37 CFR 1.510 Request for ex parte reexamination.
- (b) Any request for reexamination must include the following parts:
- (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.
37 CFR 1.550 Conduct of ex parte reexamination proceedings.
- (f) The reexamination requester will be sent copies of Office actions issued during the ex parte reexamination proceeding. After filing of a request for ex parte 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 in the reexamination proceeding in the manner provided by § 1.248. The document must reflect service or the document may be refused consideration by the Office.
Any paper filed with the Office in a third party requested reexamination, 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.
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 name and address of the party served, and the method of service be set forth in the certificate 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.
Any paper for which proof of service is required, which is filed without proof of service, may be denied consideration. Where no proof of service is included, the Central Reexamination Unit should immediately contact the party making the submission to see whether the indication of proof of service was inadvertently omitted from the submission but there was actual service.
If service was in fact made, the party making the submission should be advised to submit a supplemental paper indicating the manner and date of service. The Central Reexamination Unit should enter the submission for consideration, and annotate the submission with:
“Service confirmed by [name of person] on [date]”
If no service was made, or the party making the submission cannot be contacted where an effort to do so was made, the submission is placed in the reexamination file and normally is not considered. Where the submission is not considered because of a service defect, the submission is added to the IFW file history as an unentered paper with a “N/E” notation, along with a brief annotation as to why the paper is not entered. The submission itself shall be annotated with “no service,” which also can be crossed through if the appropriate service is later made.
If the party making the submission cannot be contacted, a Notice of Defective Paper (PTOL-475), giving one month or thirty days, whichever is longer, to complete the paper, with a supplemental paper indicating the manner and date of service, will generally be mailed to the party.
If it is known that service of a submission was not made, notice of the requirement for service of copy may be given (to the party that made the submission), if appropriate, and a one month or thirty days, whichever is longer, time period is set. Form paragraph 22.15 may be used to give notice.
¶ 22.15 Lack of Service – 37 CFR 1.550(f)
The submission filed on  is defective because it appears that the submission was not served on the . After the filing of a request for 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 or more third party requester proceedings are merged) in the reexamination proceeding in the manner provided in 37 CFR 1.248. See 37 CFR 1.550(f).
It is required that service of the submission be made, and a certificate of service be provided to the Office within a shortened statutory period of ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If service of the submission is not timely made, the submission may be denied consideration.
- 1. This paragraph may be used where a submission to the Office was not served as required in a third party requester reexamination proceeding.
- 2. In bracket 2, insert –patent owner– or –third party requester–, whichever is appropriate.
The cover sheet to be used for mailing the notice will be form PTOL-473.
If the submission that lacks proof of service is a response to a final rejection, form PTOL-475 or form paragraph 22.15 should not be used. Rather, an advisory Office action (form PTOL-467 or PTOL-467A) should be issued with an explanation that the response lacks proof of service. The time period set in the final rejection continues to run and is extended by two months if the response is the first response after the final rejection in accordance with the guidelines set forth in MPEP § 2265. See also MPEP § 2272.
The failure of a party to serve the submission in response to the notice will have the following consequences:
- (A) For a patent owner statement or a third party reply, the submission may be refused consideration by the Office. Where consideration is refused, the submission will not be addressed in the reexamination proceeding other than to inform parties of the lack of consideration thereof;
- (B) For a patent owner response to an Office action, the response may be refused consideration by the Office. Where consideration of a response is refused, the prosecution of the proceeding will be terminated in accordance with 37 CFR 1.550(d), unless the patent owner has otherwise completely responded to the Office action.
See MPEP § 2220 as to the initial third party request.
See MPEP § 2249 as to the patent owner statement.
See MPEP § 2251 as to third party reply.
See MPEP § 2266 as to patent owner responses to an Office action.