Can a patent owner file a supplemental response in an inter partes reexamination?

Yes, a patent owner can file a supplemental response in an inter partes reexamination, but it must meet specific requirements. According to MPEP 2666, “Pursuant to 37 CFR 1.945(b), any supplemental response to the Office action in an inter partes reexamination proceeding must be accompanied by a showing of sufficient cause why the supplemental response should be entered.”

The showing of sufficient cause must include:

• An explanation of why the supplemental response was not presented together with the original response to the Office action
• A compelling reason to enter the supplemental response
• A showing of diligence in providing the supplemental response

Additionally, the Office may enter a supplemental response if it is clearly limited to certain specific situations, such as cancellation of claims, adoption of examiner suggestions, or correction of informalities.

To learn more:

• inter partes reexamination
• supplemental response
• patent owner
• Office action