What are the concluding paragraphs in an inter partes reexamination Office action?

The concluding paragraphs in an inter partes reexamination Office action serve important purposes related to the “special dispatch” requirement and future prosecution. According to MPEP 2671.01, these paragraphs should include:

1. A caution to the patent owner about making a complete response, as the next action is expected to be an Action Closing Prosecution (ACP).
2. A warning about the strict enforcement of 37 CFR 1.116(b) requirements after an ACP.
3. Information about correspondence and inquiries related to the reexamination proceeding.

The MPEP provides specific form paragraphs for these concluding sections:

• Form paragraph 26.05 for cautioning about complete responses and future ACPs
• Form paragraph 26.73 for correspondence and inquiry information

The MPEP states: “In view of the requirement for ‘special dispatch’ in inter partes reexamination proceedings (35 U.S.C. 314(c)), it is intended that the examiner be able to close prosecution at the earliest possible time.” These concluding paragraphs help facilitate this goal by setting clear expectations for future actions and responses.

To learn more:

• concluding paragraphs
• inter partes reexamination
• patent examination
• USPTO procedure
• special dispatch