EXXON CHEMICAL COMPANY EXXON CHEMICAL Law Technology Richard D. Jordan ATTORNEY September 22, 1995 Via Facsimile Assistant Commissioner for Patents Box DAC Washington, D.C. 20231 Attn: Gerald A. Dost Senior Legal Advisor Special Program Law Office Crystal Park 1, Ste. 520 Re: Rules of Practice in Patent Cases Reexamination Proceedings Written Comments Dear Mr. Dost: Enclosed is a copy of my comments which were presented at the PTO's September 20 hearing on proposed rules for reexamination. These comments were presented on behalf of Exxon Chemical Company whose headquarters office is located at 13501 Katy Freeway, Houston, Texas 77079-1398. I am presenting additional comments below. These comments are also presented on behalf of Exxon Chemical Company. 500 Bayway Drive, Baytown, Texas 77520 P.O. Box 2149, Baytown, Texas 77522-2149 Tel: (713) 425-5398 Fax:1(713) 425-2911 A Division of Exxon Corpootion Mr. Gerald A. Dost September 22, 1995 Page 2 ADDITIONAL COMMENTS Following testimony of many of the speakers, myself included, Assistant Commissioner Goffney, Solicitor Linck, and Deputy Assistant Commissioner Kunin asked several questions which were primarily focused on examiner interviews and fees. It was apparent from the questions that were asked that that the PTO is highly concerned about the proposed rules on these topics. Due to this perceived concern, I am presenting these additional written comments to clarify my suggestions presented at oral hearing. 1. Examiner Interviews As we stated at oral hearing, Exxon Chemical Company is in favor of the PTO Codifying the proposed rules to allow a third party requester the opportunity to request an interview. In addition, we believe that the PTO rules should be modified to specifically require a means for more accurately recording what transpires at interviews, regardless of which party requests the interviews or regardless of whether all parties are actually present. By using the word "recording" we do not imply that interviews should be physically recorded by electronic means or by a court reporter. Instead, we suggest that accurate recordation should be a more thorough method of recordation and reporting by an examiner as to what transpired at interview. Having an examiner record a more detailed summary of an inter partes reexamination interview would fit in well with the multi-examiner review system which we recommended for consideration by the PTO at the oral hearing. (See attached for multi-examiner review suggestions.) For example, under a multi-examiner final review system, there would be three examiners present. Presumably, a legal specialist within the Examining Group, the original examiner of the application, and a primary examiner having knowledge of the relevant technical field. One of the examiners would have the responsibility for recording minutes and reporting the minutes back to all parties (perhaps within 30 days of the interview), regardless of whether they were present. The minutes would preferably include a detailed discussion of the issues presented, as well as a detailed discussion of how each party responded to the issues presented. Copies of any submissions should also be included in the minutes. We also highly recommend that reporting of the minutes to all parties include a brief, non-binding and informal opinion by the examiners on the resolution of the issues presented at hearing. This would give all parties the opportunity not just to respond to an outstanding Office Action, but the opportunity to respond to data or other issues which may have been presented at interview. II. Fees After recommending a multi-examiner final review at the oral hearing, Assistant Commissioner Goffney asked if we would be willing to pay an increased filing over what was proposed to have this type of reexamination process. Our response was that we expect to pay a fair rate for any service requested and that we considered that the proposed fee was not excessive. Therefore, we would not consider it excessive to increase the fee over what was proposed in order to gain the advantage of multi-examiner final review. On behalf of Exxon Chemical Company, we wish to again thank the PTO for extending us the time at oral hearing for presenting our testimony. If any further clarification of our comments is desired, please contact me directly. Very truly yours, Richard D. Jordan cc: M.A. Nametz Rules of Practice in Patent Cases Reexamination Proceedings Oral Testimony, September 20, 1995 Presented by Richard Jordan, representing Exxon Chemcial Company Assistant Commissioner Goffney, members of the Patent and Trademark Office, ladies and gentlemen, my name is Richard Jordan, and I am representing Exxon Chemical Company who has its headquarters office located in Houston, Texas. I would like to thank the PTO for allowing Exxon Chemical this opportunity to present oral testimony on the rules of practice in reexamination proceedings. We at Exxon Chemical Company support greater participation by third party requesters than is what is currently allowed under the reexamination laws. With the appropriate laws and rules in place, we believe that full inter partes proceedings can provide the public with a more effective system in which the Patent and Trademark Office will have a higher degree of certainty in issuing patents having valid claims. While we at Exxon Chemical Company prefer the high quality of inter partes, post-grant oppositions proceedings similar to that of the European Patent Office, we will consider taking advantage of the means provided under the proposed legislation, H.R. 1732, if appropriate rules are promulgated to provide a high quality reexamination process within the USPTO. Although the PTO has done an excellent job in providing a sound procedural model which is much improved over the present system, we believe that there is still significant room in which the quality of the reexamination process can be improved within the framework of the proposed legislation. Specifically, we believe that quality of reexamination at the PTO could be improved by modifying the proposed rules to provide: (1) a more open and rigorous review system for examiner interviews; (2) a process in which more than one examiner would be responsible for issuing the Right of Appeal Notice; and (3) specific procedures for consolidating multiple reexamination requests of the same patent. I will address each of these proposals in order. (1st Proposal) The Proposed Rules Should be Modified to Provide a More Open and Rigorous Review System for Examiner Interviews The purpose of an interview should be two-fold in an inter partes reexamination proceeding. On one hand, an interview should provide any party to the proceeding a means to better communicate issues to examiners, particularly those issues which are difficult to express on paper. For example, one might be better able to physically demonstrate (maybe by charts, tables or physical demonstration) what is purported to be the main technical aspect of an invention, and how that technical aspect is or is not suggested by the prior art. It may also be more effective to review complicated data with examiners prior to submitting such data in declaration form so that they will have a better understanding of what the data represents. A second purpose for an interview in an inter partes reexamination proceeding should be to build a more complete record for later review. For example, should a case be