[Federal Register Volume 77, Number 151 (Monday, August 6, 2012)]
[Rules and Regulations]
[Pages 46615-46631]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-18530]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1, 5, 10, 11, and 41

[Docket No. PTO-P-2011-0072]
RIN 0651-AC66


Changes To Implement Miscellaneous Post Patent Provisions of the 
Leahy-Smith America Invents Act

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Leahy-Smith America Invents Act (AIA) expands the scope of 
information that any party may cite in a patent file to include written 
statements of a patent owner filed in a proceeding before a Federal 
court or the United States Patent and Trademark Office (Office) 
regarding the scope of any claim of the patent, and provides for how 
such information may be considered in ex parte reexamination, inter 
partes review, and post grant review. The AIA also provides for an 
estoppel that may attach with respect to the filing of an ex parte 
reexamination request subsequent to a final written decision in an 
inter partes review or post grant review proceeding. The Office is 
revising the rules of practice to implement these post-patent 
provisions, as well as other miscellaneous provisions, of the AIA.

DATES: Effective date: The changes in this final rule are effective on 
September 16, 2012.

FOR FURTHER INFORMATION CONTACT: Joseph F. Weiss, Jr. ((571) 272-7759), 
Legal Advisor, or Pinchus M. Laufer ((571) 272-7726), Senior Legal 
Advisor, Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy.

SUPPLEMENTARY INFORMATION:

[[Page 46616]]

    Executive Summary: Purpose: Section 6 of the AIA amends the patent 
laws to create new post-grant review proceedings and replace inter 
partes reexamination proceedings with inter partes review proceedings. 
Section 6 of the AIA also provides for an estoppel that may attach with 
respect to the filing of an ex parte reexamination request subsequent 
to a final written decision in a post grant review or inter partes 
review proceeding, expands the scope of information that any person may 
cite in the file of a patent to include written statements of a patent 
owner filed in a proceeding before a Federal court or the Office 
regarding the scope of any claim of the patent, and provide for how 
such patent owner statements may be considered in ex parte 
reexamination, inter partes review, and post grant review. Section 3(i) 
of the AIA replaces interference proceedings with derivation 
proceedings; section 7 redesignates the Board of Patent Appeals and 
Interferences as the Patent Trial and Appeal Board; section 3(j) 
replaces the title ``Board of Patent Appeals and Interferences'' with 
``Patent Trial and Appeal Board'' in 35 U.S.C. 134, 145, 146, 154, and 
305; and section 4(c) inserts alphabetical references to the 
subsections of 35 U.S.C. 112.
    Summary of Major Provisions: This final rule primarily implements 
the provisions in section 6 of the AIA to provide for an estoppel that 
may attach to the filing of an ex parte reexamination request 
subsequent to a final written decision in a post grant review or inter 
partes review proceeding, and expands the scope of information that any 
person may cite in the file of a patent to include written statements 
of the patent owner filed in a proceeding before a Federal court or the 
Office in which the patent owner took a position on the scope of any 
claim of the patent.
    This final rule revises the ex parte reexamination rules to require 
that a third party request for ex parte reexamination contain a 
certification by the third party requester that the statutory estoppel 
provisions of inter partes review and post grant review do not bar the 
third party from requesting ex parte reexamination.
    This final rule revises the rules of practice pertaining to 
submissions to the file of a patent to provide for the submission of 
written statements of the patent owner filed by the patent owner in a 
proceeding before a Federal court or the Office in which the patent 
owner took a position on the scope of any claim of the patent. This 
final rule requires that such submissions must: (1) Identify the forum 
and proceeding in which patent owner filed each statement, and the 
specific papers and portions of the papers submitted that contain the 
statements; (2) explain how each statement is a statement in which 
patent owner took a position on the scope of any claim in the patent; 
(3) explain the pertinency and manner of applying the statement to at 
least one patent claim; and (4) reflect that a copy of the submission 
has been served on the patent owner, if submitted by a party other than 
the patent owner.
    This final rule also revises the nomenclature in the rules of 
practice for consistency with the changes in sections 3(i), 3(j), 4(c), 
and 7 of the AIA.
    Costs and Benefits: This rulemaking is not economically significant 
as that term is defined in Executive Order 12866 (Sept. 30, 1993).
    Background: Sections 3(i) and (j) and section 4(c) of the AIA enact 
miscellaneous nomenclature and title changes. Section 3(i) of the AIA 
replaces interference proceedings with derivation proceedings; section 
3(j) replaces the title ``Board of Patent Appeals and Interferences'' 
with ``Patent Trial and Appeal Board'' in 35 U.S.C. 134, 145, 146, 154, 
and 305; and section 4(c) inserts alphabetical designations to the 
subsections of 35 U.S.C. 112.
    Section 6(g) of the AIA amends 35 U.S.C. 301 to expand the 
information that may be submitted in the file of an issued patent to 
include written statements of a patent owner filed in a proceeding 
before a Federal court or the Office in which the patent owner took a 
position on the scope of any claim of the patent. This amendment limits 
the Office's use of such written statements to determining the meaning 
of a patent claim in ex parte reexamination proceedings that have 
already been ordered and in inter partes review and post grant review 
proceedings that have already been instituted.
    Section 6(a) and (d) of the Leahy-Smith American Invents Act also 
contains provisions (35 U.S.C. 315(e)(1) and 35 U.S.C. 325(e)(1)) 
estopping a third party requester from filing a request for ex parte 
reexamination, in certain instances, where the third party requester 
filed a petition for inter partes review or post grant review and a 
final written decision under 35 U.S.C. 318(a) or 35 U.S.C. 328(a) has 
been issued. The estoppel provisions apply to the real party in 
interest of the inter partes review or post grant review petitioner and 
any privy of such a petitioner.
    Section 6(h)(1) of the AIA amends 35 U.S.C. 303 to expressly 
identify the authority of the Director to initiate reexamination based 
on patents and publications cited in a prior reexamination request 
under 35 U.S.C. 302.
    Discussion of Specific Rules: The following is a discussion of the 
amendments to Title 37 of the Code of Federal Regulations, parts 1, 5, 
10, 11, and 41, which are being implemented in this final rule:
    Changes in nomenclature: The phrase ``Board of Patent Appeals and 
Interferences'' is changed to ``Patent Trial and Appeal Board'' in 
Sec. Sec.  1.1(a)(1)(ii), 1.4(a)(2), 1.6(d)(9), 1.9(g), 1.17(b), 
1.36(b), 1.136(a)(1)(iv), 1.136(a)(2), 1.136(b), 1.181(a)(1), 
1.181(a)(3), 1.191, 1.198, 1.248(c), 1.701(a)(3), 1.701(c)(3), 
1.702(a)(3), 1.702(b)(4), 1.702(e), 1.703(a)(5), 1.704(c)(9), 1.937(a), 
1.959, 1.979(a), 1.979(b), 1.981, 1.983(a), 1.983(c), 1.983(d), 
1.983(f), 11.5(b)(1), 11.6(d), 41.1(a), 41.2, 41.10(a) through (c), and 
41.77(a), and in the title of 37 CFR part 41. Specific references are 
added to trial proceedings before the Patent Trial and Appeal Board to 
Sec. Sec.  1.5(c), 1.6(d), 1.6(d)(9), 1.11(e), 1.136(a)(2), 1.136(b), 
1.178(b), 1.248(c), 1.322(a)(3), 1.323, 1.985(a), 1.985(b), 1.993, 
10.1(s), 11.10(b)(3)(iii), 11.58(b)(1)(i), 41.30, 41.37(c)(1)(ii), 
41.67(c)(1)(ii), and 41.68(c)(1)(ii).
    The phrase ``Board of Patent Appeals and Interferences'' in 
Sec. Sec.  1.703(b)(4) and 1.703(e) will be changed to ``Patent Trial 
and Appeal Board'' in a separate rulemaking (RIN 0651-AC63).
    Specific references are added to derivation proceedings before the 
Patent Trial and Appeal Board to Sec. Sec.  1.136(a)(1)(v), 
1.313(b)(4), 1.701(a)(1), 1.701(c)(1)(i) and (c)(1)(ii), 
1.701(c)(2)(iii), 1.702(b)(2), 1.702(c), 1.703(b)(2), 1.703(b)(3)(iii), 
1.703(c)(1) and (c)(2), 1.703(d)(3), and 5.3(b).
    Sections 1.51, 1.57, 1.78, 41.37, 41.67, 41.110 and 41.201 are 
revised to substitute the current references to 35 U.S.C. 112, of 
first, second, and sixth paragraphs with references to 35 U.S.C. 112 
subsections (a), (b), and (f). Section 1.78 is also revised to add 
``other than the requirement to disclose the best mode'' following the 
references to 35 U.S.C. 112(a) for consistency with the changes to 35 
U.S.C. 119(e) and 120 in section 15(b) of the AIA.
    Section 1.59 is revised to refer to Sec.  42.7.
    Changes to ex parte reexamination procedure:
    The undesignated center heading before Sec.  1.501: The 
undesignated center heading is revised to read ``Citation of prior art 
and written statements.''
    Section 1.501: Section 1.501 implements the amendment to 35 U.S.C. 
301 by section 6(g)(1) of the AIA. New 35 U.S.C. 301(a)(2) provides for 
any

[[Page 46617]]

