2666 Patent Owner Response to Office Action
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(a)
(1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
(2) Supplemental replies.(i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
(A) Cancellation of a claim(s);
(B) Adoption of the examiner suggestion(s);
(C) Placement of the application in condition for allowance;
(D) Reply to an Office requirement made after the first reply was filed;
(E) Correction of informalities (e.g., typographical errors); or
(F) Simplification of issues for appeal. (ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).
(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
(c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.
(a) The patent owner will be given at least thirty days to file a response to any Office action on the merits of the inter partes reexamination.
(b) Any supplemental response to the Office action will be entered only where the supplemental response is accompanied by a showing of sufficient cause why the supplemental response should be entered. The showing of sufficient cause must include:
(1) An explanation of how the requirements of § 1.111(a)(2)(i) are satisfied;
(2) An explanation of why the supplemental response was not presented together with the original response to the Office action; and
(3) A compelling reason to enter the supplemental response.
I. SUBSTANCE OF THE RESPONSE
Accordingly, the provisions of 37 CFR 1.111 apply to the response by a patent owner in a reexamination proceeding.
- The patent owner may request reconsideration of the position stated in the Office action, with or without amendment to the claims and/or specification.
Any request for reconsideration must be in writing and must distinctly and specifically point out each supposed error in the examiner’s action.
- A general allegation that the claims define a patentable invention, without specifically pointing out how the language of the claims patentably distinguishes them over the references, is inadequate and is not in compliance.
Affidavits under 37 CFR 1.131(a) and 1.132 may be utilized in a reexamination proceeding.
- Note, however, that an affidavit under 37 CFR 1.131(a) may not be used to “swear behind” a reference patent if the reference patent is claiming the same invention as the patent undergoing reexamination.
- In such a situation, the patent owner may, if appropriate, seek to raise this issue via an affidavit under 37 CFR 1.131(c) or in an interference proceeding via an appropriate reissue application if such a reissue application may be filed.
The patent owner cannot file papers on behalf of a third party.
- If a third party paper accompanies or is submitted as part of a timely filed response, the response and third party paper are considered to be an improper (i.e., informal) submission.
II. PROCEDURAL CONSIDERATIONS OF THE RESPONSE
The certificate of mailing and the certificate of transmission procedures, and the 'Priority Mail Express' mailing procedure, may be used to file a patent owner’s response, as well as any other paper in an existing inter partes reexamination proceeding.
The patent owner will normally be given a period of two months to respond to an Office action.
- An extension of time can be obtained only in accordance with 37 CFR 1.956. Note that 37 CFR 1.136 does not apply in reexamination proceedings.
III. SUPPLEMENTAL RESPONSE TO OFFICE ACTION
Any supplemental response to the Office action in an inter partes reexamination proceeding must be accompanied by a showing of sufficient cause why the supplemental response should be entered.
The showing of sufficient cause why the supplemental response should be entered must include:
- an explanation of how the requirements of 37 CFR 1.111(a)(2)(i) are satisfied;
- an explanation of why the supplemental response was not presented together with the original response to the Office action; and
- a compelling reason to enter the supplemental response.
Patent owner cannot submit an application data sheet (ADS) in a reexamination proceeding except as provided in MPEP § 2258.02.
2666.01 Amendment by Patent Owner
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Amendments by patent owner in inter partes reexamination proceedings are made by filing a paper in compliance with §§ 1.530(d)-(k) and 1.943.
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(j) Amendments in reexamination proceedings. Any proposed amendment to the description and claims in patents involved in reexamination proceedings must be made in accordance with § 1.530.
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(d) Making amendments in a reexamination proceeding. A proposed amendment in an ex parte or an inter partes reexamination proceeding is made by filing a paper directing that proposed specified changes be made to the patent specification, including the claims, or to the drawings. An amendment paper directing that proposed specified changes be made in a reexamination proceeding may be submitted as an accompaniment to a request filed by the patent owner in accordance with § 1.510(e), as part of a patent owner statement in accordance with paragraph (b) of this section, or, where permitted, during the prosecution of the reexamination proceeding pursuant to § 1.550(a) or § 1.937.
