How 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…

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Can 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…

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What is the significance of form paragraph 22.04 in reexamination proceedings?

Form paragraph 22.04 plays a crucial role in reexamination proceedings by setting clear expectations for the patent owner’s response to the examiner’s first action. According to MPEP 2260, this paragraph should be included in the first Office action and states: “In order to ensure full consideration of any amendments, affidavits or declarations, or other documents…

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What 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…

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What 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…

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