person to submit in the patent file written ``statements of the patent 
owner filed in a proceeding before a Federal court or the Office in 
which the patent owner took a position on the scope of any claim of a 
particular patent.'' Section 1.501, implementing 35 U.S.C. 301(a)(2), 
provides that a submission may include prior art and written patent 
owner claim scope statements. The term ``Federal court'' in 35 U.S.C. 
301(a)(2) includes the United States Court of International Trade, 
which is a Federal court, but does not include the International Trade 
Commission, which is a Federal agency and not a Federal court.
    Section 1.501(a): In light of the comments, the scope of what may 
be submitted has been expanded relative to the proposed rule because 
the final rule does not prohibit the submission of written statements 
``made outside of a Federal court or Office proceeding and later filed 
for inclusion in a Federal court or Office proceeding.'' Section 
1.501(a)(1) provides for the submission to the Office of prior art 
patents or printed publications that a person making the submission 
believes to have a bearing on the patentability of any claim of a 
particular patent. Section 1.501(a)(2) permits any person to submit to 
the Office statements of the patent owner that were filed by the patent 
owner in a proceeding before a Federal court or the Office in which the 
patent owner took a position on the scope of any claim of the patent. 
As long as the statement was filed by the patent owner in the 
proceeding, the statement is eligible for submission under Sec.  
1.501(a)(2) even if originally made outside the proceeding. Permitting 
submission of these claim scope statements is intended to limit a 
patent owner's ability to put forward different positions with respect 
to the prior art in different proceedings on the same patent. See H.R. 
Rep. No. 112-98, Part 1, at page 46 (2011) (``[t]his addition will 
counteract the ability of patent owners to offer differing 
interpretations of prior art in different proceedings.''). Any papers 
or portions of papers that contain the patent owner claim scope 
statement submitted under this paragraph must be accompanied by any 
other documents, pleadings, or evidence from the proceeding in which 
the statement was filed that address the statement. Where appropriate, 
the papers or portions of papers that contain the statement and 
accompanying information must be submitted in redacted form to exclude 
information subject to an applicable protective order.
    Section 1.501(a)(3) requires that submissions under Sec.  
1.501(a)(2) must identify: (1) The forum and proceeding in which patent 
owner filed each statement; (2) the specific papers and portions of the 
papers submitted that contain the statement; and (3) how each statement 
submitted is a statement in which patent owner took a position on the 
scope of any claim in the patent. Identification of the portions of the 
papers required by Sec.  1.501(a)(3)(ii) can be satisfied, for example, 
by citing to the documents and specific pages of those documents where 
the patent owner claim scope statements are found. The requirement of 
Sec.  1.501(a)(3)(iii) ensures that the statement is one in which a 
patent owner has taken a position on claim scope in a proceeding and 
not merely a restatement of a position asserted by another party. Other 
information can, but is not required to, be provided by the submitter 
to assist the Office in readily identifying the patent owner claim 
scope statement, such as (1) information regarding the status of the 
proceeding; and (2) the relationship of the proceeding to the patent.
    Section 1.501(b): Section 1.501(b)(1) implements the 35 U.S.C. 
301(b) requirement that the submission include an explanation in 
writing of the pertinency and manner of applying the prior art or 
written statements to at least one patent claim. Section 1.501(b)(1) 
requires a submitter to explain in writing the pertinence and manner of 
applying any prior art submitted under Sec.  1.501(a)(1) and any 
written statement and accompanying information submitted under Sec.  
1.501(a)(2) to at least one claim of the patent in order for the 
submission to become a part of the official file of the patent. Where a 
patent owner claim scope statement and accompanying information are 
submitted along with prior art, an explanation as to how each patent 
owner claim scope statement and each prior art reference applies to at 
least one claim must be included with the submission in order for the 
submission to become part of the patent file. Section 1.501(b)(1) 
requires an explanation of the additional information required by 35 
U.S.C. 301(c) to show how the additional information addresses and 
provides context to the patent owner claim scope statement, thereby 
providing a full understanding as to how the cited information is 
pertinent to the claim(s).
    Section 1.501(b)(2) incorporates the second sentence of former 
Sec.  1.501(a), which permits a patent owner submitter to provide an 
explanation to distinguish the claims of the patent from the submitted 
prior art. Section 1.501(b)(2) also provides a patent owner submitter 
with the opportunity to explain how the claims of the patent are 
patentable in view of any patent owner claim scope statement and 
additional information filed under Sec.  1.501(a)(2), along with any 
prior art filed under Sec.  1.501(a)(1).
    Section 1.501(c): Section 1.501(c) restates the last sentence of 
prior Sec.  1.501(a) directed to the timing for a submission under 
Sec. Sec.  1.502 and 1.902 when there is a reexamination proceeding 
pending for the patent in which the submission is made.
    Section 1.501(d): Section 1.501(d) restates former Sec.  1.501(b) 
that permits the person making the submission to exclude his or her 
identity from the patent file by anonymously filing the submission.
    Section 1.501(e): Section 1.501(e) requires that a submission made 
under Sec.  1.501 must reflect that a copy of the submission by a party 
other than the patent owner has been served upon patent owner at the 
correspondence address of record in the patent, and that service was 
carried out in accordance with Sec.  1.248. Service is required to 
provide notice to the patent owner of the submission. The presence of a 
certificate of service that is compliant with Sec.  1.248(b) is prima 
facie evidence of compliance with Sec.  1.501(e). A submission will not 
be entered into the patent's Image File Wrapper (IFW) if it does not 
include proof of service compliant with Sec.  1.248(b).
    Section 1.501(f): The provisions of proposed Sec.  1.501(f) have 
been incorporated with specificity in Sec. Sec.  1.515(a) and 1.552(d) 
rather than adopted as a separate paragraph of Sec.  1.501. The 
proposed codification in Sec.  1.501(f) of the limitation set forth in 
35 U.S.C. 301(d) on the use of a patent owner claim scope statement by 
the Office was unnecessary in view of the language of Sec.  1.515(a) 
and Sec.  1.552(d).
    Section 1.510: This final rule revises Sec.  1.510(a) and (b)(2), 
and adds Sec.  1.510(b)(6) to implement provisions of the AIA.
    Section 1.510(a) is revised to reflect the estoppel limitations 
placed upon the filing of a request for ex parte reexamination by 35 
U.S.C. 315(e)(1) and 325(e)(1). In light of the comments, the scope of 
the estoppel provisions is interpreted to only prohibit the filing of a 
subsequent request for ex parte reexamination.
    Section 1.510(b)(2) is revised to require that any statement of the 
patent owner submitted pursuant to Sec.  1.501(a)(2), which is relied 
upon in the detailed explanation, explain how that statement is being 
used to determine the

[[Page 46618]]

proper meaning of a patent claim in connection with prior art applied 
to that claim. Section 1.510(b)(2) requires that the ``detailed 
explanation'' of applying prior art provided in the request for ex 
parte reexamination must explain how each patent owner claim scope 
statement is being used to determine the proper meaning of each patent 
claim in connection with the prior art applied to that claim. The 
explanation will be considered by the Office during the examination 
stage, if reexamination is ordered. At the order stage, the Office will 
not consider any patent owner claim scope statement discussed in the 
detailed explanation of the request. See 35 U.S.C. 301(d)
    Section 1.510(b)(6) requires that the request contain a 
certification by the third party requester that the statutory estoppel 
provisions of inter partes review and post grant review do not bar the 
third party from requesting ex parte reexamination. The basis for this 
requirement is the estoppel provisions of inter partes review and post 
grant review provided in new 35 U.S.C. 315(e)(1) and 325(e)(1), 
respectively, which identify when a petitioner for inter partes review 
or post grant review, or a real party in interest or privy of the 
petitioner, may not file a request for ex parte reexamination. The 
certification required under Sec.  1.510(b)(6) is consistent with the 
real party in interest identification certification practice employed 
in existing inter partes reexamination.
    In light of the comments, the final rule does not require an ex 
parte reexamination requester to identify themselves upon the filing of 
the request. The certification requirement of Sec.  1.510(b)(6), 
coupled with a party's Sec.  11.18 certification obligations when 
transacting business before the Office, are considered sufficient to 
ensure compliance with the new statutory estoppel requirements. A real 
party in interest that wishes to remain anonymous when filing a request 
for reexamination under Sec.  1.510 can do so by utilizing the services 
of a registered practitioner. In such an instance, the registered 
practitioner submitting a request for reexamination on behalf of the 
real party in interest would be certifying that the real party in 
interest was not estopped from filing the request. Conversely, an 
individual filing a request for reexamination under Sec.  1.510 on 
behalf of himself cannot remain anonymous as he is required to sign the 
document that includes the Sec.  1.510(b)(6) certification.
    Section 1.515: Section 1.515 is revised to add: ``A statement and 
any accompanying information submitted pursuant to Sec.  1.501(a)(2) 
will not be considered by the examiner when making a determination on 
the request.'' 35 U.S.C. 301(d) states: ``A written statement submitted 
pursuant to subsection (a)(2), and additional information submitted 
pursuant to subsection (c) [of 35 U.S.C. 301], shall not be considered 
by the Office for any purpose other than to determine the proper 
meaning of a patent claim in a proceeding that is ordered * * * 
pursuant to section 304.'' Thus, a patent owner claim scope statement 
will not be considered when making the determination of whether to 
order ex parte reexamination under 35 U.S.C. 303. See also H.R. Rep. 
No. 112-98, Part 1, at page 46 (2011). In making the Sec.  1.515(a) 
determination of whether to order ex parte reexamination, the Office 
will give the claims the broadest reasonable interpretation consistent 
with the specification, except in the case of an expired patent. See Ex 
parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986); In re 
Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984); see also Manual of Patent 
Examining Procedure Sec.  2258 I.(G) (8th ed. 2001) (Rev. 8, July 2010) 
(MPEP). If reexamination is ordered, the patent owner statements 
submitted pursuant to 35 U.S.C. 301(a)(2) will be considered to the 
fullest extent possible when determining the scope of any claims of the 
patent which are subject to reexamination.
    The section has also been revised to replace ``mailed'' with 
``given or mailed'' regarding the manner the Office may employ to 
notify patent owner of a determination on a request for ex parte 
reexamination. Usage of the term ``given'' tracks the relevant 
statutory language of 35 U.S.C. 304 and offers the Office flexibility 
to employ alternative means of communication to streamline patent 
reexamination and customer interaction, e.g., Web-based forms of 
notification.
    Section 1.552: Section 1.552 is revised to include new Sec.  
1.552(d) to reflect the amendment of 35 U.S.C. 301 by section 6(g)(1) 
of the AIA. Section 1.552(d) states: ``Any statement of the patent 
owner and any accompanying information submitted pursuant to Sec.  
1.501(a)(2) which is of record in the patent being reexamined (which 
includes any reexamination files for the patent) may be used after a 
reexamination proceeding has been ordered to determine the proper 
meaning of a patent claim when applying patents or printed 
publications.'' As discussed above, 35 U.S.C. 301(a)(2) permits a 
submission under 35 U.S.C. 301 to contain written ``statements of the 
patent owner filed in a proceeding before a Federal court or the Office 
in which the patent owner took a position on the scope of any claim of 
a particular patent.'' Written statements cited under 35 U.S.C. 
301(a)(2) may be considered after an ex parte reexamination proceeding 
has been ordered. However, the statement may not be considered in 
determining whether to order ex parte reexamination under 35 U.S.C. 
303, because 301(d) prohibits the use of the statement ``by the Office 
for any purpose other than to determine the proper meaning of a patent 
claim in a proceeding that is ordered or instituted pursuant to section 
304, 314, or 324.'' See 35 U.S.C. 301(d). See also H.R. Rep. No. 112-
98, Part 1, at page 46 (2011). Therefore, the Office can only consider 
such statements after the proceeding has been ordered or instituted.
    Comments and Responses to Comments: The Office published a notice 
on January 5, 2012, proposing to change the rules of practice to 
implement the post patent and other miscellaneous provisions of the AIA 
of sections 3 and 6 of the AIA. See Changes to Implement Miscellaneous 
Post Patent Provisions of the Leahy-Smith America Invents Act, 77 FR 
442 (Jan. 5, 2012). The Office received seventeen written comments 
(from intellectual property organizations, industry, law firms, 
individual patent practitioners, and the general public) in response to 
this notice. The comments and the Office's responses to the comments 
follow:
    Comment 1: A number of comments stated that the proposed regulatory 
exclusion of patent owner claim scope statements ``made outside of a 
Federal court or Office proceeding and later filed for inclusion in a 
Federal court or Office proceeding'' was overly restrictive and 
inconsistent with the statute. These comments suggested that patent 
owner statements filed in a proceeding in a Federal court or the Office 
should be entered regardless of when and where the original statements 
were made, consistent with the phrase ``statements of the patent owner 
filed in a proceeding'' as set forth in 35 U.S.C. 301 and the stated 
intent of Congress to limit a patent owner's ability to take different 
positions in different proceedings.
    Response: In response to the comments, Sec.  1.501(a)(2) is revised 
to permit any person to submit into the official file of a patent 
written statements of the patent owner that were filed by the patent 
owner in a proceeding before a Federal court or the Office in which the 
patent owner took

