2266 Responses [R-10.2019]

Created On
byChhabra Law Firm

37 CFR 1.111  Reply by applicant or patent owner to a non-final Office action.

  • (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.

37 CFR 1.550  Conduct of ex parte reexamination proceedings.

  • (a) All ex parte reexamination proceedings, including any appeals to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office. After issuance of the ex parte reexamination order and expiration of the time for submitting any responses, the examination will be conducted in accordance with §§ 1.104 through 1.116 and will result in the issuance of an ex parte reexamination certificate under § 1.570.
  • (b) The patent owner in an ex parte reexamination proceeding will be given at least thirty days to respond to any Office action. In response to any rejection, such response may include further statements and/or proposed amendments or new claims to place the patent in a condition where all claims, if amended as proposed, would be patentable.
  • (c) The time for taking any action by a patent owner in an ex parte reexamination proceeding may be extended as provided in this paragraph.
    • (1) Any request for such an extension must specify the requested period of extension and be accompanied by the petition fee set forth in § 1.17(g).
    • (2) Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of such a request for extension will not effect the extension. A request for an extension in a third party requested ex parte reexamination will not be granted in the absence of sufficient cause or for more than a reasonable time.
    • (3) Any request for an extension in a patent owner requested or Director ordered ex parte reexamination for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested or Director ordered ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months from the time period set in the Office action will not effect the extension. The time for taking action in a patent owner requested or Director ordered ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.
    • (4) The reply or other action must in any event be filed prior to the expiration of the period of extension, but in no situation may a reply or other action be filed later than the maximum time period set by statute.
    • (5) See § 90.3(c) of this title for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action.
  • (d) If the patent owner fails to file a timely and appropriate response to any Office action or any written statement of an interview required under § 1.560(b), the prosecution in the ex parte reexamination proceeding will be a terminated prosecution, and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.570 in accordance with the last action of the Office.
  • (e) If a response by the patent owner is not timely filed in the Office, a petition may be filed pursuant to § 1.137 to revive a reexamination prosecution terminated under paragraph (d) of this section if the delay in response was unintentional.
  • (f) The reexamination requester will be sent copies of Office actions issued during the ex parte reexamination proceeding. After filing of a request for ex parte reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party in the reexamination proceeding in the manner provided by § 1.248. The document must reflect service or the document may be refused consideration by the Office.
  • (g) The active participation of the ex parte reexamination requester ends with the reply pursuant to § 1.535, and no further submissions on behalf of the reexamination requester will be acknowledged or considered. Further, no submissions on behalf of any third parties will be acknowledged or considered unless such submissions are:
    • (1) in accordance with § 1.510 or § 1.535; or
    • (2) entered in the patent file prior to the date of the order for ex parte reexamination pursuant to § 1.525.
  • (h) Submissions by third parties, filed after the date of the order for ex parte reexamination pursuant to § 1.525, must meet the requirements of and will be treated in accordance with § 1.501(a).
  • (i) A petition in an ex parte reexamination proceeding must be accompanied by the fee set forth in § 1.20(c)(6) except for petitions under paragraph (c) of this section to extend the period for response by a patent owner, petitions under paragraph (e) of this section to accept a delayed response by a patent owner, petitions under § 1.78 to accept an unintentionally delayed benefit claim, and petitions under § 1.530(l) for correction of inventorship in a reexamination proceeding.

Pursuant to 37 CFR 1.550(a):

“After issuance of the ex parte reexamination order and expiration of the time for submitting any responses, the examination will be conducted in accordance with §§ 1.104 through 1.116…”

Accordingly, the provisions of 37 CFR 1.111, other than the provision in 37 CFR 1.111(a)(1) to “see . . . [37 CFR] 1.136 for time for reply to avoid abandonment”, apply to the response by a patent owner in a reexamination proceeding.

The certificate of mailing and certificate of transmission procedures (37 CFR 1.8), and the Priority Mail Express® mailing procedure (37 CFR 1.10), may be used to file any response in a pending ex parte reexamination proceeding.

The patent owner is required to serve a copy of any response made in the reexamination proceeding on the third party requester. 37 CFR 1.550(f). See MPEP § 2266.03 for service of patent owner responses to an Office action.

The patent owner will normally be given a period of 2 months to respond to the Office action. An extension of time can be obtained only in accordance with 37 CFR 1.550(c). Note that 37 CFR 1.136 does not apply in reexamination proceedings.

If the patent owner fails to file a timely and appropriate response to any Office action, the prosecution of the reexamination proceeding will be terminated, unless the response is “not fully responsive” as defined in MPEP § 2266.01 or is an “informal submission” as defined in MPEP § 2266.02. After the prosecution of the proceeding is terminated, the Director will proceed to issue and publish a reexamination certificate.

Pursuant to 37 CFR 1.111(a)(2), a response that is supplemental to a response that is in compliance with 37 CFR 1.111(b) will not be entered as a matter of right. The Office may enter a supplemental response if the supplemental response is clearly limited to: (A) cancellation of a claim(s); (B) adoption of the examiner suggestion(s); (C) placement of the proceeding in condition for Notice of Intent to Issue Reexamination Certificate (NIRC); (D) a response to an Office requirement made after the first response was filed; (E) correction of informalities (e.g., typographical errors); or (F) simplification of issues for appeal. When a supplemental response is filed in sufficient time to be entered into the reexamination proceeding before the examiner considers the prior response, the examiner may approve the entry of a supplemental response if, after a cursory review, the examiner determines that the supplemental response is limited to meeting one or more of the conditions set forth in 37 CFR 1.111(a)(2)(i).

A supplemental response, which has not been approved for entry, will not be entered when a response to a subsequent Office action is filed, even if there is a specific request for its entry in the subsequent response. If a patent owner wishes to have the unentered supplemental response considered by the examiner, the patent owner must include the contents of the unentered supplemental response in a proper response to a subsequent Office action.

The patent owner in an ex parte reexamination proceeding must not file papers on behalf of a third party. 37 CFR 1.550(g). If a third party paper accompanies, or is submitted as part of a timely filed response, the response and the third party paper are considered to be an improper submission under 37 CFR 1.550(g), and the entire submission shall be returned to the patent owner, since the Office will not determine which portion of the submission is the third party paper. The third party paper will not be considered. The decision returning the improper response and the third party paper should provide an appropriate extension of time under 37 CFR 1.550(c), if prior to a final rejection, to refile the patent owner response without the third party paper. See MPEP § 2254 and § 2267.

Patent owner cannot submit an application data sheet (ADS) in a reexamination proceeding except as provided in MPEP § 2258.02.