How should patent owners respond to the first Office action in inter partes reexamination?

Patent owners should provide a complete and thorough response to the first Office action in inter partes reexamination. MPEP 2660 emphasizes the importance of a comprehensive response:

“Accordingly, the first action should include a statement cautioning the patent owner that a complete response should be made to the action.”

Key points for patent owners:

• Address all issues raised in the Office action
• Provide clear arguments and evidence supporting patentability
• Be aware that requirements for amendments become stricter after the Action Closing Prosecution (ACP)
• Submit any necessary amendments, affidavits, or declarations as evidence of patentability

The MPEP warns that after the ACP, “any amendment after the ACP must include ‘a showing of good and sufficient reasons why they are necessary and were not earlier presented’ in order to be considered.” Therefore, it’s crucial to present all pertinent arguments and evidence in the response to the first Office action.

To learn more:

• patent owner response
• inter partes reexamination
• first Office action
• patent examination