[[Page 46619]]

a position with regard to the scope of any claim in the patent. This 
revision, relative to the proposed rule, encompasses any statements a 
patent owner files in a proceeding in which the patent owner took a 
position on the scope of any claim of a particular patent. As long as 
the statement was filed by the patent owner in the proceeding, the 
statement is eligible for submission under Sec.  1.501(a)(2) even if 
originally made outside the proceeding. Submissions are limited to 
statements filed by the patent owner, as the statement must be a 
position that patent owner took in the proceeding with respect to the 
scope of a claim. The rule focuses on whether the patent owner filed 
the statement in a proceeding before a Federal court or the Office. 
This interpretation is consistent with the stated intent of Congress to 
prevent a patent owner from taking different positions in different 
proceedings
    Comment 2: Several comments requested clarification of the meaning 
of ``patent owner'' as used in Sec.  1.501(a)(2). These comments 
questioned whether the term ``patent owner'' encompasses parties who 
may make written statements regarding claim scope on behalf of the 
patent owner.
    Response: The term ``patent owner'' is synonymous with the term 
``patentee''. Patentee is defined by 35 U.S.C. 100 to include the 
entity ``not only * * * to whom the patent was issued but also the 
successors in title to the patentee.'' Therefore, the scope of the term 
``patent owner'' encompasses the party or parties having title to the 
patent. The rule has been modified to require the submitter to identify 
how any statement submitted under Sec.  1.501(a)(2) is a written 
statement of the patent owner in which the patent owner took a position 
on the scope of any claim in the patent.
    Comment 3: A number of comments questioned whether a patent owner 
claim scope statement under 35 U.S.C. 301 is limited to statements made 
about that specific patent or whether it extends to statements made 
about claims in related patents and applications.
    Response: A patent owner claim scope statement must be directed to 
the claims of a particular patent to be eligible for entry into the 
official file of that patent. 35 U.S.C 301 does not provide for the 
submission of a patent owner claim scope statement not directed to any 
claim of that particular patent or a statement that is directed to 
claims in a related patent or application.
    Comment 4: Several comments suggested that properly submitted 
patent owner claim scope statements should be considered when the 
Office is deciding whether to order or institute a post-patent 
proceeding.
    Response: Use of a patent owner claim scope statement is governed 
by statute. New 35 U.S.C. 301(d) states in pertinent part, ``A written 
statement * * * shall not be considered by the Office for any purpose 
other than to determine the proper meaning of a patent claim in a 
proceeding that is ordered or instituted pursuant to section 304, 314, 
or 324.'' The statute prohibits the use of the statement for any 
purpose other than determining the claim scope in a proceeding that has 
already been ordered or instituted. Therefore, the Office may not, and 
will not, consider such statements when the Office is deciding whether 
to order or institute a post-patent proceeding.
    Comment 5: Several comments suggested that the Office adopt a 
``summary judgment like'' procedure if the patent owner statement could 
not be used when the Office makes a decision to order or institute a 
post-patent proceeding. In this proposed procedure, a party could move 
to expedite the post-patent proceeding to final disposition based upon 
the previously unconsidered patent owner claim scope statement.
    Response: A properly submitted patent owner claim scope statement 
may be used by the Office during a post-patent proceeding in accordance 
with 35 U.S.C. 301(d). The effect of a patent owner claim scope 
statement on the merits of an ordered or instituted post-patent 
proceeding will be addressed on a case-by-case basis.
    Comment 6: Several comments suggested that third parties should not 
be required to serve a copy of a submission under 35 U.S.C. 301 on the 
patent owner, as this may compromise the anonymity of the submitter. 
Suggestions were made for other ways to notify a patent owner that a 
submission was made, including sending a notification by the Office to 
the patent owner or publishing relevant patent information in the 
Official Gazette when a submission is made.
    Response: A patent owner should be fully and timely informed as to 
the content of his or her patent file. As a result, when a third party 
files a submission under 35 U.S.C. 301, contemporaneous service on the 
patent owner is necessary. See MPEP Sec.  2208. Direct service is the 
most efficient manner of notifying the patent owner as to the content 
of his or her patent file. If the submission under Sec.  1.501 is made 
by a registered practitioner, the real party in interest need not be 
identified. Thus, service and proof of service in accordance with Sec.  
1.248 can be achieved while preserving the anonymity of the real party 
in interest.
    Comment 7: One comment suggested that proposed Sec.  1.501(e) be 
clarified to indicate that service is only required when an entity 
other than the patent owner files a submission under Sec.  1.501. A 
number of comments requested clarification regarding what the Office 
means by ``a bona fide attempt of service.'' These comments questioned 
whether it means that where a third party is notified that service was 
not successful, the entire submission would need to be resubmitted with 
proof that service of the patent owner was attempted. Several comments 
suggested that if the submitter becomes aware that service of the 
patent owner was not successful, the submitter should, as set forth in 
proposed Sec.  42.105(b), have the option of contacting the Office to 
discuss alternative modes of service.
    Response: The Office's proposal in Sec.  1.501(e) to require proof 
of a bona fide attempt of service has not been implemented. As 
promulgated in this final rule, Sec.  1.501(e) provides that a person 
other than the patent owner making a submission pursuant to Sec.  
1.501(a) must include a certification that a copy of a submission under 
Sec.  1.501 has been served in its entirety upon the patent owner at 
the address as provided for in Sec.  1.33(c). Section 1.248(a) governs 
the manner of service and provides different ways to achieve service, 
including publication in the Official Gazette if service is otherwise 
unsuccessful. See Sec.  1.248(a)(5).
    Comment 8: A number of comments requested guidance on a patent 
owner's ability to respond to a third party's submission under Sec.  
1.501, and the procedure a patent owner should follow if such a 
response is permitted. These comments also questioned whether a third 
party submission can be challenged as non-compliant and whether a non-
compliant submission can be expunged or redacted from the official file 
of a patent.
    Response: The rules do not provide a mechanism by which a patent 
owner can file a response to a third party submission under Sec.  
1.501. A patent owner may, however, at any time, file a submission in 
accordance with 35 U.S.C. 301 and Sec.  1.501 containing the same prior 
art and/or patent owner claim scope statement as that of a third party. 
The patent owner may include a written explanation of how the claims of 
the patent differ from the prior art or any patent owner claim scope 
statement and accompanying information submitted by the third party. If 
the Office inadvertently entered a non-compliant submission into the 
official

[[Page 46620]]

file of a patent, the patent owner may request review of the 
determination to enter the submission by way of a petition under Sec.  
1.181.
    Comment 9: A number of comments requested clarification as to what 
would constitute a sufficient explanation of the pertinence and manner 
of applying the prior art or patent owner claim scope statement to at 
least one claim in the patent as required in Sec.  1.501(b)(1). These 
comments questioned whether the submission could include affidavits and 
declarations.
    Response: Guidance regarding the content of a submission under 35 
U.S.C. 301, with exemplary explanations, can be found in MPEP Sec.  
2205. Pursuant to the guidance in MPEP Sec.  2205, affidavits and 
declarations are permitted to explain the pertinence and manner of 
applying the prior art or patent owner claim scope statement.
    Comment 10: A number of comments requested that the Office clarify 
what it means when referring to information that ``addresses'' the 
patent owner claim scope statement. These comments also suggested that 
the Office limit the scope of accompanying information that could be 
submitted with a patent owner claim scope statement to avoid voluminous 
submissions that would detract from the usefulness of such submissions. 
It was further suggested that the meaning of information that 
``addresses the written statement'' (35 U.S.C. 301(c)) should be 
narrowly defined and limited to information or portions of documents 
that directly refer to the statement or have been used to support or 
contradict the statement.
    Response: The party submitting the patent owner claim scope 
statement should ensure that the accompanying information filed with 
the submission is sufficient to provide context for the statement, so 
the Office can properly weigh its probative value in construing the 
proper meaning of a claim. Insufficient or unnecessarily voluminous 
accompanying information will diminish the probative value of any 
submitted patent owner claim scope statement in determining the proper 
meaning of a claim. Documents that address the patent owner claim scope 
statement may include documents that the patent owner claim scope 
statement refers to or relies upon for support, and documentary 
evidence of what prompted the patent owner claim scope statement to be 
filed in the Federal court or Office proceeding. Additionally, 
documents submitted in support, response, or rebuttal of the patent 
owner claim scope statement would all be considered additional 
information ``addressing'' the statement. These examples are 
illustrative only and are not intended to be exhaustive or limiting. 
The Office encourages submitters to present focused filings correlating 
the patent owner claim scope statement to the items of additional 
information in order to provide sufficient context for the claim scope 
statement filed in a court or Office proceeding and to assist the 
Office in construing the proper meaning of a claim.
    Comment 11: One comment suggested that the Office require the 
submission of identifying information which was previously proposed to 
be optional, including: (1) The forum in which the statement was made; 
(2) the Federal court or Office proceeding designation; (3) the status 
of the proceeding; (4) the relationship between the proceeding and the 
patent; (5) an identification of the specific papers in the proceeding 
containing the statement; and (6) an identification of the portions of 
the papers relevant to the written statement.
    Response: Consistent with the comment section 1.501(a)(3) requires 
a submitter to identify the forum and proceeding in which patent owner 
filed each statement and the specific papers and portions of the papers 
submitted that contain the patent owner claim scope statement. The 
Office did not amend Sec.  1.501(a)(3) to require the status of the 
proceeding or its relationship to the patent as they are not needed by 
the Office when determining if the submission is proper. Submissions 
that do not include sufficient indicia to conclude that a submitted 
patent owner claim scope statement, and all additional information, and 
were filed in a Federal court or Office proceeding will not be entered 
into the official file of a patent.
    Comment 12: One comment questioned whether there is a continuing 
duty to supplement the accompanying information submitted with a patent 
owner claim scope statement.
    Response: The statute does not impose a continuing duty to 
supplement any submissions made pursuant to 35 U.S.C. 301(a)(2). Should 
a party determine that a subsequent submission is needed, one can be 
filed in accordance with Sec.  1.501. Any subsequent submission filed 
by a party other than the patent owner, during the pendency of a 
reexamination proceeding, will not be considered in that reexamination 
proceeding.
    Comment 13: One comment suggested that Sec.  1.501(c) be amended to 
permit the submission by a third party of a patent owner claim scope 
statement filed in a pending litigation to be entered into a pending 
reexamination proceeding.
    Response: The comment's proposed change to Sec.  1.501(c) cannot be 
adopted as it is contrary to statute. 35 U.S.C. 305 dictates that the 
reexamination will be conducted ex parte after the time period for 
filing the patent owner statement and reply provided for in 35 U.S.C. 
304 has expired. A third party submission of alleged patent owner claim 
scope statements, even if compliant with 35 U.S.C. 301, would 
constitute prohibited third party participation as to the merits of an 
ex parte proceeding. MPEP Sec.  2282, however, provides that in order 
to ensure a complete file, with updated status information regarding 
prior or concurrent proceedings regarding the patent under 
reexamination, the Office will, at any time, accept from any parties, 
for entry into the reexamination file, copies of notices of suit and 
other proceedings involving the patent and bare notice of decisions or 
papers filed in the court from litigations or other proceedings 
involving the patent, e.g. a final written decision in an inter partes 
review or post grant review of the patent subject to the ex parte 
reexamination. See MPEP Sec.  2282.
    Patent owners are reminded that Sec.  1.565(a) requires the patent 
owner to ``inform the Office of any prior or concurrent proceedings in 
which the patent is or was involved such as interferences, reissues, ex 
parte reexaminations, inter partes reexaminations, or litigation and 
the results of such proceedings.'' Because Sec.  1.565(a) uses open 
language to provide a non-exhaustive listing of proceedings of which 
patent owner must inform the Office, the rule also includes inter 
partes review and post grant review proceedings, once they become 
effective.
    Comment 14: One comment questioned why there is a difference in the 
required explanations of relevance in a post-patent submission under 
Sec.  1.501 and in a preissuance submission under Sec.  1.290.
    Response: The difference between the regulatory requirements for 
the accompanying explanation of a preissuance submission and the 
accompanying explanation of a post-issuance submission is due to the 
different statutory requirements that govern each respective 
submission's explanation. Cf. new 35 U.S.C. 122(e) with 35 U.S.C. 
301(b). New 35 U.S.C. 122(e)(2)(A) requires a preissuance submission to 
include a concise description of the asserted relevance of each 
submitted document, whereas 35 U.S.C. 301(b) requires the person citing 
prior art or written statements to

