Can supplemental responses be filed in ex parte reexamination proceedings?

Supplemental responses in ex parte reexamination proceedings are addressed in 37 CFR 1.111(a)(2). While they are not entered as a matter of right, the Office may enter a supplemental response if it is clearly limited to specific circumstances:

  • Cancellation of claims
  • Adoption of examiner suggestions
  • Placing the proceeding in condition for Notice of Intent to Issue Reexamination Certificate (NIRC)
  • Responding to an Office requirement made after the first response
  • Correction of informalities
  • Simplification of issues for appeal

The MPEP states: “When a supplemental response is filed in sufficient time to be entered into the reexamination proceeding before the examiner considers the prior response, the examiner may approve the entry of a supplemental response if, after a cursory review, the examiner determines that the supplemental response is limited to meeting one or more of the conditions set forth in 37 CFR 1.111(a)(2)(i).

To learn more:

Topics: MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents, MPEP 2266 - Responses, Patent Law, Patent Procedure
Tags: ex parte reexamination, Office Action Responses, Patent Examination Procedure, Supplemental Responses