[Federal Register Volume 77, Number 168 (Wednesday, August 29, 2012)]
[Notices]
[Pages 52315-52316]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-21224]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No. PTO-P-2012-0036]


September 15, 2012 Deadline to File Requests for Inter Partes 
Reexamination Proceedings and Modification of Notice of Failure to 
Comply Form

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: Pursuant to section 6(c)(3) of the Leahy-Smith America Invents 
Act (AIA), the authority to file inter partes reexamination requests 
terminates effective September 16, 2012. Accordingly, any original or 
corrected/replacement request for an inter partes reexamination 
submitted on or after September 16, 2012, will not be accorded a filing 
date, and any such request will not be granted. This notice provides 
guidance to inter partes reexamination requesters with respect to 
timely filing requests prior to September 16, 2012, i.e., by the 
September 15,

[[Page 52316]]

2012, last day for filing of an inter partes reexamination request.

FOR FURTHER INFORMATION CONTACT: Kenneth M. Schor, Senior Legal Advisor 
((571) 272-7710), or Joseph F. Weiss, Jr., Legal Advisor ((571) 272-
7759), Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy.

SUPPLEMENTARY INFORMATION: 

A. Filing Requests as Early as Possible

    Requesters are advised to file any inter partes reexamination 
requests which they intend to file as soon as possible, in order to 
provide the United States Patent and Trademark Office (Office) with 
maximum time to: (i) Receive, process, and review such requests for 
their compliance with all the filing date requirements for inter partes 
reexamination; and (ii) notify the requester of any deficiencies in the 
request via a Notice of Failure to Comply with Inter Partes 
Reexamination Request Filing Requirements (Notice of Failure to Comply) 
while providing sufficient time for requester to submit a corrected/
replacement request prior to September 16, 2012.
    In this regard, it is to be noted that any inter partes 
reexamination request must meet all the filing date requirements for 
inter partes reexamination, i.e., it must be filing-date compliant, 
prior to September 16, 2012. If a timely filed inter partes 
reexamination request fails to meet any filing date requirement for 
inter partes reexamination, then the requester will be so notified and, 
if time allows, given an opportunity to complete the request by filing 
a corrected/replacement request by September 15, 2012. If the request 
papers are then made filing-date compliant by a response which is 
properly filed with the Office by September 15, 2012, the filing date 
of the response will be assigned to the request (this is also true for 
any sua sponte filed corrected/replacement request). If the corrected/
replacement request is not received by the Office as of September 15, 
2012, the corrected/replacement request will not be accorded a filing 
date, even though the original request was timely received by the 
Office. This is so, regardless of when requester receives notification 
that the original request is not filing-date compliant.
    The Office will make every effort to promptly and efficiently 
process and review all requests for inter partes reexamination. It is 
to be emphasized, however, that the Office cannot guarantee that a 
Notice of Failure to Comply with Inter Partes Reexamination Request 
Filing Requirements will be issued by the Office prior to September 16, 
2012, or even if it is so issued, that sufficient time will remain for 
the mailing to reach a requester and allow for response prior to 
September 16, 2012. While, traditionally, the Office has been setting a 
thirty-day period to respond to the Notice of Failure to Comply, this 
will no longer be possible for any Notice of Failure to Comply mailed 
after August 16, 2012, because the statute which provides for the 
filing of a request for inter partes reexamination will no longer be in 
effect as of September 16, 2012.
    In view of the above, potential inter partes reexamination 
requesters are cautioned to file any such requests as soon as possible, 
in order to provide the Office with as much time as possible to receive 
the requests, process and review them, and notify requester with 
sufficient time to correct the request, if necessary, prior to 
September 16, 2012.

B. The Last Day to File an Inter Partes Reexamination Request

    As mentioned above, section 6(c)(3) of the AIA statutorily 
terminates the authority for inter partes reexamination filings 
effective September 16, 2012. Since, inter partes reexamination filing 
is not available on or after September 16, 2012, the Office cannot 
grant a filing date to any inter partes reexamination request filed 
after September 15, 2012. In addition, as the termination of authority 
for inter partes reexamination filings in section 6(c)(3) of the AIA is 
not a time period for taking action under 35 U.S.C. 21(b), the 
provisions of 35 U.S.C. 21(b) do not authorize the Office to accept or 
accord a filing date to an original or corrected/replacement request 
for inter partes reexamination which is filed on or after September 16, 
2012, even though September 15, 2012, the last day to file a request, 
is a Saturday.
    An inter partes reexamination request can be submitted on Saturday, 
September 15, 2012, but only two methods are available to do so. The 
request may be submitted that Saturday: (1) Via the Office's Web-based 
electronic filing system, EFS-Web (see MPEP 502.05); or (2) by using 
the 37 CFR 1.10 ``Express Mail'' mailing procedure (see MPEP 513). No 
other method of submission is available for a Saturday. Thus, a request 
cannot be submitted on September 15, 2012, by hand, by courier, by 
facsimile transmission, or by mail other than Express Mail. If an 
attempt to do so is made, the request will not be received by the 
Office (on that Saturday), and a filing date will not be accorded to 
the request.
    If an original or corrected/replacement inter partes reexamination 
request is mailed (by mail other than Express Mail), the requester 
should take into consideration mailing time and the fact that 37 CFR 
1.8 certificate of mailing and transmission procedures are not 
available for filing an original or corrected/replacement request for 
reexamination (see MPEP 2624). Thus, requester should take care to mail 
the request sufficiently early for the Office to receive it by Friday, 
September 14, 2012 (the Office does not receive mail on Saturday, the 
15th--see 37 CFR 1.6(a)(1)).

C. Modification of Notice of Failure to Comply Form

    In view of the above:
    1. Any Notice of Failure to Comply mailed prior to September 15, 
2012, will reference September 15, 2012, as the due date for any 
corrected/replacement inter partes reexamination request.
    2. Any Notice of Failure to Comply mailed on or after September 17, 
2012, will not set a period for response, but will rather inform 
requester that no filing date can be granted for the request, because 
inter partes reexamination filing has been statutorily terminated.

    Dated: August 23, 2012.
Teresa Stanek Rea,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2012-21224 Filed 8-28-12; 8:45 am]
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