PTO Rule Change: Reexamination Filing Date

On February 23, 2006, the USPTO published a rule change titled “Clarification of Filing Date Requirement for Ex Parte and Inter Partes Reexamination Proceedings.”  The rules are being revised to specifically require that requests for reexams must “meet all the applicable statutory requirements before a filing date is accorded to the request.”  The rule change will be effective March 27, 2006, although comments will be accepted until April 24, 2006.

According to 37 C.F.R. 1.510(b), a request for reexamination must include the following parts:

(1) A statement pointing out each substantial new question of patentability based on prior patents and printed publications.

(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. If appropriate the party requesting reexamination may also point out how claims distinguish over cited prior art.

(3) A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication.

(4) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.

(5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office.

Comments

[Bob Lobo]

There is a case that's been going on since 2001 in Maryland. Star Scientific vs RJ Reynolds MJG 01-cv-1504 where RJR has filed a motion for summary judgement regarding which filing date Star is entitled to. The provisional date was 9/15/1998, and the non-provisional date was 9/15/1999. (Of course RJR filed their own patent on 4/26/1999), RJR says that Star is not entitled to the earlier filing date.

Judge Marvin Garbis has had this motion (Pacer Doc 669) on his desk for over a year (since 1/20/2005) and has yet to render his opinion.

Is it possible that Gatbis was waiting for this PTO rule change before ruling?

[anonymous]

This rule change only applies to the filing date accorded to requests for Reexamination. Based on your description of the case, this rule change has absolutely no bearing on which date Star will be accorded.