What constitutes a submission not fully responsive to a non-final Office action in inter partes reexamination?

A submission is considered not fully responsive when it’s a bona fide attempt to respond to an examiner’s Office action filed within the permissible response period, but through oversight or inadvertence, omits a necessary point. As stated in MPEP 2666.30: “A response by the patent owner will be considered not fully responsive to a non-final…

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Can a patent owner receive multiple notifications for omissions in their response?

Generally, a patent owner will not receive multiple notifications for the same omission in their response. However, there are circumstances where multiple notifications may occur. According to MPEP 2666.30: “Once an inadvertent omission is brought to the attention of the patent owner, the question of inadvertence no longer exists. Therefore, a second written notification action…

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What is the difference between minor and serious deficiencies in a patent owner’s response?

The MPEP 2666.30 distinguishes between minor and serious deficiencies in a patent owner’s response: 1. Minor deficiencies: These are less significant omissions that don’t severely impact the examination process. For example, “fails to treat every rejection, objection, or requirement.” In such cases, the examiner may “simply act on the amendment and issue a new Office…

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What is the timeline for patent owner response completion and third party comments in inter partes reexamination?

In inter partes reexamination, the patent owner typically has 30 days or one month (whichever is longer) to complete their response. After the patent owner completes the response, the examiner waits two months before taking action. This allows time for third party requester comments, which are due within 30 days of the date of service…

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What happens after the patent owner responds and third party comments in an inter partes reexamination?

After the patent owner responds and any third party comments are received, the patent under reexamination is reconsidered. The MPEP states: “The patent owner and the third party requester will be notified as to any claims rejected, any claims found patentable and any objections or requirements made.” This process continues until the examiner determines the…

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What are the rules for responding to Office actions in ex parte reexamination proceedings?

In ex parte reexamination proceedings, the rules for responding to Office actions are governed by 37 CFR 1.550(a) and 37 CFR 1.111. Key points include: Patent owners are typically given 2 months to respond to an Office action. Extensions of time are only available under 37 CFR 1.550(c). The certificate of mailing, certificate of transmission,…

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