What should be included in the examiner’s first action in a reexamination proceeding?
The examiner’s first action in a reexamination proceeding should include several key elements:
- A clear establishment of the issues between the examiner and the patent owner regarding the patent.
- A cautionary statement to the patent owner about the need for a complete response.
- A warning that the next action is expected to be a final action.
- Information about the strict enforcement of 37 CFR 1.116(b) after final action.
According to MPEP 2260, the first action should include language similar to form paragraph 22.04, which states:
“In order to ensure full consideration of any amendments, affidavits or declarations, or other documents as evidence of patentability, such documents must be submitted in response to this Office action. Submissions after the next Office action, which is intended to be a final action, will be governed by the requirements of 37 CFR 1.116 after final rejection and 37 CFR 41.33 after appeal, which will be strictly enforced.”
This language helps set clear expectations for the patent owner regarding the examination process and the importance of timely and complete responses.
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