---
kind: "section"
citation: "37 C.F.R. § 42.207"
title: "37"
number: "42.207"
heading: "Preliminary response to petition."
url: "https://uscodex.org/cfr/37/42.207"
---

# §42.207. Preliminary response to petition.

- (a) 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](/usc/35/324.md) and can include supporting evidence. The preliminary response is subject to the word count under [§ 42.24](/cfr/37/42.24.md).
- (b) **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.
- (c) [Reserved]
- (d) **No amendment.** The preliminary response shall not include any amendment.
- (e) **Disclaim Patent Claims.** The patent owner may file a statutory disclaimer under [35 U.S.C. 253(a)](/usc/35/253.md?p=a) in compliance with [§ 1.321(a)](/cfr/37/1.321.md?p=a), disclaiming one or more claims in the patent. No post-grant review will be instituted based on disclaimed claims.

## Notes

### 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]