2266.02 Examiner Issues Notice of Defective Paper in Ex Parte Reexamination [R-07.2015]

Even if the substance of a submission is complete, the submission can still be defective, i.e., an “informal submission.” Defects in the submission can be, for example:

• (A) The paper filed does not include proof of service;
• (B) The paper filed is unsigned;
• (C) The paper filed is signed by a non-practitioner who is not of record;
• (D) The amendment filed by the patent owner does not comply with 37 CFR 1.530(d)–(j);
• (E) The amendment filed by the patent owner does not comply with 37 CFR 1.20(c)(3) and/or 37 CFR 1.20(c)(4).

Where a submission made prior to final rejection is defective (informal), forms PTOL-475 and PTO-2311 are used to provide notification of the defects present in the submission. Form PTOL-475 provides notification of the defect(s) in a submission filed in a third-party requested ex parte reexamination, while form PTO-2311 provides notification of the defect(s) in a submission filed a in patent owner requested ex parte reexamination (including a reexamination ordered under 35 U.S.C. 257) or Director ordered ex parte reexamination. In many cases, it is only necessary to check the appropriate box on the form and fill in the blanks. However, if the defect denoted by one of the entries on the appropriate form needs further clarification (such as the specifics of why the amendment does not comply with 37 CFR 1.530(d)-(j)), the additional information should be set forth on a separate sheet of paper which is then attached to the form.

The defects identified above as (A) through (E) are specifically included in form PTOL-475 and PTO-2311, with the exception of (A), which only appears in form PTOL-475 (proof of service is inapplicable in patent owner requested reexaminations). If the submission contains a defect other than those specifically included on the form, the “other” box on the form is to be checked and the defect explained in the space provided for the explanation. For example, a response might be presented on easily erasable paper, and thus, a new submission would be needed.

A time period from the mailing date of the notice will be set in the appropriate form (PTOL-475 or PTO-2311) for correction of the defect(s). Extension of time to correct the defect(s) may be requested under 37 CFR 1.550(c). If, in response to the notice, the defect still is not corrected, the submission will not be entered. If the failure to comply with the notice results in a patent owner failure to file a timely and appropriate response to any Office action, the prosecution of the reexamination proceeding generally will be terminated under 37 CFR 1.550(d).

If a defective (informal) response to an examiner’s action is filed after final rejection (before the expiration of the permissible response period), the examiner should not issue a form PTOL-475 or form PTO-2311 notification to the patent owner. Rather, an advisory Office action (form PTOL-467 or PTOL-467A) should be issued with an explanation of the defect (informality). The time period set in the final rejection continues to run and is extended by two months if the response is the first response after the final rejection in accordance with the guidelines set forth in MPEP § 2265. See also MPEP § 2272.