How does the patent owner respond to a final action in ex parte reexamination?

This page is an FAQ based on guidance 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.

When responding to a final action in ex parte reexamination, the patent owner should consider the following:

• A shortened statutory period for response is set, typically two months from the mailing date of the final action
• Extensions of time under 37 CFR 1.136(a) do not apply in reexamination proceedings
• Extensions of time are provided for in 37 CFR 1.550(c) and require a petition fee
• For patent owner-requested reexaminations, extensions of up to two months may be requested within two months of the expiration of the set time period
• Longer extensions require sufficient cause and must be filed before the due date

As stated in MPEP § 2271:

“The filing of a timely first response to this final rejection will be construed as including a request to extend the shortened statutory period for an additional two months. In no event, however, will the statutory period for response expire later than SIX MONTHS from the mailing date of the final action.”