In view of the above, potentialinter partesreexamination requesters are cautioned to file any such requests as soon as possible, in order to provide the Office with as much time as possible to receive the requests, process and review them, and notify requester with sufficient time to correct the request, if necessary, prior to September 16, 2012.
B. The Last Day to File an Inter Partes Reexamination Request
As mentioned above, section 6(c)(3) of the AIA statutorily terminates the authority forinter partesreexamination filings effective September 16, 2012. Since,inter partesreexamination filing is not available on or after September 16, 2012, the Office cannot grant a filing date to anyinter partesreexamination request filed after September 15, 2012. In addition, as the termination of authority forinter partesreexamination filings in section 6(c)(3) of the AIA is not a time period for taking action under 35 U.S.C. 21(b), the provisions of 35 U.S.C. 21(b) do not authorize the Office to accept or accord a filing date to an original or corrected/replacement request forinter partesreexamination which is filed on or after September 16, 2012, even though September 15, 2012, the last day to file a request, is a Saturday.
Aninter partesreexamination request can be submitted on Saturday, September 15, 2012, but only two methods are available to do so. The request may be submitted that Saturday: (1) Via the Office's Web-based electronic filing system, EFS-Web (see MPEP 502.05); or (2) by using the 37 CFR 1.10 “Express Mail” mailing procedure (see MPEP 513). No other method of submission is available for a Saturday. Thus, a request cannot be submitted on September 15, 2012, by hand, by courier, by facsimile transmission, or by mail other than Express Mail. If an attempt to do so is made, the request will not be received by the Office (on that Saturday), and a filing date will not be accorded to the request.
If an original or corrected/replacementinter partesreexamination request is mailed (by mail other than Express Mail), the requester should take into consideration mailing time and the fact that 37 CFR 1.8 certificate of mailing and transmission procedures are not available for filing an original or corrected/replacement request for reexamination (see MPEP 2624). Thus, requester should take care to mail the request sufficiently early for the Office to receive it by Friday, September 14, 2012 (the Office does not receive mail on Saturday, the 15th—see 37 CFR 1.6(a)(1)).
C. Modification of Notice of Failure to Comply Form
In view of the above:
1. Any Notice of Failure to Comply mailed prior to September 15, 2012, will reference September 15, 2012, as the due date for any corrected/replacementinter partesreexamination request.
2. Any Notice of Failure to Comply mailed on or after September 17, 2012, will not set a period for response, but will rather inform requester that no filing date can be granted for the request, becauseinter partesreexamination filing has been statutorily terminated.
Dated: August 23, 2012.
Teresa Stanek Rea,
Deputy Under Secretary of Commerce forIntellectual Property and Deputy Director of theUnited States Patent and Trademark Office.