How should examiners handle third-party requester proposed rejections in inter partes reexamination?
Examiners must carefully consider and address all third-party requester proposed rejections in inter partes reexamination. MPEP 2660 provides clear guidance on this matter: “The examiner should not refuse to adopt a rejection properly proposed by the requester as being cumulative to other rejections applied. Rather, any such proposed rejection must be adopted to preserve parties’…
Read MoreHow 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…
Read MoreCan a patent owner amend claims before the first Office action in inter partes reexamination?
No, a patent owner cannot amend claims before the first Office action in inter partes reexamination. MPEP 2660 clearly states: “Ordinarily, there will be no patent owner amendment to address in the first Office action of the inter partes reexamination, because 37 CFR 1.939(b) prohibits a patent owner amendment prior to first Office action.” This…
Read MoreWhat is the panel review conference in inter partes reexamination?
The panel review conference is a quality control measure in inter partes reexamination. According to MPEP 2660: “Upon receipt of a patent owner response to the action (and third party requester comments where permitted) by the CRU, or upon the expiration of the time to submit same, the examiner will be internally notified. The examiner…
Read MoreWhat is the typical timing for the first Office action in an inter partes reexamination?
According to MPEP 2660, the first Office action on the merits is usually mailed together with the order granting reexamination. The MPEP states: “The first Office action on the merits will ordinarily be mailed together with the order granting reexamination.” However, there are exceptions to this general practice. If it’s not possible to include the…
Read MoreWhat should the first Office action in inter partes reexamination include?
The first Office action in inter partes reexamination should be comprehensive and address all relevant issues. According to MPEP 2660, it should include: A clear statement of each ground of rejection and/or objection, with supporting reasons Determinations favorable to patentability of claims, with comprehensive reasons Responses to each argument raised in the reexamination request Any…
Read More