2666.06 Service of Papers [R-08.2012]
37 CFR 1.915 Content of request for inter partes reexamination.
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- (b) A request for inter partes reexamination must include the following parts:
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- (6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address 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 of the request must be supplied to the Office.
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37 CFR 1.903 Service of papers on parties in inter partes reexamination.
The patent owner and the third party requester will be sent copies of Office actions issued during the inter partes reexamination proceeding. After filing of a request for inter partes reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on every other party in the reexamination proceeding in the manner provided in § 1.248. Any document must reflect service or the document may be refused consideration by the Office. The failure of the patent owner or the third party requester to serve documents may result in their being refused consideration.
Any paper filed with the Office, i.e., any submission made, by either the patent owner or the third party requester must be served on every other party in the reexamination proceeding including any other third party requester that is part of the proceeding due to merger of reexamination proceedings.
As proof of service, the party submitting the paper to the Office must attach a certificate of service to the paper. It is required that the certificate of service set forth the name and address of the party served and the method of service. Further, a copy of the certificate of service must be attached with the copy of the paper that is served on the other party.
Lack of service poses a problem, since, by statute (35 U.S.C. 314(b)(2)), a third party requester must file written comments within a period of 30 days from the date of service of the patent owner’s response, in order to be timely. In any instance where proof of service is not attached to a paper, a Notice of Defective Paper (PTOL-2069) will be mailed to the party, providing the party with a time period of one month or 30 days, whichever is longer, to complete the paper via a supplemental paper indicating the manner and date of service.
If it is known that service of a submission was not made, form paragraph 26.68 should be used to give notice to the party that made the submission of the requirement for service under 37 CFR 1.903.
¶ 26.68 Lack of Service in inter partes examination-37 CFR 1.903
The submission filed [1] is defective because it appears that the submission was not served on [2]. After the filing of a request for inter partes reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party (or parties where two third party requester proceedings are merged) in the inter partes reexamination proceeding in the manner provided in 37 CFR 1.248. See 37 CFR 1.903.
It is required that service of the submission be made, and a certificate of service be provided to the Office, within ONE MONTH from the date of this letter or within the time remaining in the response period of the last Office action (if applicable), whichever is longer.
Examiner Note:
- 1. This paragraph may be used where a submission to the Office was not served as required in an inter partes reexamination proceeding.
- 2. In bracket 2, insert “patent owner” or “third party requester,” whichever is appropriate.
PTOL-2071 should be used as the cover sheet for mailing the notice.
See MPEP § 2620 for service of the initial request on the patent owner.
As pointed out above, the service provision of the statute poses a problem, since, 35 U.S.C. 314(b)(2) mandates that, in order to be timely, a third party requester must file any written comments to the patent owner’s response (to an Office action on the merits) within a period of 30 days from the date of service of such patent owner’s response. Accordingly, if a patent owner’s response to an Office action on the merits that is served on a third party requester is received by the third party requester more than 5 business days after the date of service set forth on the certificate of service, the third party requester may submit a verified statement, specifying the date of actual receipt, as an attachment to the third party requester’s comments. The date of service will then be deemed by the Office to be the date of actual receipt by the third party requester of the patent owner’s response.