What is the purpose of the first ex parte action in a reexamination proceeding?

The first ex parte action in a reexamination proceeding serves to establish the primary issues between the examiner and the patent owner regarding the patent. According to MPEP 2260, “It is intended that the examiner’s first ex parte action on the merits be the primary action to establish the issues which exist between the examiner and the patent owner insofar as the patent is concerned.”

This action is crucial because it follows the patent owner’s initial statement and amendment (if any) under 37 CFR 1.530, and the requester’s reply (if the requester is not the patent owner) under 37 CFR 1.535. The examiner’s first action should clearly define the issues at hand, setting the stage for the rest of the reexamination process.

To learn more:

• ex parte reexamination
• first office action
• patent examination
• MPEP 2260