(1) Specification other than the claims. Changes to the specification, other than to the claims, must be made by submission of the entire text of an added or rewritten paragraph including markings pursuant to paragraph (f) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph, without presentation of the text of the paragraph. The precise point in the specification must be identified where any added or rewritten paragraph is located. This paragraph applies whether the amendment is submitted on paper or compact disc (see §§ 1.96 and 1.825).
(2) Claims. An amendment paper must include the entire text of each patent claim which is being proposed to be changed by such amendment paper and of each new claim being proposed to be added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each patent claim proposed to be changed and each proposed added claim must include markings pursuant to paragraph (f) of this section, except that a patent claim or proposed added claim should be canceled by a statement canceling the claim, without presentation of the text of the claim.
(3) Drawings. Any change to the patent drawings must be submitted as a sketch on a separate paper showing the proposed changes in red for approval by the examiner. Upon approval of the changes by the examiner, only new sheets of drawings including the changes and in compliance with § 1.84 must be filed. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
(4) The formal requirements for papers making up the reexamination proceeding other than those set forth in this section are set out in § 1.52.
(e) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (d) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes to the claims made by the amendment paper.
(f) Changes shown by markings. Any changes relative to the patent being reexamined which are made to the specification, including the claims, must include the following markings:
(1) The matter to be omitted by the reexamination proceeding must be enclosed in brackets; and
(2) The matter to be added by the reexamination proceeding must be underlined.
(g) Numbering of patent claims p. Patent claims may not be renumbered. The numbering of any claims added in the reexamination proceeding must follow the number of the highest numbered patent claim.
(h) Amendment of disclosure may be required. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(i) Amendments made relative to patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing the request for reexamination.
(j) No enlargement of claim scope. No amendment may enlarge the scope of the claims of the patent or introduce new matter. No amendment may be proposed for entry in an expired patent. Moreover, no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent.
(k) Amendments not effective until certificate. Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published.
(l) Correction of inventorship in an ex parte or inter partes reexamination proceeding.
- (1) When it appears in a patent being reexamined that the correct inventor or inventors were not named, the Director may, on petition of all the parties set forth in § 1.324(b)(1) and (2), including the assignees, and satisfactory proof of the facts and payment of the fee set forth in § 1.20(b), or on order of a court before which such matter is called in question, include in the reexamination certificate to be issued under § 1.570 or § 1.997 an amendment naming only the actual inventor or inventors. The petition must be submitted as part of the reexamination proceeding and must satisfy the requirements of § 1.324.
- (2) Notwithstanding paragraph (l)(1) of this section, if a petition to correct inventorship satisfying the requirements of § 1.324 is filed in a reexamination proceeding, and the reexamination proceeding is concluded other than by a reexamination certificate under § 1.570 or § 1.997, a certificate of correction indicating the change of inventorship stated in the petition will be issued upon request by the patentee.
Amendments proposed in a reexamination will normally be entered if timely, and will be considered to be entered for purposes of prosecution before the Office (if they are timely and comply with the rules); however, amendments do not become effective in the patent until the certificate under 35 U.S.C. 316 is issued and published.
- Amendments must not enlarge the scope of a claim of the patent nor introduce new matter.
If the patent expires during the reexamination procedure, and the patent claims have been amended, the Office will hold the amendments as being improper and all subsequent reexamination will be on the basis of the unamended patent claims.
- This procedure is necessary since no amendments will be incorporated into the patent by certificate after the expiration of the patent.
Manner of Making Amendments - Amendments in an inter partes reexamination proceeding are made in the same manner that amendments in an ex parte reexamination proceeding are made.
2666.02 Correction of Patent Drawings
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Amendments by patent owner in inter partes reexamination proceedings are made by filing a paper in compliance with §§ 1.530(d)-(k) and 1.943.
