Issue 06/19 | April 11, 2006
USPTO Proposes Reexamination Procedure Changes

On March 30, 2006, the United States Patent and Trademark Office (Office) issued a Notice of Proposed Rulemaking for the rules of practice relating to ex parte and inter partes reexamination. Written comments must be submitted on or before May 30, 2006. No public hearing will be held.

The proposed rule changes include

  • providing for a patent owner reply to a request for an ex parte reexamination or an inter partes reexamination prior to the examiner's decision on the request.
  • prohibiting supplemental patent owner responses to an Office action in an inter partes reexamination without a showing of sufficient cause.
  • designating the correspondence address for the patent as the correct address for all communications for patent owners in an ex parte reexamination or an inter partes reexamination, and
  • simplifying the filing of reexamination papers by providing for the use of a single "mail stop" address for the filing of substantially all ex parte reexamination papers (such is already the case for inter partes reexamination papers).

According to the USPTO, the patent owner's input could improve the information/evidence and understanding of the issues before the examiner deciding the request:

That input should serve the purpose of reducing improper/unnecessary orders and providing more timely patent owner responses on the record to third party allegations. This proposal should enable the Office to be better able to weed out those requests that do not raise a substantial question of patentability, prior to instituting a full-blown proceeding. Bringing the issues to light earlier via such a patent owner response to the request should facilitate the reexamination process pursuant to special dispatch."

Patent reexamination explained...

To discuss this topic further, contact William F. Heinze (bill.heinze@tkhr.com) at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

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