[[Page 46621]]

provide an explanation of the pertinence and manner of applying the 
prior art or written statements to at least one claim of the patent.
    Comment 15: One comment suggested that the ``period of 
enforceability of a patent'' in 35 U.S.C. 301 should be interpreted to 
begin upon the issuance of a Notice of Allowance, thus authorizing the 
submission of prior art in the official files of allowed applications.
    Response: The comment's position that the language of 35 U.S.C. 301 
should be interpreted to authorize the submission of prior art in 
allowed applications is not in accord with the express language of the 
provision New 35 U.S.C. 301(a)(1) and (2) both use the phrase ``claim 
of any particular patent. ``New 35 U.S.C. 301(b) also uses the term 
``patent'' with regard to which official files are eligible for entry 
of a submission under 35 U.S.C. 301. Therefore, 35 U.S.C. 301 only 
permits submissions of prior art and written statements into the 
official files of issued patents, which by statute does not include 
patent applications, even those in which a Notice of Allowance has 
issued.
    Comment 16: A number of comments requested that the Office to 
clarify how a patent owner claim scope statement under Sec.  
1.501(a)(2) differs from a patent owner statement under Sec.  1.530(b).
    Response: Under Sec.  1.530(b), a patent owner may file a statement 
in an ex parte reexamination proceeding, in response to an order 
granting reexamination, to make comments on the substantial new 
question of patentability identified in the order for reexamination. 
Under Sec.  1.501(a)(2), any party may submit in a patent file a 
written statement of the patent owner that has been filed in a Federal 
court or Office proceeding in which the patent owner took a position on 
the scope of any claim in the patent.
    Comment 17: A number of comments suggested that the definition of a 
Federal court should include the International Trade Commission (ITC).
    Response: New 35 U.S.C. 301(a)(2) limits statements eligible for 
submission to those filed in a proceeding before a Federal court or the 
Office. The International Trade Commission (ITC) is a Federal agency 
and not a Federal court. The ITC is an independent Federal agency 
established by 19 U.S.C. 1330 to conduct investigations under 19 U.S.C. 
1337, and not a Federal court.
    Comment 18: Several comments requested clarification of the phrase 
``proper meaning of a patent claim'' as set forth in 35 U.S.C. 301(d) 
and in Sec.  1.510(b)(2) and Sec.  1.552(d). The comments suggested 
that claim construction of patent claims in post-patent proceedings at 
the Office should be based on the same standards as patent claim 
construction in the courts, following Phillips v. AWH Corp., 415 F.3d 
1303 (Fed. Cir. 2005) and Thorner v. Sony Computer Entertainment Inc., 
669 F.3d 1362 (Fed. Cir. 2012). These comments also questioned how 
statements by patent owners will be used to determine the proper 
meaning of a patent claim.
    Response: The Office standard for claim construction, i.e., ``the 
proper meaning of a claim,'' is the ``broadest reasonable 
interpretation'' (BRI) consistent with the specification. See In re Am. 
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), In re 
Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997), and In re Zletz, 893 
F.2d 319, 321 (Fed. Cir. 1989); see also MPEP Sec.  2111. During 
reexamination, claims of an unexpired patent will be given the broadest 
reasonable interpretation consistent with the specification. See In re 
Yamamoto, 740 F.2d at 1571-72 (Fed. Cir. 1984). In a reexamination 
proceeding involving claims of an expired patent, claim construction is 
performed pursuant to the principles set forth in Ex parte Papst-
Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986); and MPEP Sec.  
2258 I.(G) (8th ed. 2001) (Rev. 8, July 2010). Written statements 
submitted pursuant to 35 U.S.C. 301(a)(2) will not be used when 
ordering reexamination, but will be used during reexamination to assist 
in construing the claims. See 35 U.S.C. 301(d).
    Comment 19: Several comments suggested the language in proposed 
Sec.  1.501(b)(2) be amended to make clear that the accompanying 
information filed with the patent owner claim scope statement is not 
limited to information of the patent owner.
    Response: The language in Sec.  1.501(b)(2) has been amended to 
make clear that the accompanying information filed with the patent 
owner claim scope statement is not limited to information of the patent 
owner.
    Comment 20: A number of comments suggested that the requirement for 
identification of the real party in interest in an ex parte 
reexamination proceeding proposed in Sec.  1.510(b)(7) not be 
implemented by the final rule. These comments suggested that requiring 
identification of the real party in interest could have a chilling 
effect on the submission of ex parte reexamination requests.
    Response: The Office's proposal to require an ex parte 
reexamination requester to identify themselves upon filing of the 
request has not been implemented. Instead, the Office will rely upon 
the ex parte reexamination requester's certification required by Sec.  
1.510(b)(6).
    Comment 21: Several comments suggested that the estoppel 
provisions, as they apply to ex parte reexamination proceedings, only 
estop a party from requesting ex parte reexamination after a final 
decision in a post grant review or an inter partes review. These 
comments also suggested that the estoppel provisions do not apply to 
pending ex parte reexamination proceedings because the Office, not the 
third party requester, maintains an ex parte reexamination proceeding 
after the reexamination is ordered. One comment further suggested that 
the estoppel provisions should not estop a pending ex parte 
reexamination proceeding from continuing because once the Office 
determines that there is a substantial new question of patentability 
(SNQ), the ex parte reexamination statute mandates that the Office 
issue a reexamination certificate that resolves the SNQ. One comment 
requested that the rule specifically state that the estoppel provisions 
bar the initiation or the maintenance of an ex parte reexamination.
    Response: Section 1.510 has been revised vis-a-vis the previous 
rule to implement the new statutory estoppel provisions with respect to 
requests for ex parte reexamination. The comment that the scope of the 
estoppel provisions precludes maintenance of pending reexamination 
proceedings is not in accord with the language of the statute. Under 
certain circumstances, sections 315(e) and 325(e) prohibit a requester 
from requesting a new proceeding or maintaining an ongoing proceeding 
in the Office. With respect to reexamination, it is the Office that 
maintains a reexamination proceeding, not the requester. Accordingly, 
the estoppel provisions do not apply to pending reexamination 
proceedings.
    Comment 22: Several comments suggested that the estoppel provisions 
of 35 U.S.C. 315(e) and 325(e) do not apply to requests for ex parte 
reexamination in view of 35 U.S.C. 302 which provides that any person 
at any time can file such a request.
    Response: The legislative history of 35 U.S.C. 315(e) and 35 U.S.C. 
325(e) indicates that the estoppel provision applies ``* * * to 
subsequent administrative proceedings. A party that uses inter partes 
review is estopped from raising in a subsequent PTO proceeding (such as 
an ex parte reexam or inter partes review) any issue that it raised or 
reasonably could have raised

[[Page 46622]]

in the inter partes review.'' See H.R. Rep. No. 112-98, Part 1, at page 
47 (2011). [Internal quotations and emphasis removed]. Therefore, the 
new estoppel provisions apply to the filing of a subsequent request for 
ex parte reexamination by a requester that previously instituted a 
review that resulted in a final written decision.
    Comment 23: One comment suggested that when there is an ex parte 
reexamination proceeding co-pending with an inter partes review or 
post-grant review, the reexamination should be either stayed or merged. 
By contrast, another comment suggested that an ex parte reexamination 
proceeding co-pending with an inter partes review or post grant review, 
should not be merged given the statutory requirement of 35 U.S.C. 305 
to conduct ex parte reexamination with special dispatch.
    Response: The Director possesses statutory discretion as to the 
manner of handling multiple proceedings and matters pending before the 
Office for a single patent. See 35 U.S.C. 315(d) and 35 U.S.C. 325(d). 
Therefore, a determination whether to stay, transfer, consolidate 
(merge) or terminate any proceeding(s) on the same patent is within the 
sole discretion of the Office, and will be addressed on a case-by-case 
basis.
    Comment 24: One comment requested clarification as to who is a real 
party in interest or a privy for purposes of the certification in Sec.  
1.510(b)(6). The comment suggested that the common law test of 
``control'' be used, similar to and consistent with the control test 
discussed in Practice Guide for Proposed Trial Rules, 77 FR 6868, 6870-
71 (Feb. 9, 2012), and Rules of Practice for Trials Before the Patent 
Trial and Appeal Board and Judicial Review of Patent Trial and Appeal 
Board Decisions, 77 FR 6879, 6883-84 (Feb. 9, 2012) (``Board 
Notices''). The comment also suggested that certification should apply 
only to those entities that have controlled a post-issuance proceeding 
and that the identification requirement is exclusively applicable to 
them. The comment further suggested that any challenges to the non-
estoppel certification should occur before a determination to order 
reexamination is made.
    Response: The ``control test'' referred to by the comment may be 
used as guidance when determining whether the certification required by 
Sec.  1.510(b)(6) is proper with regard to a real party in interest. A 
requester may also consult the Office's inter partes reexamination 
certification policy for additional guidance concerning the definition 
of a real party in interest. See MPEP Sec.  2612. Similarly, privity is 
determined on a case-by-case basis. Therefore, whether a requester is a 
privy to an estopped party must be decided by evaluating all the facts 
and circumstances of each individual situation.
    Section 1.510(b)(6) requires a third party requester to certify 
that the estoppel provisions do not prohibit the filing of the ex parte 
reexamination request, and the Office will not generally look beyond 
this required certification. If the Office becomes aware of facts that 
call the certification into question, the Office will determine, on a 
case-by-case basis, whether the request for ex parte reexamination is 
prohibited by statute.
    Comment 25: A number of comments suggested that the statement 
identifying the real party in interest, required by proposed Sec.  
1.510(b)(7), be deleted because it is unnecessary in view of the 
certification in Sec.  1.510(b)(6). Several of these comments pointed 
out that should the Office retain the requirement for identification of 
the real party in interest, procedures for safeguarding anonymity are 
critical.
    Response: The Office's proposal in Sec.  1.510(b)(7) to require an 
ex parte reexamination requester to identify themselves upon the filing 
of the request has not been implemented. The certification requirement 
of Sec.  1.510(b)(6), coupled with a party's obligations under Sec.  
11.18 when transacting business before the Office, are considered 
sufficient to ensure compliance with the new statutory estoppel 
requirements. A real party in interest that wishes to remain anonymous 
can do so by utilizing the services of a registered practitioner. In 
such an instance, the registered practitioner submitting a request for 
reexamination on behalf of the real party in interest would be 
certifying that the real party in interest was not estopped from filing 
the request. Conversely, an individual filing a request for 
reexamination on behalf of himself cannot remain anonymous as he is 
required to sign the document that includes the Sec.  1.510(b)(6) 
certification.