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(d) Making amendments in a reexamination proceeding. A proposed amendment in an ex parte or an inter partes reexamination proceeding is made by filing a paper directing that proposed specified changes be made to the patent specification, including the claims, or to the drawings. An amendment paper directing that proposed specified changes be made in a reexamination proceeding may be submitted as an accompaniment to a request filed by the patent owner in accordance with § 1.510(e), as part of a patent owner statement in accordance with paragraph (b) of this section, or, where permitted, during the prosecution of the reexamination proceeding pursuant to § 1.550(a) or § 1.937.
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(3) Drawings. Any change to the patent drawings must be submitted as a sketch on a separate paper showing the proposed changes in red for approval by the examiner. Upon approval of the changes by the examiner, only new sheets of drawings including the changes and in compliance with § 1.84 must be filed. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
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2666.03 Correction of Inventorship
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2666.04 Fees for Adding Claims
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If the amendment is limited to revising the existing claims, i.e., it does not provide any new claim, there is no claim fee.
- The excess claims fees apply only to the submission of new, i.e., “excess” claims.
- The excess claims fees apply to excess claims that result from an amendment as follows:
- The independent claims fee must be paid for each independent claim in excess of three and also in excess of the number of independent claims in the patent being reexamined. The amendment must increase the number of independent claims to be more than both of these limits, in order for the “independent excess claims fee” to apply;
- The total claims fee must be paid for each claim (whether independent or dependent) in excess of twenty and also in excess of the number of claims in the patent being reexamined. The amendment must increase the total number of claims to be more than both of these limits, in order for the “total excess claims fee” to apply.
2666.05 Third Party Comments After Patent Owner Response
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Each time the patent owner files a response to an Office action on the merits pursuant to § 1.945, a third party requester may once file written comments within a period of 30 days from the date of service of the patent owner’s response. These comments shall be limited to issues raised by the Office action or the patent owner’s response. The time for submitting comments by the third party requester may not be extended. For the purpose of filing the written comments by the third party requester, the comments will be considered as having been received in the Office as of the date of deposit specified in the certificate under § 1.8.
(a) After the inter partes reexamination order, the third party requester may only cite additional prior art as defined under § 1.501 if it is filed as part of a comments submission under § 1.947 or § 1.951(b) and is limited to prior art:
(1) which is necessary to rebut a finding of fact by the examiner;
(2) which is necessary to rebut a response of the patent owner; or
(3) which for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination proceeding. Prior art submitted under paragraph (a)(3) of this section must be accompanied by a statement as to when the prior art first became known or available to the third party requester and must include a discussion of the pertinency of each reference to the patentability of at least one claim.
(b) [Reserved].
I. TIMELINESS
A third party requester may once file written comments on any patent owner response to an Office action, during the examination stage of an inter partes reexamination proceeding.
- The third party requester comments must be filed within a period of 30 days from the date of service of the patent owner’s response on the third party requester.
The certificate of mailing and the certificate of transmission procedures, and the “Express Mail” mailing, may be used to file comments.
- If the third party requester comments are filed after 30 days from the date of service of the patent owner’s response on the third party requester, the comments will not be considered.
II. CONTENT
The third party requester comments must be directed to points and issues covered by the Office action and/or the patent owner’s response.
- The written comments filed by a third party requester should specify the issues and points in the Office action or the patent owner’s response to which each comment is directed.
The third party requester should:
- set forth the point or issue,
- state the page of the Office action and/or the patent owner response where the point or issue is recited, and
- then present the third party requester’s discussion and argument as to the point or issue.
If this is not done by the third party requester, the comments should not be held defective if the examiner can ascertain that all of the comments filed by the third party requester are directed to the issues and points in the Office action and/or the patent owner’s response.
Third party requester comments are limited to issues covered by the Office action or the patent owner’s response.
New prior art can be submitted with the comments only where the prior art:
- is necessary to rebut a finding of fact by the examiner,
- is necessary to rebut a response of the patent owner, or
- for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination.
Any replacement comments submitted in response to the notification must be strictly limited to (i.e., must not go beyond) the comments in the original (returned) comments submission.
- No comments that add to those in the returned paper will be considered for entry.
