What is the purpose of the first Office action in a patent reexamination?

The first Office action in a patent reexamination serves to establish the examiner’s position and should be comprehensive. According to MPEP 2262, “The examiner’s first Office action will be a statement of the examiner’s position and should be so complete that the second Office action can properly be made a final action.” This means the first action should:

• Clearly explain how cited prior art applies to the claims
• Address all arguments raised by the patent owner and requester
• Provide a thorough examination of the patent’s claims

The goal is to set a foundation for efficient resolution of the reexamination proceeding.

To learn more:

• Office action
• Patent reexamination
• Prior art
• Patent claims