What should the first Office action in inter partes reexamination include?
The first Office action in inter partes reexamination should be comprehensive and address all relevant issues. According to MPEP 2660, it should include:
- A clear statement of each ground of rejection and/or objection, with supporting reasons
- Determinations favorable to patentability of claims, with comprehensive reasons
- Responses to each argument raised in the reexamination request
- Any issues proper for reexamination that the examiner becomes aware of independently
The MPEP emphasizes:
“The examiner’s first Office action will be a statement of the examiner’s position, and it should be sufficiently complete so that the second Office action can be an Action Closing Prosecution (ACP).”
This approach aims to establish all relevant issues early in the reexamination process.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2660 - First Office Action,
Patent Law,
Patent Procedure