How should a patent owner serve a response on the third party requester in an inter partes reexamination?
In an inter partes reexamination, the patent owner is required to serve a copy of their response to an Office action on the third party requester. According to MPEP 2666:
“A copy of the response must be served on the third party requester in accordance with 37 CFR 1.248.”
The service of the response is crucial because it starts the 30-day period for the third party requester to file written comments. The MPEP further states:
“Lack of service poses a problem, since a third party requester must file written comments within a period of 30 days from the date of service of the patent owner’s response, in order to be timely.”
To properly serve the response:
- Use a method outlined in 37 CFR 1.248, such as first class mail or electronic transmission (if previously agreed upon)
- Ensure the response is served promptly after filing with the USPTO
- Include a certificate of service with the response
- If there’s no record of service, refer to MPEP § 2666.06 for guidance on how to proceed
Proper service is essential to maintain the integrity of the inter partes reexamination process and ensure all parties have the opportunity to participate fully.
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