Revisions and Technical Corrections Affecting Requirements for Ex Parte and Inter Partes Reexamination

The United States Patent and Trademark Office (Office) is revising the rules of practice relating to ex parte and inter partes reexamination. The Office is designating the correspondence address for the patent as the correct address for all communications for patent owners in an ex parte reexamination or an inter partes reexamination, and simplifying the filing of reexamination papers by providing for the use of a single "mail stop" address for the filing of substantially all ex parte reexamination papers (such is already the case for inter partes reexamination papers). The Office is revising the rules to prohibit supplemental patent owner responses to an Office action in an inter partes reexamination proceeding without a showing of sufficient cause. Finally, the Office is making miscellaneous clarifying changes as to terminology and applicability of the reexamination rules. The Office is not implementing its proposal (that was set forth in the proposed rule making) to newly provide for a patent owner reply to a request for reexamination, prior to the Office's decision on the request.