What should be included in a non-ACP Office action in inter partes reexamination?
A non-ACP Office action in inter partes reexamination should be comprehensive and address all issues related to the patent or printed publications. According to MPEP 2671.01, the action should include:
- A clear statement of the examiner’s position
- A comprehensive address of all issues related to patents or printed publications
- Clear explanations for each ground of rejection and/or objection
- Reasons for refusing to adopt any rejections proposed by the third party requester
- Comprehensive reasons for patentability for favorable determinations
The MPEP states: “This Office action will be a statement of the examiner’s position, so complete that the next Office action can properly be made an action closing prosecution.” This emphasizes the importance of thoroughness in non-ACP actions to facilitate efficient prosecution.
Additionally, the action should include a review of any amendatory matter for compliance with 35 U.S.C. 112, but only for the revised or newly added content, not the unchanged patent content.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2671.01 - Examiner Issues Action On Merits That Does Not Close Prosecution,
Patent Law,
Patent Procedure