III. EXAMINER WITHDRAWS A GROUND OF REJECTION
If the examiner withdraws a ground of rejection at any time in the prosecution of the inter partes reexamination proceeding, the following guidelines apply:
- Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the Office action as a decision favorable to patentability with respect to the withdrawn rejection.
- The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a “rejection proposed by the third party requester.”
- In the event the patent owner fails to respond to all actions leading to the Right of Appeal Notice (RAN), including the Action Closing Prosecution (ACP), and a RAN is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability.
- Likewise, where the rejection is first withdrawn in the RAN, there will be no requester opportunity to comment prior to appeal, and the requester may appeal this withdrawal of rejection in the RAN as a final decision favorable to patentability.
- (B) Where the claims have not been amended and the examiner withdraws a ground of rejection previously proposed by the third party requester (e.g., based on patent owner’s argument or evidence submitted), the examiner should treat the issue as a rejection proposed by the third party requester that the examiner refuses to adopt.
- (C) Generally (subject to the below-stated exception), where the claims have been amended and the examiner withdraws a ground of rejection previously proposed by the third party requester, this is not a refusal of the examiner to adopt the rejection proposed by the requester, since the rejection was never proposed as to the amended claims.
- The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a “rejection proposed by the third party requester” as to the amended claims.
- In the event the patent owner fails to respond to all actions leading to the RAN, including the ACP, and a RAN is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability.
- Likewise, where the rejection is first withdrawn in the RAN, there will be no requester opportunity to comment prior to appeal, and the requester may appeal this withdrawal of rejection in the RAN as a final decision favorable to patentability.
- (D) If a claim is amended merely to include a dependent claim that was previously subjected to a proposed requester rejection, and the examiner withdraws that ground of rejection as to the newly amended claim, such would be a refusal to adopt the third party requester’s previously proposed rejection of the dependent claim.
- Thus, the examiner would treat the issue as a rejection proposed by the third party requester that the examiner refuses to adopt.
- Thus, the examiner would treat the issue as a rejection proposed by the third party requester that the examiner refuses to adopt.
2666.06 Service of Papers
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(b) A request for inter partes reexamination must include the following parts:
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(6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy of the request must be supplied to the Office.
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The patent owner and the third party requester will be sent copies of Office actions issued during the inter partes reexamination proceeding. After filing of a request for inter partes reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on every other party in the reexamination proceeding in the manner provided in § 1.248. Any document must reflect service or the document may be refused consideration by the Office. The failure of the patent owner or the third party requester to serve documents may result in their being refused consideration.
Any paper filed with the Office, i.e., any submission made, by either the patent owner or the third party requester must be served on every other party in the reexamination proceeding including any other third party requester that is part of the proceeding due to merger of reexamination proceedings.
As proof of service, the party submitting the paper to the Office must attach a certificate of service to the paper. It is required that the certificate of service set forth the name and address of the party served and the method of service. Further, a copy of the certificate of service must be attached with the copy of the paper that is served on the other party.
2666.10 Patent Owner Does Not Respond to Office Action
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(a) If the third party requester files an untimely or inappropriate comment, notice of appeal or brief in an inter partes reexamination, the paper will be refused consideration.
(b) If no claims are found patentable, and the patent owner fails to file a timely and appropriate response in an inter partes reexamination proceeding, the prosecution in the reexamination proceeding will be a terminated prosecution and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.997 in accordance with the last action of the Office.
(c) If claims are found patentable and the patent owner fails to file a timely and appropriate response to any Office action in an inter partes reexamination proceeding, further prosecution will be limited to the claims found patentable at the time of the failure to respond, and to any claims added thereafter which do not expand the scope of the claims which were found patentable at that time.
(d) When action by the patent owner is a bona fide attempt to respond and to advance the prosecution and is substantially a complete response to the Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, an opportunity to explain and supply the omission may be given.
I. OFFICE ACTION PRIOR TO ACTION CLOSING PROSECUTION
If the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP), it will result in the following consequences:
- Where there were no claims found patentable in the Office action, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) terminating prosecution and indicating the status of the claims as canceled.
