August 09, 2006

According to last Friday’s Federal Register, the USPTO "is revising the results of practice in title 37 of the Code of Federal Regulations (CFR) to require that a request for ex parte reexamination or for inter partes reexamination must meet all the applicable statutory requirements in 35 U.S.C. 302 or 311 (respectively) and the regulatory requirements in § 1.510 or § 1.915 (respectively) before a filing date is accorded to the request for ex parte reexamination or for inter partes reexamination." Specifically, the USPTO is amending the rules to address inconsistencies within the aforementioned citations. For example, § 1.510 provides the requirements regarding the content of an ex parte reexamination request, and the former version of § 1.510(d) stated that the filing date of that request is "(1) The date on which the request including the entire fee for requesting reexamination is received in the Patent and Trademark Office; or (2) The date on which the last portion of the fee for requesting reexamination is received." However, 35 U.S.C. § 302 states that "[t]he request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested." As such, requesters for ex parte reexamination that followed § 1.501(d) and did not refer to 35 U.S.C. § 302 did not comply with the statutory requirements. (A similar inconsistency occurred regarding inter partes reexamination with the former version of § 1.919(a) and 35 U.S.C. § 311(b).). The specific rule changes modify § 1.501(c) and (d), as well as § 1.919(a), to clarify all of the requirements to obtain the respective reexamination filing dates. The changes were effective last Friday.

August 4, 2006 Federal Register Excerpt: LINK
37 C.F.R. § 1.510: LINK
35 U.S.C. § 302: LINK
37 C.F.R. § 1.915: LINK
35 U.S.C. § 311: LINK

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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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