What happens when all claims are canceled in an inter partes reexamination proceeding?

When all claims in an inter partes reexamination proceeding are to be canceled, the following process occurs:

1. The examiner issues a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) indicating that all claims have been canceled and terminating the prosecution.
2. An examiner’s amendment is drafted as an attachment to the NIRC, canceling all live claims in the proceeding.
3. The examiner explains why the claims have been canceled in the examiner’s amendment.
4. To physically cancel the claims in the file history, brackets are placed around all live claims on a copy of the claims printed from the file history, which is then scanned into the file history.
5. The examiner designates a canceled original patent claim to be printed in the Official Gazette on the Issue Classification IFW form.

The MPEP states: There will be instances where all claims in the reexamination proceeding are to be canceled. This would occur where the patent owner fails to timely respond to an Office action that requires a response, and all live claims in the reexamination proceeding are under rejection.

It’s important to note that in this scenario, a panel review conference is not held because the proceeding is concluded by the cancellation of all claims.

To learn more:

• Claim Cancellation
• Inter Partes Reexamination
• NIRC
• USPTO Procedures