What papers are allowed to be filed prior to the first Office action in inter partes reexamination?

Question

Accepted Answer

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. According to MPEP 2625 , only a limited set of papers are allowed to be filed prior to the first Office action in inter partes reexamination. These include: Citations of patents or printed publications under 37 CFR 1.501 and 1.933 Another complete request under 37 CFR 1.510 Notifications pursuant to MPEP § 2686 The MPEP states: “Pursuant to 37 CFR 1.939, after filing of a request for inter partes reexamination, no papers directed to the merits of the reexamination other than (A) citations of patents or printed publications under 37 CFR 1.501 and 1.933, (B) another complete request under 37 CFR 1.510, or (C) notifications pursuant to MPEP § 2686, should be filed with the Office prior to the date of the first Office action in the reexamination proceeding.” Any other papers filed before the first Office action may be returned or expunged from the record. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2625 No Inter Partes Reexamination After September 16, 2012 MPEP 2625 Amendment Must Be Filed Before First Office Action on Merits MPEP 2146.02 Shorter First Office Action for CPA MPEP 201.06(d) Recommended Amendment Before First Office Action Does Not Alter New Application Status MPEP 203 Amendment Before First Office Action Does Not Alter New Application Status MPEP 203.01 Submissions Considered During First Office Action on Merits MPEP 2253 Amendments Required After First Office Action in Ex Parte Reexamination MPEP 2818.01 First Office Action Must Indicate Prior Art Review MPEP 2001.06(b) Required First Office Action Must Be Complete MPEP 2262 Recommended Other Related FAQs 5 FAQs Collapse How...