MPEP 2625
Untimely Paper Filed Prior to First Office Action

Ninth Edition of the MPEP, Revision 07.2022, Last Revised in February 2023

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2625    Untimely Paper Filed Prior to First Office Action [R-07.2015]

37 C.F.R. 1.939 Unauthorized papers in inter partes reexamination

  • (a) If an unauthorized paper is filed by any party at any time during the inter partes reexamination proceeding it will not be considered and may be returned.
  • (b) Unless otherwise authorized, no paper shall be filed prior to the initial Office action on the merits of the inter partes reexamination.

37 C.F.R. 1.902 Processing of prior art citations during an inter partes reexamination proceeding.

Citations by the patent owner in accordance with § 1.933 and by an inter partes reexamination third party requester under § 1.915 or § 1.948 will be entered in the inter partes reexamination file. The entry in the patent file of other citations submitted after the date of an order for reexamination pursuant to § 1.931 by persons other than the patent owner, or the third party requester under either § 1.913 or § 1.948, will be delayed until the inter partes reexamination proceeding has been concluded by the issuance and publication of a reexamination certificate. See § 1.502 for processing of prior art citations in patent and reexamination files during an ex parte reexamination proceeding filed under § 1.510.

Pursuant to 37 CFR 1.939, after filing of a request for inter partes reexamination, no papers directed to the merits of the reexamination other than (A) citations of patents or printed publications under 37 CFR 1.501 and 1.933, (B) another complete request under 37 CFR 1.510, or (C) notifications pursuant to MPEP § 2686, should be filed with the Office prior to the date of the first Office action in the reexamination proceeding. Any papers directed to the merits of the reexamination, other than those under 37 CFR 1.501, 1.933, or 1.510, or under MPEP § 2686, filed prior to the date of the first Office action will be returned to the sender without consideration. If the papers are entered prior to discovery of the impropriety, such papers will be expunged from the record. A copy of the letter providing notification of the returned papers or expungement will be made of record in the patent file. However, no copy of the returned/expunged papers will be retained by the Office. If the submission of the returned/expunged papers is appropriate later in the proceedings, they may be filed, and accepted by the Office, at that time. See Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir. 1985); In re Knight, 217 USPQ 294 (Comm’r Pat.1982); and In re Amp, 212 USPQ 826 (Comm’r Pat. 1981) which addressed the situation analogous to the present situation for ex parte reexamination proceedings.