MPEP 2666
Patent Owner Response to Office Action

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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2666    Patent Owner Response to Office Action [R-07.2015]

37 C.F.R. 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 C.F.R. 1.945 Response to Office action by patent owner in inter partes reexamination.

  • (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

Pursuant to 37 CFR 1.937(b):

"The inter partes reexamination proceeding will be conducted in accordance with §§ 1.104 through 1.116, the sections governing the application examination process…"

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 patent owner may request reconsideration of the position stated in the Office action, with or without amendment to the claims and/or specification. As to amendments in reexamination proceedings, see MPEP § 2666.01.

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 with 37 CFR 1.111(b).

Reasons must be given as to how and why the claims define over the references, and why any rejections made under 35 U.S.C. 112 are incorrect or inapplicable.

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) (see MPEP § 718) or in an interference proceeding via an appropriate reissue application if such a reissue application may be filed (see MPEP § 1449.02).

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, 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 filed as part of the patent owner’s response will not be considered. The improper response with the third party paper in it should be returned to patent owner as a defective (informal) response, using form PTOL-2069 as the cover letter. See MPEP § 2666.50. The appropriate box on the form should be checked and an explanation for the return of the paper given. The patent owner should be provided an appropriate period of time to refile the patent owner response without the third party paper.

II.    PROCEDURAL CONSIDERATIONS OF THE RESPONSE

The certificate of mailing and the certificate of transmission procedures (37 CFR 1.8 ), and the Priority Mail Express® mailing procedure (37 CFR 1.10 ), may be used to file a patent owner’s response, as well as any other paper in an existing inter partes reexamination proceeding.

A copy of the response must be served on the third party requester in accordance with 37 CFR 1.248, - see also MPEP § 2666.06. Lack of service poses a problem, since a third party requester must file written comments within a period of 30 days from the date of service of the patent owner’s response, in order to be timely. Where the record does not show the response to have been served on the third party requester, see MPEP § 2666.06.

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.

See MPEP § 2666.10 for the consequences of the failure by the patent owner to respond to the Office action.

III.    SUPPLEMENTAL RESPONSE TO OFFICE ACTION

Pursuant to 37 CFR 1.945(b), 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. If such a showing is not provided, the supplemental response will not be entered, and may be sealed (i.e., closed) from public view in the Image File Wrapper (IFW), if it has already been scanned into the IFW for the proceeding.

The showing of sufficient cause why the supplemental response should be entered must include:

  • (B) an explanation of why the supplemental response was not presented together with the original response to the Office action; and
  • (C) a compelling reason to enter the supplemental response.

Pursuant to 37 CFR 1.111(a)(2)(i), the Office may enter a supplemental response if the supplemental response is clearly limited to: (1) cancellation of a claim(s); (2) adoption of the examiner suggestion(s); (3) placement of the proceeding in condition for Notice of Intent to Issue Reexamination Certificate (NIRC); (4) a response to an Office requirement made after the first response was filed; (5) correction of informalities (e.g., typographical errors); or (6) simplification of issues for appeal.

In some instances, where there is a clear basis for the supplemental response, the three-prong showing may be easily satisfied. Thus, for example, the patent claim text may have been incorrectly reproduced, where a patent claim is amended in the original response. In such an instance, the patent owner need only point to the provision of 37 CFR 1.111(a)(2)(i)(E) for the correction of the informalities (e.g., typographical errors), and state that the incorrect reproduction of the claim was not noted in the preparation of the original response. The compelling reason to enter the supplemental response is implicit in such a statement, as the record for the proceeding certainly must be corrected as to the incorrect reproduction of the claim.

Any requester comments filed after a patent owner response to an Office action must be filed "within 30 days after the date of service of the patent owner’s response," to satisfy 35 U.S.C. 314(b)(2). Thus, where the patent owner files a supplemental response to an Office action, the requester would be well advised to file any comments deemed appropriate within 30 days after the date of service of the patent owner’s supplemental response to preserve requester’s comment right, in the event the Office exercises its discretion to enter the supplemental response. The requester’s comments may address whether the patent owner showing is adequate, in addition to addressing the merits of the supplemental response. If the patent owner’s supplemental response is not entered by the Office, then both the supplemental response, and any comments following that supplemental response, will either be returned to the parties or discarded at the sole discretion of the Office. If the supplemental response and/or comments were scanned into the IFW for the reexamination proceeding, and thus, the papers cannot be physically returned or discarded, then the supplemental response and/or comments entries will be marked "closed" and "non-public," and they will not constitute part of the record of the reexamination proceeding. Such papers will not be displayed in the Office’s image file wrapper that is made available to the public, patent owners, and representatives of patent owners, i.e., they will not be displayed in the Patent Application Information Retrieval (PAIR) at the Office’s website.

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 a specific request for its entry is made 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. If the next Office action is an Action Closing Prosecution under 37 CFR 1.949, or an action that otherwise closes prosecution, the entry of the response is governed by 37 CFR 1.116 (see 37 CFR 1.951(a) ).

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