All requests for inter partes reexamination (original request papers) and all subsequent inter partes reexamination correspondence mailed to the U.S. Patent and Trademark Office via the U.S. Postal Service Mail, other than correspondence to the Office of the General Counsel pursuant to 37 CFR 1.1(a)(3) and 1.302(e), should be addressed:
Mail Stop "Inter Partes Reexam"
Attn: Central Reexamination Unit
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
All such correspondence hand carried to the Office, or submitted by delivery service (e.g., Federal Express, DHL, etc., which are commercial mail or delivery services) should be carried to:
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
Hand-carried correspondence and correspondence submitted by delivery service should also be marked "Mail Stop Inter Partes Reexam." Whether the correspondence is mailed via the U.S. Postal Service mail or is hand-carried to the Office, it is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.
A request for inter partes reexamination may not be sent by facsimile transmission (FAX). See 37 CFR 1.6(d)(5). This is also true for a corrected/completed request sent in response to a notice that the original request was not filing date compliant, since the corrected/completed request stands in place of, or is a completion of, the original request papers. All subsequent inter partes reexamination correspondence, however, may be FAXed to:
Central Reexamination Unit
(571) 273-9900.
Effective July 9, 2007, the U.S. Patent and Trademark Office began accepting requests for reexamination, and "follow-on" papers (i.e., subsequent correspondence in reexamination proceedings) submitted via the Office’s Web-based electronic filing system (EFS-Web). The Office has updated the Legal Framework for EFS-Web (available at www.uspto.gov/patents-application- process/filing-online/legal-framework-efs-web ) to set forth that requests for reexamination, and reexamination "follow-on" papers are permitted to be submitted using EFS-Web.
After the filing of the request for inter partes reexamination, any letters sent to the Office relating to the reexamination proceeding should identify the proceeding by the number of the patent undergoing reexamination, the reexamination request control number assigned, the name of the examiner, and the examiner’s Art Unit.
The certificate of mailing and transmission procedures (37 CFR 1.8 ) may be used to file any paper in an inter partes reexamination proceeding, except for a request for reexamination and a corrected/replacement request for reexamination. See MPEP § 512 as to the use of the certificate of mailing and transmission procedures. The Priority Mail Express® mailing procedure (37 CFR 1.10 ) may be used to file any paper in an inter partes reexamination proceeding. See MPEP § 513 as to the use of the Priority Mail Express® mailing procedure.
Communications from the Office to the patent owner will be directed to the correspondence address for the patent being reexamined. See 37 CFR 1.33(c).
Amendments and other papers filed on behalf of patent owners must be signed by the patent owners, or the registered attorney or agent of record in the patent file, or any registered attorney or agent acting in a representative capacity under 37 CFR 1.34.
Double correspondence with the patent owners and the attorney or agent normally will not be undertaken by the Office.
Where no correspondence address is otherwise specified, correspondence will be with the most recent attorney or agent made of record by the patent owner.
Note MPEP § 2620 for certificate of service.
See MPEP § 2224 for correspondence in ex parte reexamination proceedings.
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 § 1.913 or § 1.948, will be delayed until the inter partes reexamination proceeding has been 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.
Pursuant to 37 CFR 1.939, after filing of a request for inter partes reexamination, no papers directed to the merits of the reexamination other than (A) citations of patents or printed publications under 37 CFR 1.501 and 1.933, (B) another complete request under 37 CFR 1.510, or (C) notifications pursuant to MPEP § 2686, should be filed with the Office prior to the date of the first Office action in the reexamination proceeding. Any papers directed to the merits of the reexamination, other than those under 37 CFR 1.501, 1.933, or 1.510, or under MPEP § 2686, filed prior to the date of the first Office action will be returned to the sender without consideration. If the papers are entered prior to discovery of the impropriety, such papers will be expunged from the record. A copy of the letter providing notification of the returned papers or expungement will be made of record in the patent file. However, no copy of the returned/expunged papers will be retained by the Office. If the submission of the returned/expunged papers is appropriate later in the proceedings, they may be filed, and accepted by the Office, at that time. See Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 1985); In re Knight, 217 USPQ 294 (Comm’r Pat.1982); and In re Amp, 212 USPQ 826 (Comm’r Pat. 1981) which addressed the situation analogous to the present situation for ex parte reexamination proceedings.
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the 8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes Reexamination Request, 76 FR 59055 (September 23, 2011).
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP.
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in revision 7 of the 8th Edition of the MPEP and in Revision of Standard for Granting an Inter Partes Reexamination Request, 76 FR 59055 (September 23, 2011).
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP.
No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP.
