How are third-party requesters notified of Office actions in ex parte reexamination?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-30

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

In ex parte reexamination proceedings involving third-party requesters, the USPTO ensures that they receive copies of all Office actions. According to MPEP 2264:

“All actions in a third party requester ex parte reexamination will have a copy mailed to the third party requester. A transmittal form PTOL-465 must be used in providing the third party requester with a copy of each Office action.”

The PTOL-465 form serves multiple purposes:

  • It provides a ready reference for the number of copies of each Office action to be made
  • It allows the use of window envelopes for mailing copies to parties other than the patent owner
  • It ensures proper addressing for the third-party requester

If there are multiple third-party requesters for a single request, the USPTO may treat the mailing address of the first named third-party requester as the correspondence address, unless a registered patent practitioner’s address has been designated.

Topics: MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents MPEP 2264 - Mailing Of Office Action Patent Law Patent Procedure
Tags: Correspondence General