Rulemaking Considerations

    A. Administrative Procedure Act (APA): This final rule revises 
existing rules governing prior art citations in a patent file and ex 
parte reexamination to implement the following provisions of sections 3 
and 6 of the AIA: (1) Section 6(g) which amends 35 U.S.C. 301, to 
expand the scope of information that may be submitted in the file of an 
issued patent to include patent owner claim scope statements; (2) the 
provisions of sections 6(a) and 6(d) (which newly enact inter partes 
review and post grant review, respectively) that provide for estoppels 
effective as to proceedings before the Office, including but not 
limited to reexamination; and (3) sections 3(j) and 7 which change the 
title ``Board of Patent Appeals and Interferences'' to ``Patent Trial 
and Appeal Board,'' and change references to interference proceedings 
to derivation proceedings.
    Therefore, the changes in this final rule are merely procedural 
and/or interpretive. See Bachow Communs., Inc. v. FCC, 237 F.3d 683, 
690 (D.C. Cir. 2001) (rules governing an application process are 
procedural under the Administrative Procedure Act); Inova Alexandria 
Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling 
appeals were procedural where they did not change the substantive 
standard for reviewing claims); Nat'l Org. of Veterans' Advocates v. 
Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule 
that clarifies interpretation of a statute is interpretive).
    Accordingly, prior notice and opportunity for public comment are 
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See 
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) 
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not 
require notice and comment rulemaking for ``interpretative rules, 
general statements of policy, or rules of agency organization, 
procedure, or practice.'') (quoting 5 U.S.C. 553(b)(A)). The Office, 
however, published proposed changes for comment as it sought the 
benefit of the public's views on the Office's proposed implementation 
of this provision of the AIA.
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553 or any 
other law, neither a regulatory flexibility analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) is required. See 5 U.S.C. 603. The Office received no comments on 
this subject.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563. 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society

[[Page 46623]]

consistent with obtaining the regulatory objectives; (3) selected a 
regulatory approach that maximizes net benefits; (4) specified 
performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector, and the public as a whole, 
and provided on-line access to the rulemaking docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    E. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not effect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), the United States Patent and Trademark 
Office will submit a report containing this final rule and other 
required information to the United States Senate, the United States 
House of Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this notice are not expected to 
result in an annual effect on the economy of 100 million dollars or 
more, a major increase in costs or prices, or significant adverse 
effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this final rule is not a ``major rule'' as defined in 5 
U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The final changes in this 
notice do not involve a Federal intergovernmental mandate that will 
result in the expenditure by State, local, and tribal governments, in 
the aggregate, of 100 million dollars (as adjusted) or more in any one 
year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    M. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions which involve the use of 
technical standards.
    O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.) requires that the USPTO consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This final rule makes changes to the rules of practice that 
would impose new information collection requirements which are subject 
to review by the Office of Management and Budget (OMB) under the 
Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). Accordingly, the 
Office submitted a proposed information collection to OMB for its 
review and approval when the notice of proposed rulemaking was 
published. The Office also published the title, description, and 
respondent description of the information collection, with an estimate 
of the annual reporting burdens, in the notice of proposed rulemaking 
(See Changes to Implement Miscellaneous Post Patent Provisions of the 
Leahy-Smith America Invents Act, 77 FR 447). The Office did not receive 
any comments on the proposed information collection. The changes 
adopted in this final rule do not require any further change to the 
proposed information collection. Accordingly, the Office has 
resubmitted the proposed information collection to OMB. The proposed 
information collection is available at the OMB's Information Collection 
Review Web site (www.reginfo.gov/public/do/PRAMain).
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall a person be subject to a penalty for failure 
to comply with, a collection of information subject to the requirements 
of the Paperwork Reduction Act, unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses, and Biologics.

37 CFR Part 5

    Classified information, Foreign relations, Inventions and patents.

37 CFR Part 10

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

37 CFR Part 11

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers.

    For the reasons set forth in the preamble, 37 CFR parts 1, 5, 10, 
11, and 41 are amended as follows:

[[Page 46624]]

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority:  35 U.S.C. 2(b)(2), unless otherwise noted.


0
2. Section 1.1 is amended by revising paragraph (a)(1)(ii) to read as 
follows:


Sec.  1.1  Addresses for non-trademark correspondence with the United 
States Patent and Trademark Office.

    (a) * * *
    (1) * * *
    (ii) Patent Trial and Appeal Board. See Sec.  41.10 or Sec.  42.6 
of this title. Notices of appeal, appeal briefs, reply briefs, requests 
for oral hearing, as well as all other correspondence in an application 
or a patent involved in an appeal to the Board for which an address is 
not otherwise specified, should be addressed as set out in paragraph 
(a)(1)(i) of this section.
* * * * *

0
3. Section 1.4 is amended by revising paragraph (a)(2) to read as 
follows:


Sec.  1.4  Nature of correspondence and signature requirements.

    (a) * * *
    (2) Correspondence in and relating to a particular application or 
other proceeding in the Office. See particularly the rules relating to 
the filing, processing, or other proceedings of national applications 
in subpart B, Sec. Sec.  1.31 to 1.378; of international applications 
in subpart C, Sec. Sec.  1.401 to 1.499; of ex parte reexaminations of 
patents in subpart D, Sec. Sec.  1.501 to 1.570; of extension of patent 
term in subpart F, Sec. Sec.  1.710 to 1.785; of inter partes 
reexaminations of patents in subpart H, Sec. Sec.  1.902 to 1.997; and 
of the Patent Trial and Appeal Board in parts 41 and 42 of this title.
* * * * *

0
4. Section 1.5 is amended by adding new paragraph (c) to read as 
follows:


Sec.  1.5  Identification of patent, patent application, or patent-
related proceeding.

* * * * *
    (c) Correspondence relating to a trial proceeding before the Patent 
Trial and Appeal Board (part 42 of this title) are governed by Sec.  
42.6 of this title.
* * * * *

0
5. Section 1.6 is amended by revising the introductory text of 
paragraph (d) and paragraph (d)(9) to read as follows:


Sec.  1.6  Receipt of correspondence.

* * * * *
    (d) Facsimile transmission. Except in the cases enumerated below, 
correspondence, including authorizations to charge a deposit account, 
may be transmitted by facsimile. The receipt date accorded to the 
correspondence will be the date on which the complete transmission is 
received in the United States Patent and Trademark Office, unless that 
date is a Saturday, Sunday, or Federal holiday within the District of 
Columbia. See paragraph (a)(3) of this section. To facilitate proper 
processing, each transmission session should be limited to 
correspondence to be filed in a single application or other proceeding 
before the United States Patent and Trademark Office. The application 
number of a patent application, the control number of a reexamination 
proceeding, the interference number of an interference proceeding, the 
trial number of a trial proceeding before the Board, or the patent 
number of a patent should be entered as a part of the sender's 
identification on a facsimile cover sheet. Facsimile transmissions are 
not permitted and, if submitted, will not be accorded a date of receipt 
in the following situations:
* * * * *
    (9) In contested cases and trials before the Patent Trial and 
Appeal Board, except as the Board may expressly authorize.
* * * * *

0
6. Section 1.9 is amended by revising paragraph (g) to read as follows:


Sec.  1.9  Definitions.

* * * * *
    (g) For definitions in Patent Trial and Appeal Board proceedings, 
see parts 41 and 42 of this title.
* * * * *

0
7. Section 1.11 is amended by revising paragraph (e) to read as 
follows:


Sec.  1.11  Files open to the public.

* * * * *
    (e) Except as prohibited in Sec.  41.6(b), Sec.  42.14 or Sec.  
42.410(b), the file of any interference or trial before the Patent 
Trial and Appeal Board is open to public inspection and copies of the 
file may be obtained upon payment of the fee therefor.

0
8. Section 1.17 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (b) For fees in proceedings before the Patent Trial and Appeal 
Board, see Sec.  41.20 and Sec.  42.15 of this title.
* * * * *

0
9. Section 1.36 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.36  Revocation of power of attorney; withdrawal of patent 
attorney or agent.

* * * * *
    (b) A registered patent attorney or patent agent who has been given 
a power of attorney pursuant to Sec.  1.32(b) may withdraw as attorney 
or agent of record upon application to and approval by the Director. 
The applicant or patent owner will be notified of the withdrawal of the 
registered patent attorney or patent agent. Where power of attorney is 
given to the patent practitioners associated with a Customer Number, a 
request to delete all of the patent practitioners associated with the 
Customer Number may not be granted if an applicant has given power of 
attorney to the patent practitioners associated with the Customer 
Number in an application that has an Office action to which a reply is 
due, but insufficient time remains for the applicant to file a reply. 
See Sec.  41.5 of this title for withdrawal during proceedings before 
the Patent Trial and Appeal Board.

0
10. Section 1.51 is amended by revising paragraph (c)(2) to read as 
follows:


Sec.  1.51  General requisites of an application.

* * * * *
    (c) * * *
    (2) A specification as prescribed by 35 U.S.C. 112(a), see Sec.  
1.71;
* * * * *

0
11. Section 1.57 is amended by revising paragraphs (c)(1), (c)(2), and 
(c)(3) to read as follows:


Sec.  1.57  Incorporation by reference.

* * * * *
    (c) * * *
    (1) Provide a written description of the claimed invention, and of 
the manner and process of making and using it, in such full, clear, 
concise, and exact terms as to enable any person skilled in the art to 
which it pertains, or with which it is most nearly connected, to make 
and use the same, and set forth the best mode contemplated by the 
inventor of carrying out the invention as required by 35 U.S.C. 112(a);
    (2) Describe the claimed invention in terms that particularly point 
out and distinctly claim the invention as required by 35 U.S.C. 112(b); 
or
    (3) Describe the structure, material, or acts that correspond to a 
claimed means or step for performing a specified function as required 
by 35 U.S.C. 112(f).
* * * * *

0
12. Section 1.59 is amended by revising paragraph (a)(1) to read as 
follows:

[[Page 46625]]

Sec.  1.59  Expungement of information or copy of papers in application 
file.

    (a)(1) Information in an application will not be expunged, except 
as provided in paragraph (b) of this section or Sec.  41.7(a) or Sec.  
42.7(a) of this title.
* * * * *

0
13. Section 1.78 is amended by revising the introductory text of 
paragraph (a)(1) and paragraph (a)(4) to read as follows:


Sec.  1.78  Claiming benefit of earlier filing date and cross-
references to other applications.

    (a)(1) A nonprovisional application or international application 
designating the United States of America may claim an invention 
disclosed in one or more prior-filed copending nonprovisional 
applications or international applications designating the United 
States of America. In order for an application to claim the benefit of 
a prior-filed copending nonprovisional application or international 
application designating the United States of America, each prior-filed 
application must name as an inventor at least one inventor named in the 
later-filed application and disclose the named inventor's invention 
claimed in at least one claim of the later-filed application in the 
manner provided by 35 U.S.C. 112(a), other than the requirement to 
disclose the best mode. In addition, each prior-filed application must 
be:
* * * * *
    (4) A nonprovisional application, other than for a design patent, 
or an international application designating the United States of 
America may claim an invention disclosed in one or more prior-filed 
provisional applications. In order for an application to claim the 
benefit of one or more prior-filed provisional applications, each 
prior-filed provisional application must name as an inventor at least 
one inventor named in the later-filed application and disclose the 
named inventor's invention claimed in at least one claim of the later-
filed application in the manner provided by 35 U.S.C. 112(a), other 
than the requirement to disclose the best mode. In addition, each 
prior-filed provisional application must be entitled to a filing date 
as set forth in Sec.  1.53(c), and the basic filing fee set forth in 
Sec.  1.16(d) must be paid within the time period set forth in Sec.  
1.53(g).
* * * * *

0
14. Section 1.136 is amended by revising paragraphs (a)(1)(iv), 
(a)(1)(v), (a)(2), and (b) to read as follows:


Sec.  1.136  Extensions of time.

    (a)(1) * * *
    (iv) The reply is to a decision by the Patent Trial and Appeal 
Board pursuant to Sec.  1.304 or to Sec.  41.50 or Sec.  41.52 of this 
title; or
    (v) The application is involved in a contested case (Sec.  
41.101(a) of this title) or a derivation proceeding (Sec.  42.4(b) of 
this title).
    (2) The date on which the petition and the fee have been filed is 
the date for purposes of determining the period of extension and the 
corresponding amount of the fee. The expiration of the time period is 
determined by the amount of the fee paid. A reply must be filed prior 
to the expiration of the period of extension to avoid abandonment of 
the application (Sec.  1.135), but in no situation may an applicant 
reply later than the maximum time period set by statute, or be granted 
an extension of time under paragraph (b) of this section when the 
provisions of this paragraph are available. See Sec.  1.304 for 
extensions of time to appeal to the U.S. Court of Appeals for the 
Federal Circuit or to commence a civil action; Sec.  1.550(c) for 
extensions of time in ex parte reexamination proceedings, Sec.  1.956 
for extensions of time in inter partes reexamination proceedings; 
Sec. Sec.  41.4(a) and 41.121(a)(3) of this title for extensions of 
time in contested cases before the Patent Trial and Appeal Board; and 
Sec.  42.5(c) of this title for extensions of time in trials before the 
Patent Trial and Appeal Board.
* * * * *
    (b) When a reply cannot be filed within the time period set for 
such reply and the provisions of paragraph (a) of this section are not 
available, the period for reply will be extended only for sufficient 
cause and for a reasonable time specified. Any request for an extension 
of time under this paragraph must be filed on or before the day on 
which such reply is due, but the mere filing of such a request will not 
effect any extension under this paragraph. In no situation can any 
extension carry the date on which reply is due beyond the maximum time 
period set by statute. See Sec.  1.304 for extensions of time to appeal 
to the U.S. Court of Appeals for the Federal Circuit or to commence a 
civil action; Sec.  1.550(c) for extensions of time in ex parte 
reexamination proceedings; Sec.  1.956 for extensions of time in inter 
partes reexamination proceedings; Sec. Sec.  41.4(a) and 41.121(a)(3) 
of this title for extensions of time in contested cases before the 
Patent Trial and Appeal Board; and Sec.  42.5(c) of this title for 
extensions of time in trials before the Patent Trial and Appeal Board. 
Any request under this section must be accompanied by the petition fee 
set forth in Sec.  1.17(g).
* * * * *

0
15. Section 1.178 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.178  Original patent; continuing duty of applicant.

