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Proposed Change A.8 Should Not Be Adopted Unless Modified A Petition for Jurisdiction to be transferred to the Office of Patent Legal Administration should be permitted. Such petitions should continue to be a part of the practice at the USPTO to ensure that “special dispatch” does not come at the cost of procedural due process for the parties in a reexamination proceeding.
Proposed Change A.8 Should Not Be Adopted Unless Modified • A petition to transfer jurisdiction to the Offices of Patent Legal Administration have been permitted in the past, and such petitions should at least be reviewed by the OPLA. • USPTO must take steps to ensure that petitions filed in reexamination proceedings are timely decided.
Proposed Change A.8 Should Not Be Adopted Unless Modified • A petition to transfer jurisdiction of a reexamination proceeding to the Office of Patent Legal Administration (“OPLA”) is a proper petition • It sometimes happens that a reexamination proceeding is bifurcated as though substance and procedure were both not necessary • PTO must maintain a unified approach to the reexamination proceedings • Petitions that affect standing of the proceeding before the CRU must be acted upon PRIOR to the CRU acting on the merits of the proceedings
Proposed Change A.8 Should Not Be Adopted Unless Modified • Currently no definitive policy with respect to petitions to transfer jurisdiction to the OPLA • A petition to have a procedural issue considered by the OPLA is not precluded by 35 U.S.C. §§ 304 and 305, even when the statement/reply period in the ex parte reexamination has ended. Often the petition requires a decision by the OPLA. • 37 CFR § 1.550(g) properly limits only the “active participation” of Requester as to substantive patentability issues. In general, failure of USPTO to follow its own procedures and/or MPEP guidance raises due process issues, e.g. the failure to permit a requester to file a petition asking USPTO to follow its own procedures and/or MPEP guidance.
Proposed Change A.8 Should Not Be Adopted Unless Modified • Example A Notice of Intent to Issue Reexamination Certificate (NIRC) was mailed by CRU, based on changes made by an amendment contained in response to an Office action. However, the amendment had not been timely filed. CRU retained jurisdiction of the reexamination proceeding, although a petition to OPLA had been filed by Requester that the NIRC be vacated because the reexamination was technically terminated due to the late filing of the amendment.
Proposed Change A.8 Proposed solution • Create dedicated position(s) at OPLA specifically for reexamination that include the authority to decide/sign petitions filed under 37 CFR 1.182 and 1.183 • Petitions handled uniformly • Petitions decided in a timely fashion