USPTO welcomes public comment on patent re-examination
The US Patent and Trademark Office (USPTO) aims to streamline the procedures governing ex parte and inter partes patent re-examination proceedings with a proposal that it has made available for public comment.
The proposal was announced on April 25 and additional details were made available through the day’s edition of the Federal Register.
The USPTO wants to reduce the time it takes to resolve disputes over validity issues between patent owners and the public.
A proposed change to both ex parte and inter partes patent re-examination proceedings would see a patent re-examination requester’s declaration and other evidence limited to the request itself.
The Federal Register stated: “This...is intended to encourage compact prosecution by requiring the Requester to submit all necessary evidence in the initial request and thereby reduce the need for later submissions.
It added: “In inter partes re-examination, any further submission of evidence (including declarations, affidavits, and test data) by the Third Party Requester in the proceeding will be limited to rebutting a point made in an examiner’s Office action or in a Patent Owner’s response.”
“In ex parte re-examination, the further submission of evidence by the Third Party Requester will be limited to rebutting a point made in the Patent Owner’s statement under 35 U.S.C. 304, if any such statement is filed. In all cases, when submitting new evidence, the Third Party Requester must identify the specific point to be rebutted and explain how the new evidence rebuts it.”
In a statement, USPTO Director David Kappos said: “We recognise that patent re-examination is one of the most important functions of the USPTO, because these patents often have significant commercial value and are usually involved in concurrent litigation. By resolving these disputes more quickly, we can make patent re-examination a better mechanism for reviewing patent validity.”
The public meeting will be held at USPTO headquarters on June 1. Written comments must be submitted by May 11.
