What papers are allowed to be filed prior to the first Office action in inter partes reexamination?
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.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2625 - Untimely Paper Filed Prior To First Office Action,
Patent Law,
Patent Procedure