37 CFR § 1.949 — Examiner’s Office action closing prosecution ininter partesreexamination. — MPEP Index – BlueIron IP
37 CFR § 1.949 Examiner’s Office action closing prosecution ininter partesreexamination.
This page consolidates MPEP guidance interpreting 37 CFR § 1.949, including 7 rules 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.
Summary
This section details the examiner’s final action after applicant or patent owner response in inter partes reexamination, ensuring all claims are properly addressed and objections or requirements made.
What this section covers
- Defines the examiner’s final action after reply by applicant or patent owner to a non-final action and comments by an inter partes reexamination requester.
- Involves notifying the applicant or patent owner of claims rejected, objections made, or decisions favoring rejection.
Key obligations
- Ensure all claims are properly addressed in the examiner’s final action.
- Respond to a non-final action and any comments by an inter partes reexamination requester in a timely manner.
- Adhere to specific rules governing inter partes reexamination, including USC and CFR sections.
Practice notes
- Ensure all arguments and claims are clearly addressed in the response to avoid overlooking any claims.
- Avoid missing claims that were not addressed in the response to ensure compliance with examiner’s final action requirements.
Official MPEP § 1.949 — Examiner’s Office action closing prosecution ininter partesreexamination.
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.949 Examiner’s Office action closing prosecution in inter partes reexamination.
Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution. The Office action shall set forth all rejections and determinations not to make a proposed rejection, and the grounds therefor. An Office action will not usually close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
- Examination Procedure
- Examiner Action
- Action Types
- Rce Practice
- Inter Partes Reexamination
- Inter Partes Reexam Procedure
| MPEP Section | Rules |
|---|---|
| MPEP § 706 | |
| MPEP § 714.12 |