Reexamination files are open to inspection by the general public by way of the Public PAIR via the USPTO Internet site. In viewing the images of the reexamination proceedings, members of the public will be able to view the entire content of the reexamination file with the exception of non-patent literature. To access Public PAIR, a member of the public would go to the USPTO website at www.uspto.gov.
If a copy of the reexamination file is requested, it may be ordered from the Document Services Division of the Office of Public Records (OPR). Orders for such copies must indicate the control number of the reexamination proceeding. Orders should be addressed as follows:
Mail Stop Document Services
Director of the U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
Requests for a copy of a request may also be sent via email to: dsd@uspto.gov, and the cost of the copy may be charged to a credit card or deposit account. Alternatively, a copy may be obtained from IFW via PAIR.
To obtain a "certified copy" of a reexamination file, a CD-ROM may be purchased from Document Services Division of OPR.
Both the Internet and the USPTO intranet can be accessed to determine if a reexamination request has been filed for a particular patent.
From the USPTO intranet site http://ptoweb/ptointranet/index.htm, Office personnel can click on "PALM" and then "General Information" which opens the PALM INTRANET General Information Display.
From here, enter the patent number in the box labeled Patent #.
Click on "Search" and when the "Patent Number Information" appears, click on "Continuity Data" to obtain the reexamination number.
Any reexamination for the patent number will be listed.
There will be about a ten (10) day lag between filing and data entry into the PALM database.
All fees in an inter partes reexamination proceeding (including the fee for filing the request for inter partes reexamination (see MPEP § 2615)) are processed by the Central Reexamination Unit (CRU). The fees will be posted by the CRU via the Revenue Accounting and Managing (RAM) program.
In an inter partes reexamination proceeding, fees are due for the request (37 CFR 1.915(a) ), for the addition of claims by the patent owner during the proceeding (excess claims fees under 37 CFR 1.20(c)(3) and (c)(4) ), for an extension of time under 37 CFR 1.956, and for any appeal, brief, and oral hearing under 37 CFR 41.20(b). All petitions filed relating to a reexamination proceeding require fees (37 CFR 1.937(d) ).
No fee is required for the issuance of a reexamination certificate.
Micro entity reductions are available to patent owners only. Specifically, micro entity and small entity reductions under 35 U.S.C. 41(h)(1) are available to the patent owner for extension of time fees, appeal fees, brief fees, oral hearing fees, excess claims fees, and petition fees. Small entity reductions are available to the third party requester for petition fees, appeal fees, brief fees, and oral hearing fees; however, micro entity reductions are not available to third party requesters.
When a fee is required in a merged proceeding, only a single fee is needed, even though multiple copies of the submissions (one for each file) are required. See MPEP § 2686.01.
The Patent Application Locating and Monitoring (PALM) system is used to support the reexamination process. The sections below delineate PALM related activities.
Each of these events, as well as additional events reported by the Central Reexamination Unit (CRU) Technical Support Staff (TSS) will be permanently recorded and displayed in the "Contents" portion of PALM. In addition, status representative of these events will also be displayed.
Except for reexamination requests for design patents, reexamination requests are assigned to the Central Reexamination Unit (CRU) art unit which examines the technology (Chemical, Electrical, Mechanical, etc.) in which the patent to be reexamined is currently classified as an original. In that art unit, the Supervisory Patent Reexamination Specialist (SPRS) assigns the reexamination request to a primary examiner, other than the examiner that originally examined the patent (see "Examiner Assignment Policy" below), who is most familiar with the claimed subject matter of the patent. In an extremely rare situation, where a proceeding is still in a Technology Center (TC) rather than the CRU, the reexamination may be assigned to an assistant examiner if no knowledgeable primary examiner is available. In such an instance a primary examiner must sign all actions, conference all actions with a SPRS or TC Quality Assurance Specialist (QAS) and another examiner, and take responsibility for all actions taken.
It is the policy of the Office that the CRU SPRS will assign the reexamination request to an examiner different from the examiner(s) who examined the patent application. Thus, under normal circumstances, the reexamination request will not be assigned to a primary examiner or assistant examiner who was involved in any part of the examination of the patent for which reexamination is requested (e.g., by preparing/signing an action), or was so involved in the examination of the parent of the patent. This would preclude assignment of the request to an examiner who was a conferee in an appeal conference or panel review conference in an earlier concluded examination of the patent (e.g., the application for patent, a reissue, or a prior concluded reexamination proceeding). The conferee is considered to have participated in preparing the Office action which is preceded by the conference.
Exceptions to this general policy include cases where the original examiner is the only examiner with adequate knowledge of the relevant technology to examine the case. In the unusual case where there is a need to assign the request to the original examiner, the assignment must be approved by the CRU Director, and the fact that such approval was given by the CRU Director must be stated (by the examiner) in the decision on the request for reexamination.