* * * * *
    (b) In any reissue application before the Office, the applicant 
must call to the attention of the Office any prior or concurrent 
proceedings in which the patent (for which reissue is requested) is or 
was involved, such as interferences or trials before the Patent Trial 
and Appeal Board, reissues, reexaminations, or litigations and the 
results of such proceedings (see also Sec.  1.173(a)(1)).

0
16. Section 1.181 is amended by revising paragraphs (a)(1) and (a)(3) 
to read as follows:


Sec.  1.181  Petition to the Director.

    (a) * * *
    (1) From any action or requirement of any examiner in the ex parte 
prosecution of an application, or in ex parte or inter partes 
prosecution of a reexamination proceeding which is not subject to 
appeal to the Patent Trial and Appeal Board or to the court;
* * * * *
    (3) To invoke the supervisory authority of the Director in 
appropriate circumstances. For petitions involving action of the Patent 
Trial and Appeal Board, see Sec.  41.3 of this title.
* * * * *

0
17. The undesignated center heading before Sec.  1.191 is revised to 
read as follows:

Appeal to the Patent Trial and Appeal Board

0
18. Section 1.191 is revised to read as follows:


Sec.  1.191  Appeal to Patent Trial and Appeal Board.

    Appeals to the Patent Trial and Appeal Board under 35 U.S.C. 134(a) 
and (b) are conducted according to part 41 of this title.

0
19. Section 1.198 is revised to read as follows:


Sec.  1.198  Reopening after a final decision of the Patent Trial and 
Appeal Board.

    When a decision by the Patent Trial and Appeal Board on appeal has 
become final for judicial review, prosecution of the proceeding before 
the primary examiner will not be reopened or reconsidered by the 
primary examiner except under the provisions of Sec.  1.114 or Sec.  
41.50 of this title without the written authority of the Director,

[[Page 46626]]

and then only for the consideration of matters not already adjudicated, 
sufficient cause being shown.

0
20. Section 1.248 is amended by revising the section heading and 
paragraph (c) to read as follows:


Sec.  1.248  Service of papers; manner of service; proof of service in 
cases other than interferences and trials.

* * * * *
    (c) See Sec.  41.106(e) or Sec.  42.6(e) of this title for service 
of papers in contested cases or trials before the Patent Trial and 
Appeal Board.

0
21. Section 1.313 is amended by revising paragraph (b)(4) to read as 
follows:


Sec.  1.313  Withdrawal from issue.

* * * * *
    (b) * * *
    (4) For an interference or derivation proceeding.
* * * * *

0
22. Section 1.322 is amended by revising paragraph (a)(3) to read as 
follows:


Sec.  1.322  Certificate of correction of Office mistake.

    (a) * * *
    (3) If the request relates to a patent involved in an interference 
or trial before the Patent Trial and Appeal Board, the request must 
comply with the requirements of this section and be accompanied by a 
motion under Sec.  41.121(a)(2), Sec.  41.121(a)(3), or Sec.  42.20 of 
this title.
* * * * *

0
23. Section 1.323 is revised to read as follows:


Sec.  1.323  Certificate of correction of applicant's mistake.

    The Office may issue a certificate of correction under the 
conditions specified in 35 U.S.C. 255 at the request of the patentee or 
the patentee's assignee, upon payment of the fee set forth in Sec.  
1.20(a). If the request relates to a patent involved in an interference 
or trial before the Patent Trial and Appeal Board, the request must 
comply with the requirements of this section and be accompanied by a 
motion under Sec.  41.121(a)(2), Sec.  41.121(a)(3) or Sec.  42.20 of 
this title.

0
24. The undesignated center heading before Sec.  1.501 is revised to 
read as follows:

Citation of Prior Art and Written Statements

0
25. Section 1.501 is revised to read as follows:


Sec.  1.501  Citation of prior art and written statements in patent 
files.

    (a) Information content of submission: At any time during the 
period of enforceability of a patent, any person may file a written 
submission with the Office under this section, which is directed to the 
following information:
    (1) Prior art consisting of patents or printed publications which 
the person making the submission believes to have a bearing on the 
patentability of any claim of the patent; or
    (2) Statements of the patent owner filed by the patent owner in a 
proceeding before a Federal court or the Office in which the patent 
owner took a position on the scope of any claim of the patent. Any 
statement submitted under this paragraph must be accompanied by any 
other documents, pleadings, or evidence from the proceeding in which 
the statement was filed that address the written statement, and such 
statement and accompanying information under this paragraph must be 
submitted in redacted form to exclude information subject to an 
applicable protective order.
    (3) Submissions under paragraph (a)(2) of this section must 
identify:
    (i) The forum and proceeding in which patent owner filed each 
statement;
    (ii) The specific papers and portions of the papers submitted that 
contain the statements; and
    (iii) How each statement submitted is a statement in which patent 
owner took a position on the scope of any claim in the patent.
    (b) Explanation: A submission pursuant to paragraph (a) of this 
section:
    (1) Must include an explanation in writing of the pertinence and 
manner of applying any prior art submitted under paragraph (a)(1) of 
this section and any written statement and accompanying information 
submitted under paragraph (a)(2) of this section to at least one claim 
of the patent, in order for the submission to become a part of the 
official file of the patent; and
    (2) May, if the submission is made by the patent owner, include an 
explanation of how the claims differ from any prior art submitted under 
paragraph (a)(1) of this section or any written statements and 
accompanying information submitted under paragraph (a)(2) of this 
section.
    (c) Reexamination pending: If a reexamination proceeding has been 
requested and is pending for the patent in which the submission is 
filed, entry of the submission into the official file of the patent is 
subject to the provisions of Sec. Sec.  1.502 and 1.902.
    (d) Identity: If the person making the submission wishes his or her 
identity to be excluded from the patent file and kept confidential, the 
submission papers must be submitted anonymously without any 
identification of the person making the submission.
    (e) Certificate of Service: A submission under this section by a 
person other than the patent owner must include a certification that a 
copy of the submission was served in its entirety upon patent owner at 
the address as provided for in Sec.  1.33 (c). A submission by a person 
other than the patent owner that fails to include proper proof of 
service as required by Sec.  1.248(b) will not be entered into the 
patent file.

0
26. Section 1.510 is amended by revising paragraphs (a) and (b)(2) and 
adding new paragraph (b)(6) to read as follows:


Sec.  1.510  Request for ex parte reexamination.

    (a) Any person may, at any time during the period of enforceability 
of a patent, file a request for an ex parte reexamination by the Office 
of any claim of the patent on the basis of prior art patents or printed 
publications cited under Sec.  1.501, unless prohibited by 35 U.S.C. 
315(e)(1) or 35 U.S.C. 325(e)(1). The request must be accompanied by 
the fee for requesting reexamination set in Sec.  1.20(c)(1).
    (b) * * *
    (2) An identification of every claim for which reexamination is 
requested, and a detailed explanation of the pertinency and manner of 
applying the cited prior art to every claim for which reexamination is 
requested. For each statement of the patent owner and accompanying 
information submitted pursuant to Sec.  1.501(a)(2) which is relied 
upon in the detailed explanation, the request must explain how that 
statement is being used to determine the proper meaning of a patent 
claim in connection with the prior art applied to that claim and how 
each relevant claim is being interpreted. If appropriate, the party 
requesting reexamination may also point out how claims distinguish over 
cited prior art.
* * * * *
    (6) A certification by the third party requester that the statutory 
estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do 
not prohibit the requester from filing the ex parte reexamination 
request.
* * * * *

0
27. Section 1.515 is amended by revising paragraph (a) to read as 
follows:

[[Page 46627]]

Sec.  1.515  Determination of the request for ex parte reexamination.

    (a) Within three months following the filing date of a request for 
an ex parte reexamination, an 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 cited therein, with or without consideration of other patents 
or printed publications. A statement and any accompanying information 
submitted pursuant to Sec.  1.501(a)(2) will not be considered by the 
examiner when making a determination on 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 given or mailed to the patent owner at the address provided 
for in Sec.  1.33(c) and to the person requesting reexamination.
* * * * *

0
28. Section 1.552 is amended by adding new paragraph (d) to read as 
follows:


Sec.  1.552  Scope of reexamination in ex parte reexamination 
proceedings.

* * * * *
    (d) Any statement of the patent owner and any accompanying 
information submitted pursuant to Sec.  1.501(a)(2) which is of record 
in the patent being reexamined (which includes any reexamination files 
for the patent) may be used after a reexamination proceeding has been 
ordered to determine the proper meaning of a patent claim when applying 
patents or printed publications.

0
29. Section 1.701 is amended by revising paragraphs (a)(1), (a)(3), 
(c)(1)(i), (c)(1)(ii), (c)(2)(iii), and (c)(3) to read as follows:


Sec.  1.701  Extension of patent term due to examination delay under 
the Uruguay Round Agreements Act (original applications, other than 
designs, filed on or after June 8, 1995, and before May 29, 2000).

    (a) * * *
    (1) Interference or derivation proceedings under 35 U.S.C. 135(a); 
and/or
* * * * *
    (3) Appellate review by the Patent Trial and Appeal Board or by a 
Federal court under 35 U.S.C. 141 or 145, if the patent was issued 
pursuant to a decision in the review reversing an adverse determination 
of patentability and if the patent is not subject to a terminal 
disclaimer due to the issuance of another patent claiming subject 
matter that is not patentably distinct from that under appellate 
review. If an application is remanded by a panel of the Patent Trial 
and Appeal Board and the remand is the last action by a panel of the 
Patent Trial and Appeal Board prior to the mailing of a notice of 
allowance under 35 U.S.C. 151 in the application, the remand shall be 
considered a decision in the review reversing an adverse determination 
of patentability as that phrase is used in 35 U.S.C. 154(b)(2) as 
amended by section 532(a) of the Uruguay Round Agreements Act, Public 
Law 103-465, 108 Stat. 4809, 4983-85 (1994), and a final decision in 
favor of the applicant under paragraph (c)(3) of this section. A remand 
by a panel of the Patent Trial and Appeal Board shall not be considered 
a decision in the review reversing an adverse determination of 
patentability as provided in this paragraph if there is filed a request 
for continued examination under 35 U.S.C. 132(b) that was not first 
preceded by the mailing, after such remand, of at least one of an 
action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 
151.
    (c)(1) * * *
    (i) With respect to each interference or derivation proceeding in 
which the application was involved, the number of days, if any, in the 
period beginning on the date the interference or derivation proceeding 
was instituted to involve the application in the interference or 
derivation proceeding and ending on the date that the interference or 
derivation proceeding was terminated with respect to the application; 
and
    (ii) The number of days, if any, in the period beginning on the 
date prosecution in the application was suspended by the Patent and 
Trademark Office due to interference or derivation proceedings under 35 
U.S.C. 135(a) not involving the application and ending on the date of 
the termination of the suspension.
    (2) * * *
    (iii) The number of days, if any, in the period beginning on the 
date applicant was notified that an interference or derivation 
proceeding would be instituted but for the secrecy order and ending on 
the date the secrecy order and any renewal thereof was removed; and
* * * * *
    (3) The period of delay under paragraph (a)(3) of this section is 
the sum of the number of days, if any, in the period beginning on the 
date on which an appeal to the Patent Trial and Appeal Board was filed 
under 35 U.S.C. 134 and ending on the date of a final decision in favor 
of the applicant by the Patent Trial and Appeal Board or by a Federal 
court in an appeal under 35 U.S.C. 141 or a civil action under 35 
U.S.C. 145.
* * * * *

0
30. Section 1.702 is amended by revising paragraphs (a)(3), (b)(2), 
(b)(4), (c), and (e) to read as follows:


Sec.  1.702  Grounds for adjustment of patent term due to examination 
delay under the Patent Term Guarantee Act of 1999 (original 
applications, other than designs, filed on or after May 29, 2000).