appealed to the Board of Patent Appeals and Interferences in which an interview was held, and the issues discussed in the interview recorded, the Administrative Patent Judge in charge of the appeal would have a more thorough record upon which to base his decision. Likewise, an attorney who reviews the file history of a reexamination proceeding would have a better record upon which to base infringement/risk assessments. As the proposed rules now stand, they fall short in meeting the two-fold objective of an interview. In particular, under proposed rule 1.955, the benefits of examiner interviews are heavily weighted in favor of the patent owner since that is the only party who would be allowed to request an interview. In our opinion, the proposed rules provide a tremendous advantage to a patent owner. To that extent, we at Exxon Chemical Company have serious doubt as to whether a third party requester would ultimately gain much more under the proposed rules than the present reexamination rules afford. Therefore, we believe that the PTO should give long and serious thought to modifying rule 1.955 in order to make the reexamination proceeding more equitable by allowing a third party requester the opportunity to initiate an interview. Proposed rule 1.955 is also deficient in that there is no specific requirement for recording what transpires at interviews. We can only assume that the PTO will at least issue an Examiner Interview Summary Record. This summary as it is presently recorded, however, would be of little value in an inter partes proceeding. First of all, the present form of the record is too abbreviated to be of any real value in subsequent proceedings. Secondly, it is unlikely that much detail could be put into any interview record if more than one party, as well as a senior level official (whose presence would be required under the proposed rule), are all present and are relying upon an examiner to hurriedly write a summary of the interview. It would be unreasonable under these Circumstances to expect anyone to give an accurate account of what transpired during the interview. Therefore, proposed rule 1.955 should also be modified to include an effective procedure for recording the details of what transpired at interview. (2nd Proposal) The Present Rules Should Be Modified to Provide a Process in Which More than One Examiner Would Be Responsible for Issuing the Right of Appeal Notice As we mentioned in our opening remarks, Exxon Chemical Company is strongly in favor of inter partes, post-grant oppositions proceedings similar to that of the European Patent Office because of the high degree of quality which that type of proceeding affords. One of the reasons for such a high degree of quality in that proceeding is that the final decision is given by three examiners. Needless to say, with a decision from three capable examiners, it is less likely that there will be ancillary issues later raised such as examiner bias or an examiner's lack of understanding of the relevant art or law. An even higher quality of reexamination in the USPTO could be achieved oy following a multi-examiner final review process similar to that in EPO oppositions. This type of review process would not be at odds with the present House Bill, and would in fact be in alignment with multi-examiner review of patent applications in which the PTO already has experience. To include a multi-examiner final review process for reexaminations would take little modification of the proposed rules. For example, prcposed rule 1.953 stipulates that "the examiner" shall issue a "Right of Appeal Notice" unless prosecution is reopened, and that such a notice, shall include a final rejection and/or final decision favorable to Patentability. Instead of one examiner issuing the Right of Appeal Notice with the final written decision, it would be preferable for a panel of three examiners to have this responsibility. This panel could include, for example, a legal specialist within the Examining Group, the original examiner of the application, and a primary examiner having knowledge of the relevant technical field. It may be that all examiners would concur on the written decision or that one may dissent with his or her own written opinion. This would be similar to the process in which the Board of Patent Appeals and Interferences issues its decisions. A multi-examiner final review process would be of benefit to both the public and the PTO in that a high degree of quality in the reexamination process would be ensured. Whether all examiners concur in the final decision, or whether there is a dissent, the result would be a sound record upon which a subsequent reviewing body would be able to make better informed decisions. As we see it, the subsequent reviewing body might be not just the Board of Patent Appeals and Interferences or a federal court, but the public at large, which may be interested in previewing the case files for purposes of giving credible infringement/risk assessments. Since a multi-panel final review process would have a high degree of what one might call "built-in" quality, it would be unnecessary for the PTO to have a quality review program for reexaminations. In cases where there was a unanimous final decision by the examiners, it is also less likely that such a decision would be appealed by the losing party. This would mean, of course, that the work load of the Administratiwe Patent Judge should not be unduly increased. One last point regarding a multi-examiner final review process is that each examiner should be present at interviews for the obvious reason of ensuring that each examiner is familiar with the details of that issues at hand. Therefore, proposed rule 1.955 would also have to be modified for consistency. (3rd Proposal) The Present Rules Should Be Modified to Provide Specific Procedures for Consolidating Multiple Reexamination Requests of the Same Patent. It is not unreasonable to assume that certain patents would spark sufficient commercial interest such that several different parties might file separate reexamination requests. At present, the proposed rules do not specify procedures for taking into account multiple reexamination requests for the same patent. It would seem that it would be efficient for the PTO to consolidate multiple requests once the decision has been made that a substantial new question of patentability has been raised by each requester. Whatever the PTO does in cases of multiple reexamination requests, rules should be published to give the public prior notice of what procedures would be followed. This would be far too complicated of a procedure in which the public would otherwise be at the mercy of PTO internal policy. Conclusion In conclusion, we believe that quality of reexamination at the PTO could be improved by modifying the proposed rules to provide: (1) a more open and rigorous review system for examiner interviews; (2) a, process in which more than one examiner would be responsible for issuing the Right of Appeal Notice; and (3) specific procedures for consolidating multiple reexamination requests of the same patent. In our opinion, if these modifications are not made, it is questionable whether a potential third party requester would be in a much improved position relative to that which one is afforded under the present system. We, therefore, request that the PTO give serious consideration to modifying the proposed rules. Again, thank you for the time allotted.