What are the criteria for making a rejection final in an ex parte reexamination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. The criteria for making a rejection final in an ex parte reexamination proceeding are similar to those used in regular patent applications. According to MPEP § 2271 : “The criteria for making a rejection final in an ex parte reexamination proceeding is analogous to that set forth in MPEP § 706.07(a) for making a rejection final in an application.” Key factors include: A clear issue has been developed between the examiner and the patent owner The patent owner has had opportunities to respond to and/or amend to avoid outstanding grounds of rejection All relevant grounds of rejection have been fully applied to the claims The examiner has carefully reviewed and reiterated all outstanding grounds of rejection Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Criteria for Final Rejection in Ex Parte Reexamination Analogous to Application MPEP 2271 Review All Grounds of Rejection in Final Action MPEP 2271 Recommended Clear Issue Must Be Developed Before Final Action MPEP 2271 Recommended Examiner May Use New Prior Art Without Amendment MPEP 2271 Permitted Examiner Must Provide Patent Owner with Useful Information Twice Before Final Action MPEP 2271 Permitted Final Rejection Must Clearly Develop Grounds of Rejection MPEP 2271 Required Conferee Initials Required for Final Action MPEP 2271 Required Reexamination Final Cancellation No Renewal MPEP 2271 Recommended Second Office Action Generally Final In Reexamination MPEP 2271 Final Office Action Must Be Signed by Primary Examiner MPEP 2271 Required Other Related FAQs 5 FAQs Collapse What is the process for issuing a final action in an ex parte reexamination? How does the patent owner respond to a final action in ex parte re...