What is the process for preparing an Office action in inter partes reexamination?

The process for preparing an Office action in inter partes reexamination involves several steps and considerations. According to MPEP 2671.01, the process includes:

1. Notification of the examiner upon receipt of a patent owner response (and third party requester comments, if applicable).
2. Preparation for and setting up of a panel review conference (as per MPEP § 2671.03).
3. Preparation of the Office action, which may occur before or after the conference.
4. Revision of the Office action if needed after the conference.
5. Issuance and signing of the Office action by the examiner if the conference confirms the preliminary decision.
6. Initialing of the action by two or more conferees to indicate their presence in the conference.

The MPEP emphasizes the collaborative nature of this process: “If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims and issue a non-final Office action, the proposed Office action shall be issued and signed by the examiner, with the two or more other conferees initialing the action (as ‘conferee’) to indicate their presence in the conference.“

This process ensures thorough review and consensus before issuing Office actions in inter partes reexamination proceedings.

To learn more:

• Office action preparation
• inter partes reexamination
• patent examination
• USPTO procedure
• panel review conference