Can a patent owner respond to an inter partes reexamination request before the determination is made?
No, the patent owner cannot respond to an inter partes reexamination request before the determination is made. The MPEP clearly states:
“No input from the patent owner is considered prior to the determination.”
This policy is supported by case law, as the MPEP cites:
“See Patlex v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 1985).”
The decision on whether to grant the reexamination request is based solely on the request and prior art citations, without considering any potential arguments from the patent owner at this stage.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2640 - Decision On Request,
Patent Law,
Patent Procedure