It should be noted that while an examiner who examined an earlier concluded reexamination proceeding is generally excluded from assignment of a newly filed reexamination, if the earlier reexamination is still ongoing , the same examiner generally will be assigned the new reexamination.
Should a reexamination be inadvertently assigned to an "original examiner" (in a situation where the TC or CRU Director’s approval is not stated in the decision on the request), the patent owner or the third party requester who objects must promptly file a paper alerting (notifying) the Office of this fact. Any paper alerting (notifying) the Office to the assignment to an "original examiner" must be filed within two months of the first Office action or other Office communication indicating the examiner assignment, or reassignment will not be considered. Reassignment of the reexamination to a different examiner will be addressed on a case-by-case basis. In no event will the assignment to the original examiner, by itself, be grounds for vacating any Office decision(s) or action(s) and "restarting" the reexamination.
A situation may arise where a party timely (i.e., within the two months noted above) files a paper alerting (notifying) the Office to the assignment of a reexamination to the "original examiner," but that paper does not have a right of entry under the rules (e.g., where an order granting reexamination was issued by the "original examiner" but a first action on the merits did not accompany the order, the patent owner timely files a paper alerting the Office of the fact that the "original examiner" has been assigned the reexamination proceeding. Pursuant to 37 CFR 1.939(b), that paper does not have a right of entry since a first Office action on the merits has not yet been issued.) In such situations, the Office may waive the rules to the extent that the paper directed to the examiner assignment will be entered and considered.
It is essential that all time expended on reexamination activities be reported accurately. Thus, all USPTO personnel should report all time spent on reexamination on their individual Time and Attendance Reports. Even activities such as supervision, copying, typing, and docketing should be included.
[Editor Note: As in effect for a request filed prior to September 16, 2011.]
[Editor Note: As in effect for a request filed beginning September 16, 2011 and ending September 15, 2012.]
[Editor Note: For a request filed prior to September 16, 2011.]
Within three months following the filing date of a request for inter partes reexamination under § 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.
[Editor Note: For a request filed beginning September 16, 2011 and ending September 15, 2012.]
Within three months following the filing date of a request for inter partes reexamination under § 1.915, the examiner will consider the request and determine whether or not the request and the prior art establish a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request. 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 the request has not established a reasonable likelihood that the requester will prevail with respect to at least one of the challenged claims, the examiner shall refuse the request and shall not order inter partes reexamination.
Where inter partes reexamination is not ordered, a refund of a portion of the fee for requesting inter partes reexamination will be made to the requester in accordance with § 1.26(c).
[Editor Note: For a request filed prior to September 16, 2011.]
The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing to order inter partes reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.
[Editor Note: For a request filed beginning September 16, 2011 and ending September 15, 2012.]
The third party requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing to order inter partes reexamination. Any such petition must comply with§ 1.181(b). If no petition is timely filed or if the decision on petition affirms that a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request has not been established, the determination shall be final and nonappealable.
Prior to making a determination on the request for reexamination, a litigation search from the Technical Support Staff (TSS) of the Central Reexamination Unit (CRU) or the Scientific and Technical Information Center (STIC) must be done to check if the patent has been, or is, involved in litigation. A copy of the litigation search is scanned into the IFW reexamination file history. The "Litigation Review" box on the reexamination IFW file jacket form (RXFILJKT) is completed to indicate that the review was conducted and the results thereof, and the reexamination file jacket form is then scanned into the IFW reexamination file history. In the rare instance where the record of the reexamination proceeding or the litigation search indicates that additional information is desirable, guidance as to making an additional litigation search may be obtained from the library of the Office of the Solicitor. If the patent is or was involved in litigation, and a paper referring to the court proceeding has been filed, reference to the paper by number should be made in the "Litigation Review" box of the IFW file jacket form as, for example, "litigation; see paper filed 7-14-2005." If a litigation records search is already noted on the file, the examiner need not repeat or update it.
If litigation has concluded or is taking place in the patent on which a request for reexamination has been filed, the request must be promptly brought to the attention of the examiner’s CRU SPRS who should review the decision on the request and any examiner’s action to ensure conformance to the current Office litigation policy and guidelines. See MPEP § 2686.04.
35 U.S.C. 312 requires that the Director of the Office determine whether or not a "substantial new question of patentability" affecting any claim of the patent of which reexamination is desired is raised in the request (for inter partes reexamination requests filed prior to September 16, 2011) or there is a "reasonable likelihood that the requester will prevail" with respect to at least one of the claims challenged in the request (for inter partes reexamination requests filed on or after September 16, 2011) - not later than three months after the filing date of a request. See also MPEP § 2641. Such a determination may be made with or without consideration of other patents or printed publications in addition to those cited in the request. No input from the patent owner is considered prior to the determination. See Patlex v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 1985).
