C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 42—TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart C—Post-Grant Review

37 C.F.R. § 42.207

Preliminary response to petition

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(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 and can include supporting evidence. The preliminary response is subject to the word count under § 42.24.

(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) 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.

[77 FR 48729, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016]
Notes of Decisions
Cited in 1 case, 2014–2014 · leading case: Virtualagility Inc. v. salesforce.com, Inc.
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Virtualagility Inc. v. salesforce.com, Inc. (2014) cafc · cites it 2× “Also in August 2013, VA filed a Preliminary Response in opposition to Salesforce’s petition at the PTAB pursuant to 37 C.F.R. § 42.207 (a). In November 2013, the PTAB granted-in-part Salesforce’s petition based on its conclusion that all claims of the ’413 patent are directed to…”
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