    (a) * * *
    (3) Act on an application not later than four months after the date 
of a decision by the Patent Trial and Appeal Board under 35 U.S.C. 134 
or 135 or a decision by a Federal court under 35 U.S.C. 141, 145, or 
146 where at least one allowable claim remains in the application; or
* * * * *
    (b) * * *
    (2) Any time consumed by an interference or derivation proceeding 
under 35 U.S.C. 135(a);
* * * * *
    (4) Any time consumed by review by the Patent Trial and Appeal 
Board or a Federal court; or
* * * * *
    (c) Delays caused by interference and derivation proceedings. 
Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the 
term of an original patent shall be adjusted if the issuance of the 
patent was delayed due to interference or derivation proceedings under 
35 U.S.C. 135(a).
* * * * *
    (e) Delays caused by successful appellate review. Subject to the 
provisions of 35 U.S.C. 154(b) and this subpart, the term of an 
original patent shall be adjusted if the issuance of the patent was 
delayed due to review by the Patent Trial and Appeal Board under 35 
U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145, if the 
patent was issued under a decision in the review reversing an adverse 
determination of patentability. If an application is remanded by a 
panel of the Patent Trial and Appeal Board and the remand is the last 
action by a panel of the Patent Trial and Appeal Board prior to the 
mailing of a notice of allowance under 35 U.S.C. 151 in the 
application, the remand shall be considered a decision by the Patent 
Trial and Appeal Board as that phrase is used in 35 U.S.C. 
154(b)(1)(A)(iii), a decision in the review reversing an adverse 
determination of patentability as that phrase is used in 35 U.S.C. 
154(b)(1)(C)(iii), and a final decision in favor of the applicant under 
Sec.  1.703(e). A remand by a panel of the Patent Trial and Appeal 
Board shall not be

[[Page 46628]]

considered a decision in the review reversing an adverse determination 
of patentability as provided in this paragraph if there is filed a 
request for continued examination under 35 U.S.C. 132(b) that was not 
first preceded by the mailing, after such remand, of at least one of an 
action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 
151.
* * * * *

0
31. Section 1.703 is amended by revising paragraphs (a)(5), (b)(2), 
(b)(3)(iii), (c)(1), (c)(2) and (d)(3) to read as follows:


Sec.  1.703  Period of adjustment of patent term due to examination 
delay.

    (a) * * *
    (5) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date of a final decision 
by the Patent Trial and Appeal Board or by a Federal court in an appeal 
under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145 or 146 where 
at least one allowable claim remains in the application and ending on 
the date of mailing of either an action under 35 U.S.C. 132 or a notice 
of allowance under 35 U.S.C. 151, whichever occurs first; and
* * * * *
    (b) * * *
    (2)(i) The number of days, if any, in the period beginning on the 
date an interference or derivation proceeding was instituted to involve 
the application in the interference or derivation proceeding under 35 
U.S.C. 135(a) and ending on the date that the interference or 
derivation proceeding was terminated with respect to the application; 
and
    (ii) The number of days, if any, in the period beginning on the 
date prosecution in the application was suspended by the Office due to 
interference or derivation proceedings under 35 U.S.C. 135(a) not 
involving the application and ending on the date of the termination of 
the suspension;
    (3) * * *
    (iii) The number of days, if any, in the period beginning on the 
date applicant was notified that an interference or derivation 
proceeding under 35 U.S.C. 135(a) would be instituted but for the 
secrecy order and ending on the date the secrecy order was removed; and
* * * * *
    (c) * * *
    (1) The number of days, if any, in the period beginning on the date 
an interference or derivation proceeding was instituted to involve the 
application in the interference or derivation proceeding under 35 
U.S.C. 135(a) and ending on the date that the interference or 
derivation proceeding was terminated with respect to the application; 
and
    (2) The number of days, if any, in the period beginning on the date 
prosecution in the application was suspended by the Office due to 
interference or derivation proceedings under 35 U.S.C. 135(a) not 
involving the application and ending on the date of the termination of 
the suspension.
    (d) * * *
    (3) The number of days, if any, in the period beginning on the date 
applicant was notified that an interference or derivation proceeding 
under 35 U.S.C. 135(a) would be instituted but for the secrecy order 
and ending on the date the secrecy order was removed; and
* * * * *

0
32. Section 1.704 is amended by revising the introductory text of 
paragraph (c)(9) to read as follows:


Sec.  1.704  Reduction of period of adjustment of patent term.

* * * * *
    (c) * * *
    (9) Submission of an amendment or other paper after a decision by 
the Patent Trial and Appeal Board, other than a decision designated as 
containing a new ground of rejection under Sec.  41.50 (b) of this 
title or statement under Sec.  41.50(c) of this title, or a decision by 
a Federal court, less than one month before the mailing of an Office 
action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 
that requires the mailing of a supplemental Office action or 
supplemental notice of allowance, in which case the period of 
adjustment set forth in Sec.  1.703 shall be reduced by the lesser of:
* * * * *

0
33. Section 1.937 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.937  Conduct of inter partes reexamination.

    (a) All inter partes reexamination proceedings, including any 
appeals to the Patent Trial and Appeal Board, will be conducted with 
special dispatch within the Office, unless the Director makes a 
determination that there is good cause for suspending the reexamination 
proceeding.
* * * * *

0
34. The undesignated center heading before Sec.  1.959 is revised to 
read as follows:

Appeal to the Patent Trial and Appeal Board in Inter Partes 
Reexamination

0
35. Section 1.959 is revised to read as follows:


Sec.  1.959  Appeal in inter partes reexamination.

    Appeals to the Patent Trial and Appeal Board under 35 U.S.C. 134(c) 
are conducted according to part 41 of this title.

0
36. Section 1.979 is revised to read as follows:


Sec.  1.979  Return of Jurisdiction from the Patent Trial and Appeal 
Board; termination of appeal proceedings.

    (a) Jurisdiction over an inter partes reexamination proceeding 
passes to the examiner after a decision by the Patent Trial and Appeal 
Board upon transmittal of the file to the examiner, subject to each 
appellant's right of appeal or other review, for such further action as 
the condition of the inter partes reexamination proceeding may require, 
to carry into effect the decision of the Patent Trial and Appeal Board.
    (b) Upon judgment in the appeal before the Patent Trial and Appeal 
Board, if no further appeal has been taken (Sec.  1.983), the 
prosecution in the inter partes reexamination proceeding will be 
terminated and the Director will issue and publish a certificate under 
Sec.  1.997 concluding the proceeding. If an appeal to the U.S. Court 
of Appeals for the Federal Circuit has been filed, that appeal is 
considered terminated when the mandate is issued by the Court.

0
37. Section 1.981 is revised to read as follows:


Sec.  1.981  Reopening after a final decision of the Patent Trial and 
Appeal Board.

    When a decision by the Patent Trial and Appeal Board on appeal has 
become final for judicial review, prosecution of the inter partes 
reexamination proceeding will not be reopened or reconsidered by the 
primary examiner except under the provisions of Sec.  41.77 of this 
title without the written authority of the Director, and then only for 
the consideration of matters not already adjudicated, sufficient cause 
being shown.

0
38. Section 1.983 is amended by revising paragraphs (a), (c), (d), and 
(f) to read as follows:


Sec.  1.983  Appeal to the United States Court of Appeals for the 
Federal Circuit in inter partes reexamination.

    (a) The patent owner or third party requester in an inter partes 
reexamination proceeding who is a party to an appeal to the Patent 
Trial and Appeal Board and who is dissatisfied with the decision of the 
Patent Trial and Appeal Board may, subject to Sec.  41.81, appeal to 
the U.S. Court of Appeals for the Federal Circuit and may be a party to 
any appeal thereto

[[Page 46629]]

taken from a reexamination decision of the Patent Trial and Appeal 
Board.
* * * * *
    (c) If the patent owner has filed a notice of appeal to the U.S. 
Court of Appeals for the Federal Circuit, the third party requester may 
cross appeal to the U.S. Court of Appeals for the Federal Circuit if 
also dissatisfied with the decision of the Patent Trial and Appeal 
Board.
    (d) If the third party requester has filed a notice of appeal to 
the U.S. Court of Appeals for the Federal Circuit, the patent owner may 
cross appeal to the U.S. Court of Appeals for the Federal Circuit if 
also dissatisfied with the decision of the Patent Trial and Appeal 
Board.
* * * * *
    (f) Notwithstanding any provision of the rules, in any 
reexamination proceeding commenced prior to November 2, 2002, the third 
party requester is precluded from appealing and cross appealing any 
decision of the Patent Trial and Appeal Board to the U.S. Court of 
Appeals for the Federal Circuit, and the third party requester is 
precluded from participating in any appeal taken by the patent owner to 
the U.S. Court of Appeals for the Federal Circuit.

0
39. Section 1.985 is revised to read as follows:


Sec.  1.985  Notification of prior or concurrent proceedings in inter 
partes reexamination.

    (a) In any inter partes reexamination proceeding, the patent owner 
shall call the attention of the Office to any prior or concurrent 
proceedings in which the patent is or was involved, including but not 
limited to interference or trial before the Patent Trial and Appeal 
Board, reissue, reexamination, or litigation and the results of such 
proceedings.
    (b) Notwithstanding any provision of the rules, any person at any 
time may file a paper in an inter partes reexamination proceeding 
notifying the Office of a prior or concurrent proceeding in which the 
same patent is or was involved, including but not limited to 
interference or trial before the Patent Trial and Appeal Board, 
reissue, reexamination, or litigation and the results of such 
proceedings. Such paper must be limited to merely providing notice of 
the other proceeding without discussion of issues of the current inter 
partes reexamination proceeding.

0
40. Section 1.993 is revised to read as follows:


Sec.  1.993  Suspension of concurrent interference and inter partes 
reexamination proceeding.

    If a patent in the process of inter partes reexamination is or 
becomes involved in an interference or trial before the Patent Trial 
and Appeal Board, the Director may suspend the inter partes 
reexamination, interference, or trial. The Director will not consider a 
request to suspend an interference or trial unless a motion under Sec.  
41.121(a)(3) of this title to suspend the interference or trial has 
been presented to, and denied by, an administrative patent judge and 
the request is filed within ten (10) days of a decision by an 
administrative patent judge denying the motion for suspension or such 
other time as the administrative patent judge may set.

PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND 
FILE APPLICATIONS IN FOREIGN COUNTRIES

0
41. The authority citation for 37 CFR part 5 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 41, 181-188, as amended by the 
Patent Law Foreign Filing Amendments Act of 1988, Public Law 100-
418, 102 Stat. 1567; the Arms Export Control Act, as amended, 22 
U.S.C. 2751 et seq.; the Atomic Energy Act of 1954, as amended, 42 
U.S.C. 2011 et seq.; the Nuclear Non Proliferation Act of 1978, 22 
U.S.C. 3201 et seq.; and the delegations in the regulations under 
these Acts to the Director (15 CFR 370.10(j), 22 CFR 125.04, and 10 
CFR 810.7).


