What is the purpose of the first Office action in a patent reexamination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs 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. The first Office action in a patent reexamination serves to establish the examiner’s position and should be comprehensive. According to MPEP 2262 , “The examiner’s first Office action will be a statement of the examiner’s position and should be so complete that the second Office action can properly be made a final action.” This means the first action should: Clearly explain how cited prior art applies to the claims Address all arguments raised by the patent owner and requester Provide a thorough examination of the patent’s claims The goal is to set a foundation for efficient resolution of the reexamination proceeding. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse First Office Action Must Clearly Explain Rejections MPEP 2262 Required First Office Action Must Be Complete MPEP 2262 Recommended Examiner Must Address Patent Owner Responses MPEP 2262 Required Examiner May Prepare Office Action Before or After Conference MPEP 2262 Permitted First Action Must Address Patent Owner’s Arguments MPEP 2262 Recommended Discussion with Patent Owner May Lead to NIRC MPEP 2262 Permitted Explanation Required for Claim Scope Determination MPEP 2262 Examiner Must Explain Why Claim Is Clearly Patentable MPEP 2262 Recommended Examiner Must Set Up Panel Review Conference Before Issuing Office Action MPEP 2262 Inappropriate Arguments Must Be Handled According to 37 CFR 1.552(c) MPEP 2262 Recommended Other Related FAQs 5 FAQs Collapse What is the process for handling claim amendments in ex parte reexamination? How should an examiner handle claim charts in a reexamination Office action? How should an examiner handle dependent claims in ex parte reexamination? How should an examiner add...