The patent claims in effect at the time of the determination will be the basis for deciding whether reexamination is to be ordered (37 CFR 1.923 ). See MPEP § 2643. Amendments which (A) have been filed in a copending reexamination proceeding in which the reexamination certificate has not been issued, or (B) have been submitted in a reissue application on which no reissue patent has been issued, will not be considered or commented upon when deciding a request for reexamination.
The decision on the request for reexamination has as its main object either the granting or denial of the request for reexamination. This decision is based on whether or not "a substantial new question of patentability" or a "reasonable likelihood that the requester will prevail" is found. A determination as to ultimate patentability/unpatentability of the claims is not made in the decision on the request; rather, it is made later, during the examination stage of the reexamination proceeding if reexamination is ordered. Accordingly, no prima facie case of unpatentability need be found to grant an order for reexamination. If a decision to deny an order for reexamination is made, the requester may seek review by a petition under 37 CFR 1.181. See 37 CFR 1.927. It should be noted that a decision to deny the request for reexamination is equivalent to a final holding (subject only to a petition pursuant to 37 CFR 1.927 for review of the denial), that the request failed to raise "a substantial new question of patentability" or provide a "reasonable likelihood that the requester will prevail" based on the cited art (patents and printed publications). See 35 U.S.C. 312(c).
Where there have been prior decisions relating to the patent, see MPEP § 2642.
It is only necessary to establish that a substantial new question of patentability or reasonable likelihood that requester will prevail exists as to one of the patent claims in order to grant reexamination. The Office’s determination in both the order for reexamination and the examination stage of the reexamination will generally be limited solely to a review of the claim(s) for which reexamination was requested. If the requester was interested in having all of the claims reexamined, requester had the opportunity to include them in its request for reexamination. However, if the requester chose not to do so, those claim(s) for which reexamination was not requested will generally not be reexamined by the Office. It is further noted that 35 U.S.C. 311(b)(2) requires that a requester "set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested." If the requester fails to apply the art to certain claims, then the requester is not statutorily entitled to reexamination of such claims. If a request fails to set forth the pertinency and manner of applying the cited art to any claim for which reexamination is requested as required by 37 CFR 1.915(b), that claim will generally not be reexamined. The decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case. If the Office chooses to reexamine any claim for which reexamination has not been requested, it is permitted to do so. In addition, the Office may always initiate a reexamination on its own initiative of the non-requested claim (35 U.S.C. 303(a) ). See Sony Computer Entertainment America Inc. v. Dudas, 85 USPQ2d 1594 (E.D. Va 2006). If a request fails to set forth the pertinency and manner of applying the cited art to any claim for which reexamination is requested as required by 37 CFR 1.915, a filing date will not be awarded to the request. See MPEP § 2617 and § 2627.
One instance where reexamination was carried out only for the claims requested occurred in reexamination control numbers 95/000,093 and 95/000,094, where reexamination was requested for patent claims which were being litigated, but not for claims which were not being litigated. In that instance, the entirety of the reexamination was limited to the claims for which reexamination was requested, and which were being litigated. The Office’s authority to carry out reexamination only for the claims for which reexamination was requested in reexamination control numbers 95/000,093 and 95/000,094 was confirmed by the court in Sony, supra. See MPEP § 2642 for the situation where there was a prior final federal court decision as to the invalidity/unenforceability of some of the claims, as another example of non-examination of some of the patent claims in a reexamination proceeding.
The decision on the request for reexamination should discuss all of the patent claims requested for reexamination. The examiner should limit the discussion of those claims in the order for reexamination as to whether a substantial new question of patentability has been raised or there is a reasonable likelihood that the requester will prevail. The examiner SHOULD NOT reject claims in the order for reexamination. Rather, any rejection of the claims will be made in the first Office action that normally will accompany the order for reexamination. See MPEP § 2660.
The Director of the Office has the authority to order reexamination only for a request which (prior to September 16, 2011) raises a substantial new question of patentability or request (on or after September 16, 2011) provides a "reasonable likelihood that the requester will prevail" . This protects patentees from having to respond to, or participate in, unjustified reexaminations. See Patlex v. Mossinghoff, 771 F.2d 480, 226 USPQ 985, 989 (Fed. Cir. 1985).
Where a request for reexamination is filed on a patent after a reissue patent for that patent has already issued, reexamination will be denied, because the patent on which the request for reexamination is based has been surrendered. Should reexamination of the reissued patent be desired, a new request for reexamination, including and based on the specification and claims of the reissue patent, must be filed. Where the reissue patent issues after the filing of a request for reexamination, see MPEP § 2686.03.
