What should be included in a non-ACP Office action in inter partes 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.
A non-ACP Office action in inter partes reexamination should be comprehensive and address all issues related to the patent or printed publications. According to MPEP 2671.01, the action should include:
- A clear statement of the examiner’s position
- A comprehensive address of all issues related to patents or printed publications
- Clear explanations for each ground of rejection and/or objection
- Reasons for refusing to adopt any rejections proposed by the third party requester
- Comprehensive reasons for patentability for favorable determinations
The MPEP states: “This Office action will be a statement of the examiner’s position, so complete that the next Office action can properly be made an action closing prosecution.” This emphasizes the importance of thoroughness in non-ACP actions to facilitate efficient prosecution.
Additionally, the action should include a review of any amendatory matter for compliance with 35 U.S.C. 112, but only for the revised or newly added content, not the unchanged patent content.