and evidence mainly to the first action response -- new amendments or evidence may be submitted in response to new ground of rejection.
• Prohibit entry of claim amendments unless accompanied by a statement explaining how the proposed new claim language renders the claims patentable in light of an SNQ.
• Clearly define petitions practice (see table listing examples of petitions filed in reexamination proceedings on page 22858 of the Office's notice).
Changes specific to ex parte reexamination proceedings include:
• Make permanent the pilot procedure allowing patent owner to optionally waive patent owner's statement -- the notice indicates that only about 10% of patent owners file a statement under 35 U.S.C. § 304.
• Where the patent owner does not waive the statement, the order granting reexamination will include a provisional first Office action on the merits (FAOM), which may be made final in the next action.
Changes specific to inter partes reexamination proceedings include:
• Allow third party requester to dispute the examiner's designation that a rejection is "representative" of other rejections in the group.
• Final Office action will close prosecution and trigger appeal rights.
• Limit third party requester's appellant brief to appealing an examiner's decision that a claim is patentable; additional bases to cancel a rejected claim can only be argued in a respondent brief following patent owner's appellant brief.
A detailed description of each proposed change can be found in the Office's notice. In addition, the notice provides a list of thirteen questions on page 22860 for which the Office seeks comments.
The public meeting to be held on June 1 is scheduled to begin at 1:30 pm (EST) and will be held in the South Auditorium of Madison West, 600 Dulany Street, Alexandria, VA. Those interested in attending the meeting must register by 5:00 p.m. (EST) on May 25, 2011; those interested giving a presentation at the meeting must register by sending an e-mail to [email protected] by 5:00 p.m. (EST) on May 11, 2011. Additional information regarding registration is provided in the notice (see page 22860 for information registrants should provide).
Written comments regarding the proposed changes to ex parte and inter partes reexamination proceedings must be submitted by June 29, 2011. Written comments can be submitted by e-mail to [email protected], or mail to: Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Kenneth M. Schor.
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