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2664    Mailing of Office Action [R-07.2015]

After an Office action is completed and processed and has been approved by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS), the action is mailed. In conjunction with mailing, any appropriate processing (e.g., PALM work, update scanning) is carried out.

Inter partes reexamination forms are structured so that the identifying information for the reexamination file and the correspondence address for the patent owner, which is the official correspondence address of record in the file of the patent requested to be reexamined, can be printed on the forms. Usually, the official correspondence address of the patent owner, which is of record in the file of the patent, is the mailing address of patent owner’s legal representative. If there is no official correspondence address of record in the patent file, the Office may treat the mailing address of the patent owner as the correspondence address. Where there are multiple patent owners, the Office may treat the mailing address of the first named patent owner of record with the Office as the correspondence address of the patent owner. The Office will not engage in double correspondence with more than one patent owner. See, e.g., 37 CFR 1.33(a). Copies of Office actions may be obtained by accessing Public PAIR at the Office’s website www.uspto.gov.

All actions in an inter partes reexamination proceeding will have a copy mailed to the third party requester. A transmittal form PTOL-2070 must be used in providing the third party requester with a copy of each Office action. If there is more than one third party requester, and if the third party requester has not designated the mailing address of a registered patent practitioner as the correspondence address for the requester, the Office may treat the mailing address of the first named third party requester as the correspondence address for the requester.

A completed transmittal form will be provided for each requester (there can be multiple requesters in a merged reexamination proceeding; see MPEP § 2686.01), and the appropriate address will be entered on the transmittal form(s). The number of transmittal forms provides a ready reference for the number of copies of each Office action to be made, and the transmittal form permits use of the window envelopes in mailing the copies of the action to parties other than the patent owner.

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Last Modified: 11/04/2015 11:01:47