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` Top of
`Notices (231) December 29, 2015
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`US PATENT AND TRADEMARK
`OFFICE
`
`Print This Notice 1421
`CNOG 1263
`
`America Invents Act, Patent Law
`Treaty
`
`Referenced Items (226, 227, 228, 229, 230, 231, 232, 233,
`234)
`
`(231) 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.
`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:
` 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
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`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.
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`US PATENT AND TRADEMARK
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`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
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`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
`§§ 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
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`1421 CNOG 1265
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`§§ 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
`§§ 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 §§ 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 § 42.7.
` Changes to ex parte reexamination procedure:
` The undesignated center heading before § 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 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),
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`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 § 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 § 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
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`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 § 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
`§ 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 § 1.501(a)(1) and any
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`written statement and accompanying information submitted under
`§ 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
`§ 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 § 1.501(a)(2), along with any
`prior art filed under § 1.501(a)(1).
` Section 1.501(c): Section 1.501(c) restates the last sentence of
`prior § 1.501(a) directed to the timing for a submission under
`§§ 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 § 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 § 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 § 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 § 1.248(b) is prima
`facie evidence of compliance with § 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 § 1.248(b).
` Section 1.501(f): The provisions of proposed § 1.501(f) have
`been incorporated with specificity in §§ 1.515(a) and 1.552(d)
`rather than adopted as a separate paragraph of § 1.501. The
`proposed codification in § 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 § 1.515(a)
`and § 1.552(d).
` Section 1.510: This final rule revises § 1.510(a) and (b)(2),
`and adds § 1.510(b)(6) to implement provisions of the AIA.
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` 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 § 1.501(a)(2), which is relied upon
`in the detailed explanation, explain how that statement is being used to
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`determine the 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 § 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 § 1.510(b)(6),
`coupled with a party's § 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 § 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 § 1.510 on
`behalf of himself cannot remain anonymous as he is required to sign the
`document that includes the § 1.510(b)(6) certification.
` Section 1.515: Section 1.515 is revised to add: "A statement and
`any accompanying information submitted pursuant to § 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 § 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 § 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
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`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 § 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
`§ 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, § 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
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`patent owner took 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 § 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
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`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 § 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 § 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
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`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 § 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 § 1.501 is made
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`by a registered practitioner, the real party in interest need not be
`identified. Thus, service and proof of service in accordance with
`§ 1.248 can be achieved while preserving the anonymity of the real
`party in interest.
` Comment 7: One comment suggested that proposed § 1.501(e) be
`clarified to indicate that service is only required when an entity
`other than the patent owner files a submission under § 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 § 42.105(b), have the option of contacting the Office to
`discuss alternative modes of service.
` Response: The Office's proposal in § 1.501(e) to require proof
`of a bona fide attempt of service has not been implemented. As
`promulgated in this final rule, § 1.501(e) provides that a person
`other than the patent owner making a submission pursuant to § 1.501(a)
`must include a certification that a copy of a submission under
`§ 1.501 has been served in its entirety upon the patent owne