[Federal Register Volume 75, Number 150 (Thursday, August 5, 2010)]
[Notices]
[Pages 47269-47270]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-19337]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2010-0056]
Pilot Program for Waiver of Patent Owner's Statement in Ex Parte
Reexamination Proceedings
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO)
recognizes the need to reduce the pendency of reexamination proceedings
and improve the efficiency of the reexamination process. The USPTO is
considering a number of short and long-range initiatives that can be
implemented in three phases. In phase I, the USPTO will implement
streamlined procedures, as well as optional programs in which patent
owners and third party requesters may elect to participate in order to
gain the benefit of shorter pendency. In phases II and III, the USPTO
will consider the data gathered from phase I and the feedback from the
patent owners and other stakeholders, and implement process changes
that are likely to improve efficiency. Such changes may include
internal procedural changes, rule making that includes opportunities
for the public to comment, and/or administrative proposals for
statutory changes to enhance the efficiency of the USPTO in conducting
reexamination proceedings. As part of phase I to reduce pendency and
improve efficiency in ex parte reexamination proceedings, the USPTO is
implementing, in this notice, a pilot program in which patent owners
may waive the right to file a patent owner's statement upon a request
made by the USPTO. This will enable USPTO in suitable cases to issue
the first Office action on the merits together with or soon after the
reexamination order, and thereby reduce the pendency of the proceeding
by about three to five months.
DATES: Effective Date: The changes set forth in this notice will take
effect on August 5, 2010.
FOR FURTHER INFORMATION CONTACT: Robert A. Clarke, Kenneth M. Schor or
Joni Y. Chang, Office of Patent Legal Administration, Office of the
Associate Commissioner for Patent Examination Policy, by telephone at
571-272-7735, 571-272-7710 or 571-272-7720, or by mail addressed to:
Mail Stop Comments Patents, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450.
Inquiries regarding the current reexamination practice may be
directed to the Office of Patent Legal Administration, by telephone at
(571) 272-7703, or by electronic mail at [email protected].
SUPPLEMENTARY INFORMATION:
I. Background: The USPTO recognizes the need to reduce the pendency
of reexamination proceedings and improve the efficiency of the
reexamination process. As of March 31, 2010, the average time to reach
notice of intent to issue reexamination certificate (NIRC) for ex parte
reexamination proceedings was about twenty-five months. Many of our
stakeholders have expressed the desire to have a proceeding in which
patent owners can resolve patent
[[Page 47270]]
validity issues in a shorter time frame. The USPTO is considering a
number of short and long-range initiatives that can be implemented in
three phases to reduce pendency and improve efficiency in reexamination
proceedings. In phase I, the USPTO will implement streamlined
procedures and optional programs in which patent owners and third party
requesters may elect to participate in order to gain the benefit of
shorter pendency. For example, the USPTO recently implemented the
streamlined procedure for appeal brief review in ex parte reexamination
proceedings. See Streamlined Procedure for Appeal Brief Review in Ex
Parte Reexamination Proceedings, 75 FR 29321 (May 25, 2010). In the
instant notice, the USPTO is implementing a pilot program in which
patent owners may waive the right to file a patent owner's statement in
response to a request from the USPTO. The USPTO will also publish
notices to implement additional optional procedures and seek public
comments on other procedural changes in the near future. In phases II
and III, the USPTO will consider the data gathered from phase I and the
feedback from the patent owners and other stakeholders, and implement
process changes through internal procedural changes, rule making that
includes opportunities for the public to comment, and/or administrative
proposals for statutory changes to enhance reexamination proceedings.
The USPTO welcomes feedback on improving its processes. Suggestions may
be directed to the Office of Patent Legal Administration at (571) 272-
7701 for the general examination process, or (571) 272-7703 for the
reexamination or reissue process.
II. Overview of the Pilot Program: As part of phase I to reduce
pendency and improve efficiency in ex parte reexamination proceedings,
the USPTO will implement a pilot program in which the USPTO will
contact the patent owner and request the optional waiver of the right
to file a patent owner's statement after the proceeding has been
granted a filing date and before the examiner begins his or her review.
This will enable the USPTO in suitable cases to issue the first Office
action on the merits (including an NIRC) together with or soon after
the order for reexamination, and thereby reduce the pendency of the
proceeding by about three to five months.
Under the current procedure, a patent owner may file a statement
under 35 U.S.C. 304 within two months from the issuance of an ex parte
reexamination order in a reexamination proceeding, and a third party
requester may file a reply (under 35 U.S.C. 304) to the patent owner's
statement within two months from the date of service of the patent
owner's statement. Last year, approximately ten percent of patent
owners filed a patent owner's statement under 35 U.S.C. 304 after the
USPTO had ordered an ex parte reexamination of a patent. When ex parte
reexamination is ordered, the examiner generally starts to prepare the
first Office action on the merits after the receipt of the patent
owner's statement and the third party requester's reply, or after the
expiration of the time period for filing the statement and reply. As of
March 31, 2010, the average time to order an ex parte reexamination
from the filing of an ex parte reexamination request was about two
months and the average time to issue a first Office action on the
merits from the filing of an ex parte reexamination request was between
seven to eight months.
If the patent owner waives the right to file a patent owner's
statement in response to a request from the USPTO, the examiner will be
able to act on the first Office action on the merits immediately after
determining that reexamination will be ordered, and in a suitable case
issue the reexamination order and the first Office action on the merits
(including an NIRC) at the same time. This will eliminate the delay of
waiting for a patent owner's statement and the third-party requester's
reply and will permit the examiner to utilize his or her time more
efficiently by drafting the order and the first Office action on the
merits (including an NIRC) together. Moreover, by performing the
threshold analysis of determining and preparing an action on the merits
concurrently when a request raises a substantial new question of
patentability (SNQ), the overall efficiency of the USPTO in performing
the reexamination process should be increased. The Central
Reexamination Unit (CRU) has experience in performing the threshold SNQ
analysis and concurrently preparing an Office action on the merits, and
the reexamination order and Office action are typically mailed together
in inter partes reexamination proceedings. See 37 CFR 1.935.
III. Waiver Procedure under the Pilot Program: Under the pilot
program for waiving the patent owner's statement announced in this
notice, the CRU will contact, via telephone, the patent owner to
request the optional waiver of the patent owner's statement after the
proceeding has been granted a filing date and before the examiner
begins his or her review. The telephone communication will be limited
to the CRU requesting the waiver of the patent owner's statement and
agreement (or non-agreement) to the waiver by the patent owner.
Discussion of the merits of the proceedings, e.g., the patentability of
claims in patents, will not be permitted. The CRU will make the
agreement or non-agreement of record in the reexamination file in an
interview summary and a copy will be mailed to the patent owner and any
third party requester. The patent owner is not required to complete a
written statement of the telephone communication under 37 CFR 1.560(b)
or otherwise, and such a statement should not be filed as it will slow
the process. If the patent owner agrees to the waiver of the right to
file a patent owner's statement, the examiner will typically issue the
reexamination order and the first Office action on the merits on the
same day as the order, or within a few days thereafter.
The Office intends to make available to the public statistics on
the number of patent owners that agree to waive the statement and the
impact on pendency due to waiving the statement right. This data is
expected to form a portion of the data used in the decision making
processes in phases II and III.
Dated: July 16, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2010-19337 Filed 8-4-10; 8:45 am]
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