Reexamination Filing Date Clarification

As of August 4, 2006, for any U.S. request for patent reexamination (ex parte or inter partes) filed on or after March 27, 2006, the USPTO is clarifying that a request for reexamination must meet all the applicable statutory and regulatory requirements before a filing date will be accorded.

Former 37 C.F.R. § 1.510(d) stated that the filing date of a request for ex parte reexamination is ‘‘(1) The date on which the request including the entire fee for requesting reexamination is received in the Patent and Trademark Office; or (2) The date on which the last portion of the fee for requesting reexamination is received.’’ In like manner, former § 1.919(a) stated that ‘‘[t]he filing date of a request for inter partes reexamination is the date on which the request satisfies the fee requirement of § 1.915(a).’’

According to the discussion accompanying the rule change,

It may have appeared that compliance with the provisions of § 1.510(b) or
§ 1.915(b) was not required for obtaining a filing date in reexamination.
However, 35 U.S.C. 302 (for ex parte reexamination) explicitly requires that
‘‘[t]he request must set forth the pertinency and manner of applying cited prior
art to every claim for which reexamination is requested.’’ Likewise, 35 U.S.C.
311(b) (for inter partes reexamination) explicitly requires that the request
must ‘‘include the identity of the real party in interest’’ and ‘‘set forth the
pertinency and manner of applying cited prior art to every claim for which
reexamination is requested.’’

Reexamination requesters did not always comply with these statutory
requirements when submitting requests for reexamination. Furthermore, the
information missing due to a lack of compliance with § 1.510(b) or with §
1.915(b) was often relevant to the decision on whether to grant the request for
reexamination. This presented a difficulty for the Office in view of the
statutory requirements of 35 U.S.C. 303 (for ex parte reexamination) and 35
U.S.C. 312 (for inter partes reexamination) that the decision on the request
must be issued within three months of the filing date of the request for
reexamination, because the process of notifying the requester of the
non-compliance and obtaining the missing information may very well extend beyond
the three-month statutory deadline, or the information may be provided so close
to the deadline that there is not sufficient time to properly evaluate it.

To address this problem, §§ 1.510(c) and (d) were revised via interim rule to clearly require compliance with all the requirements of §§ 1.510(a) and (b) in order to obtain an ex parte reexamination filing date (and a decision on the request for reexamination). Likewise, § 1.919(a) was revised to clearly require compliance with all the requirements of § 1.915 in order to obtain an inter partes reexamination filing date. This notice adopts the substance of the interim rule as final.