§42.207. Preliminary response to petition.
37 C.F.R. § 42.207
The patent owner may file a preliminary response to the petition. The response is limited to setting forth the reasons why no post-grant review should be instituted under 35 U.S.C. 324 and can include supporting evidence. The preliminary response is subject to the word count under § 42.24.
Due date. The preliminary response must be filed no later than three months after the date of a notice indicating that the request to institute a post-grant review has been granted a filing date. A patent owner may expedite the proceeding by filing an election to waive the patent owner preliminary response.
[Reserved]
No amendment. The preliminary response shall not include any amendment.
Disclaim Patent Claims. The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a), disclaiming one or more claims in the patent. No post-grant review will be instituted based on disclaimed claims.
Notes, amendments, and revision history
Amendments
[77 FR 48729, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016]
Source
Source: 77 FR 48729, Aug. 14, 2012, unless otherwise noted.
Authority
Authority: 35 U.S.C. 2(b)(2), 3, 6, 21, 23, 41, 134, 135, 143, 153, 311, 312, 314, 316, 318, 321-326, 328; Pub. L. 112-29, 125 Stat. 284; and Pub. L. 112-274, 126 Stat. 2456.
Source
Source: 77 FR 48669, Aug. 14, 2012, unless otherwise noted.
Amendments
[77 FR 48729, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016]