0
42. Section 5.3 is amended by revising paragraph (b) to read as 
follows:


Sec.  5.3  Prosecution of application under secrecy orders; withholding 
patent.

* * * * *
    (b) An interference or derivation will not be instituted involving 
a national application under secrecy order. An applicant whose 
application is under secrecy order may suggest an interference (Sec.  
41.202(a) of this title), but the Office will not act on the request 
while the application remains under a secrecy order.
* * * * *

PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK 
OFFICE

0
43. The authority citation for 37 CFR part 10 continues to read as 
follows:

    Authority:  5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 31, 
32, 41.


0
44. Section 10.1 is amended by revising paragraph (s) to read as 
follows:


Sec.  10.1  Definitions.

* * * * *
    (s) A proceeding before the Office includes an application, a 
reexamination, a protest, a public use proceeding, a patent 
interference, a trial before the Patent Trial and Appeal Board, an 
inter partes trademark proceeding, or any other proceeding which is 
pending before the Office.
* * * * *

PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT 
AND TRADEMARK OFFICE

0
45. The authority citation for 37 CFR part 11 continues to read as 
follows:

    Authority:  5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32, 
41.

0
46. Section 11.5 is amended by revising the introductory text of 
paragraph (b)(1) to read as follows:


Sec.  11.5  Register of attorneys and agents in patent matters; 
practice before the office.

* * * * *
    (b) * * *
    (1) Practice before the Office in patent matters. Practice before 
the Office in patent matters includes, but is not limited to, preparing 
and prosecuting any patent application, consulting with or giving 
advice to a client in contemplation of filing a patent application or 
other document with the Office, drafting the specification or claims of 
a patent application; drafting an amendment or reply to a communication 
from the Office that may require written argument to establish the 
patentability of a claimed invention; drafting a reply to a 
communication from the Office regarding a patent application; and 
drafting a communication for a public use, interference, reexamination 
proceeding, petition, appeal to or any other proceeding before the 
Patent Trial and Appeal Board, or other proceeding. Registration to 
practice before the Office in patent cases sanctions the performance of 
those services which are reasonably necessary and incident to the 
preparation and prosecution of patent applications or other proceeding 
before the Office involving a patent application or patent in which the 
practitioner is authorized to participate. The services include:
* * * * *

0
47. Section 11.6 is amended by revising paragraph (d) to read as 
follows:


Sec.  11.6  Registration of attorneys and agents.

* * * * *
    (d) Patent Trial and Appeal Board matters. For action by a person 
who is

[[Page 46630]]

not registered in a proceeding before the Patent Trial and Appeal 
Board, see Sec.  41.5(a) or Sec.  42.10(c) of this title.

0
48. Section 11.10 is amended by revising paragraph (b)(3)(iii) to read 
as follows:


Sec.  11.10  Restrictions on practice in patent matters.

* * * * *
    (b) * * *
    (3) * * *
    (iii) Particular patent or patent application means any patent or 
patent application, including, but not limited to, a provisional, 
substitute, international, continuation, divisional, continuation-in-
part, or reissue patent application, as well as any protest, 
reexamination, petition, appeal, interference, or trial proceeding 
based on the patent or patent application.
* * * * *

0
49. Section 11.58 is amended by revising paragraph (b)(1)(i) to read as 
follows:


Sec.  11.58  Duties of disciplined or resigned practitioner, or 
practitioner on disability inactive status.

* * * * *
    (b) * * *
    (1) * * *
    (i) File a notice of withdrawal as of the effective date of the 
exclusion, suspension, acceptance of resignation, or transfer to 
disability inactive status in each pending patent and trademark 
application, each pending reexamination and interference or trial 
proceeding, and every other matter pending in the Office, together with 
a copy of the notices sent pursuant to paragraphs (b) and (c) of this 
section;
* * * * *

PART 41--PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

0
50. The authority citation for 37 CFR part 41 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 132, 
133, 134, 135, 306, and 315.


0
51. The heading of part 41 is revised to read as set forth above.

0
52. Section 41.1 is amended by revising paragraph (a) to read as 
follows:


Sec.  41.1  Policy.

    (a) Scope. Part 41 governs appeals and interferences before the 
Patent Trial and Appeal Board. Sections 1.1 to 1.36 and 1.181 to 1.183 
of this title also apply to practice before the Board, as do other 
sections of part 1 of this title that are incorporated by reference 
into part 41.
* * * * *

0
53. Section 41.2 is amended by revising the introductory text of the 
definition of Board to read as follows:


Sec.  41.2  Definitions.

* * * * *
    Board means the Patent Trial and Appeal Board and includes:
* * * * *

0
54. Section 41.10 is revised to read as follows:


Sec.  41.10  Correspondence addresses.

    Except as the Board may otherwise direct,
    (a) Appeals. Correspondence in an application or a patent involved 
in an appeal (subparts B and C of this part) during the period 
beginning when an appeal docketing notice is issued and ending when a 
decision has been rendered by the Board, as well as any request for 
rehearing of a decision by the Board, shall be mailed to: Patent Trial 
and Appeal Board, United States Patent and Trademark Office, PO Box 
1450, Alexandria, Virginia 22313-1450. Notices of appeal, appeal 
briefs, reply briefs, requests for oral hearing, as well as all other 
correspondence in an application or a patent involved in an appeal to 
the Board for which an address is not otherwise specified, should be 
addressed as set out in Sec.  1.1(a)(1)(i) of this title.
    (b) Interferences. Mailed correspondence in interference (subpart D 
of this part) shall be sent to Mail Stop INTERFERENCE, Patent Trial and 
Appeal Board, United States Patent and Trademark Office, PO Box 1450, 
Alexandria, Virginia 22313-1450.
    (c) Trial Proceedings. Correspondence in trial proceedings (part 42 
of this title) are governed by Sec.  42.6(b) of this title.

0
55. Section 41.30 is amended by revising the definition of Proceeding 
to read as follows:


Sec.  41.30  Definitions.

* * * * *
    Proceeding means either a national application for a patent, an 
application for reissue of a patent, an ex parte reexamination 
proceeding, or a trial before the Patent Trial and Appeal Board. Appeal 
to the Board in an inter partes reexamination proceeding is controlled 
by subpart C of this part.
* * * * *

0
56. Section 41.37 is amended by revising paragraphs (c)(1)(ii) and 
(c)(1)(iii) to read as follows:


Sec.  41.37  Appeal brief.

* * * * *
    (c) * * *
    (1) * * *
    (ii) Related appeals, interferences, and trials. A statement 
identifying by application, patent, appeal, interference, or trial 
number all other prior and pending appeals, interferences, trials 
before the Board, or judicial proceedings (collectively, ``related 
cases'') which satisfy all of the following conditions: involve an 
application or patent owned by the appellant or assignee, are known to 
appellant, the appellant's legal representative, or assignee, and may 
be related to, directly affect or be directly affected by or have a 
bearing on the Board's decision in the pending appeal, except that such 
statement is not required if there are no such related cases. If an 
appeal brief does not contain a statement of related cases, the Office 
may assume that there are no such related cases.
    (iii) Summary of claimed subject matter. A concise explanation of 
the subject matter defined in each of the rejected independent claims, 
which shall refer to the specification in the Record by page and line 
number or by paragraph number, and to the drawing, if any, by reference 
characters. For each rejected independent claim, and for each dependent 
claim argued separately under the provisions of paragraph (c)(1)(iv) of 
this section, if the claim contains a means plus function or step plus 
function recitation as permitted by 35 U.S.C. 112(f), then the concise 
explanation must identify the structure, material, or acts described in 
the specification in the Record as corresponding to each claimed 
function with reference to the specification in the Record by page and 
line number or by paragraph number, and to the drawing, if any, by 
reference characters. Reference to the patent application publication 
does not satisfy the requirements of this paragraph.
* * * * *

0
57. Section 41.67 is amended by revising paragraphs (c)(1)(ii) and 
(c)(1)(v) to read as follows:


Sec.  41.67  Appellant's brief.

* * * * *
    (c)(1) * * *
    (ii) Related appeals, interferences, and trials. A statement 
identifying by application, patent, appeal, interference, or trial 
number all other prior and pending appeals, interferences, trials 
before the Board, or judicial proceedings known to appellant, the 
appellant's legal representative, or assignee which may be related to, 
directly affect or be directly affected by or have a bearing on the 
Board's decision in the pending appeal. Copies of any decisions 
rendered by a court or the Board in any

[[Page 46631]]

proceeding identified under this paragraph must be included in an 
appendix as required by paragraph (c)(1)(xi) of this section.
* * * * *
    (v) Summary of claimed subject matter. A concise explanation of the 
subject matter defined in each of the independent claims involved in 
the appeal, which shall refer to the specification by column and line 
number, and to the drawing(s), if any, by reference characters. For 
each independent claim involved in the appeal and for each dependent 
claim argued separately under the provisions of paragraph (c)(1)(vii) 
of this section, every means plus function and step plus function as 
permitted by 35 U.S.C. 112(f), must be identified and the structure, 
material, or acts described in the specification as corresponding to 
each claimed function must be set forth with reference to the 
specification by page and line number, and to the drawing, if any, by 
reference characters.
* * * * *

0
58. Section 41.68 is amended by revising paragraph (b)(1)(ii) to read 
as follows:


Sec.  41.68  Respondent's brief.

* * * * *
    (b)(1) * * *
    (ii) Related Appeals, Interferences, and trials. A statement 
identifying by application, patent, appeal, interference, or trial 
number all other prior and pending appeals, interferences or judicial 
proceedings known to respondent, the respondent's legal representative, 
or assignee which may be related to, directly affect or be directly 
affected by or have a bearing on the Board's decision in the pending 
appeal. Copies of any decisions rendered by a court or the Board in any 
proceeding identified under this paragraph must be included in an 
appendix as required by paragraph (b)(1)(ix) of this section.
* * * * *

0
59. Section 41.77 is amended by revising paragraph (a) to read as 
follows:


Sec.  41.77  Decisions and other actions by the Board.

    (a) The Patent Trial and Appeal Board, in its decision, may affirm 
or reverse each decision of the examiner on all issues raised on each 
appealed claim, or remand the reexamination proceeding to the examiner 
for further consideration. The reversal of the examiner's determination 
not to make a rejection proposed by the third party requester 
constitutes a decision adverse to the patentability of the claims which 
are subject to that proposed rejection which will be set forth in the 
decision of the Patent Trial and Appeal Board as a new ground of 
rejection under paragraph (b) of this section. The affirmance of the 
rejection of a claim on any of the grounds specified constitutes a 
general affirmance of the decision of the examiner on that claim, 
except as to any ground specifically reversed.
* * * * *

0
60. Section 41.110 is amended by revising paragraph (b)(2) to read as 
follows:


Sec.  41.110  Filing claim information.

* * * * *
    (b) * * *
    (2) For each involved claim that contains a means-plus-function or 
step-plus-function limitation in the form permitted under 35 U.S.C. 
112(f), file an annotated copy of the claim indicating in bold face 
between braces ({ {time} ) the specific portions of the specification 
that describe the structure, material, or acts corresponding to each 
claimed function.
* * * * *

0
61. Section 41.201 is amended by revising paragraph (2)(ii) of the 
definition of Threshold issue to read as follows:


Sec.  41.201  Definitions.

* * * * *
    Threshold issue * * *
    (2) * * *
    (ii) Unpatentability for lack of written description under 35 
U.S.C. 112(a) of an involved application claim where the applicant 
suggested, or could have suggested, an interference under Sec.  
41.202(a).

    Dated: July 25, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-18530 Filed 8-3-12; 8:45 am]
BILLING CODE 3510-16-P