Where can I find guidance on the former practice of inter partes reexamination?

For those seeking information on the former practice of inter partes reexamination, the MPEP provides two key resources: Revision 7 of the 8th Edition of the MPEP The Federal Register notice titled “Revision of Standard for Granting an Inter Partes Reexamination Request”, published on September 23, 2011 These resources provide comprehensive information on how inter…

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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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When should the examiner’s first Office action be mailed in an inter partes reexamination?

In an inter partes reexamination, the examiner’s first Office action on the merits should typically be mailed together with the order for reexamination. This practice is designed to expedite the process and adhere to the “special dispatch” requirement. As stated in MPEP 2661: “In order to further the requirement for special dispatch, the examiner’s first…

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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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