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


Post a Comment

WIPO Press Releases

WIPO General News

Patent References

Click HERE to search issued U.S. Patents

Click HERE to search published U.S. Patent Applications

Click HERE to browse the MPEP (E8r6 in HTML and PDF, and E8r7 in PDF)

Click HERE to search patent assignments recorded with the USPTO

Click HERE to search Title 37 of the Code of Federal Regulations (rev. 7/1/08)

Click HERE to browse Title 35 of the U.S. Code

Click HERE to view current USPTO fees


Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

EPO Updates

Trademark References

Click HERE to search issued and pending U.S. Trademarks

Click HERE to search TTAB proceedings (via TTABVUE)

Click HERE to search trademark assignments recorded with the USPTO

The DDIP Author

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.

Click HERE to view my full professional bio at Reichel IP LLC.


Click HERE to join the e-mail list for my blog

Click HERE to provide feedback on the DDIP blog

Fellow Blogs/Bloggers

AwakenIP (Kuester)
Counterfeit Chic (Scafidi)
I/P Updates (Heinze)
Internet Cases (Brown)
Likelihood of Confusion (Coleman)
Patent Baristas (Albainy-Jenei)
Patent Docs (Zuhn et al.)
Patently-O (Crouch)
The 271 Patent Blog (Zura)
The Ice Loop (Ice Miller LLP)
The Indiana Law Blog (Oddi)
The Invent Blog (Nipper)
The Patent Prospector (Odom)
The TTABlog (Welch)