- Where at least one claim is found patentable, all future prosecution will be limited to the claim(s) found patentable at the time of the failure to respond and to claims which do not expand the scope of the claim(s) found patentable at that time.
- The patent owner will not be permitted to add claims broader in the scope than the patentable claims which remain in the proceeding at the time of the patent owner’s failure to timely respond.
- The examiner will proceed to issue an ACP indicating that:
- Any claims under rejection or objection are withdrawn from consideration and will be canceled upon publication of the certificate; and
- Prosecution will be limited to the claim(s) found patentable at the time of the failure to respond and to claims which do not expand the scope of the claim(s) found patentable at that time.
II. ACTION CLOSING PROSECUTION
A response to an ACP is not required. Where the patent owner does not respond to an ACP, the Office will issue an Right of Appeal Notice in due course.
III. RIGHT OF APPEAL NOTICE AND APPEAL
Where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is subsequently dismissed, the following consequences would result:
- If no claim was found patentable at the time that the patent owner fails to take the timely action, a NIRC will immediately be issued.
- Where at least one claim was found patentable and the third party requester does not appeal, or fails to continue its appeal, the prosecution of the reexamination proceeding should be terminated. In order to do so, a NIRC will be issued.
- Where at least one claim was found patentable and the third party appellant continues its appeal, the claims in the proceeding will be limited to the claim(s) found patentable at the time that the patent owner fails to take the timely action, and all other claims will be withdrawn from consideration pending cancellation of same when the NIRC is issued. Any future prosecution is limited to the claims that do not expand the scope of the claim(s) found patentable at that time.
2666.20 Third Party Does Not Comment After Patent Owner Response
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(a) If the third party requester files an untimely or inappropriate comment, notice of appeal or brief in an inter partes reexamination, the paper will be refused consideration.
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Where a third party requester does not timely file written comments on a patent owner response, any subsequent submission of comments on that response will be refused consideration.
- The third party requester does not, however, lose any rights as to commenting on future patent owner responses.
- The failure to file the comments applies only to the specific response which the third party requester elects not to comment upon.
Where the third party requester did not file comments on a patent owner response that was determined by the Office to be incomplete and the Office provides the patent owner additional time to complete the response, the third party requester may file comments on the response once it is completed (by patent owner’s submission of a supplemental response), provided the comments are filed within 30 days from the date of service of the supplemental response.
- However, where only a fee (other than an excess claims fee to support an amendment) is needed to complete the response, the third party requester may not file comments after the fee is submitted.
Where the third party requester fails to timely appeal, or the requester’s appeal is dismissed, and no other appeal is pending in the proceeding, the prosecution of the reexamination proceeding should be terminated by the issuance of a NIRC.
2666.30 Submission Not Fully Responsive to Non-final Office Action
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(d) When action by the patent owner is a bona fide attempt to respond and to advance the prosecution and is substantially a complete response to the Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, an opportunity to explain and supply the omission may be given.
In this situation, the prosecution of the reexamination proceeding should not be terminated. Rather, the examiner may treat the patent owner submission which is not fully responsive to an Office action by:
- waiving the deficiencies (if not serious) in the response and acting on the patent owner submission;
- treating the amendment/response as an incomplete response to the Office action and notifying the patent owner that the response must be completed within the period for response set in the notification action to avoid termination of the or limiting prosecution of the claims to those found patentable.
I. NO NOTIFICATION BY TELEPHONE
It should be noted that the patent owner cannot simply be notified by telephone that the omission must be supplied within the remaining time period for response.
- This notification would be an interview, and interviews are prohibited in inter partes reexamination.
II. FURTHER DISCUSSION
The practice of giving the patent owner a time period to supply an omission in a bona fide response does not apply where there has been a deliberate omission of some necessary part of a complete response.
2666.40 Patent Owner Completion of Response and Third Party Comments Thereon
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2666.50 Examiner Issues Notice of Defective Paper in Inter Partes Reexamination
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2666.60 Response by Patent Owner/Third Party to Notice of Defective Paper
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» 2668 Petition for Entry of Late Papers for Revival of Reexamination Proceeding
