How does an examiner’s withdrawal of a rejection affect third party requester rights in inter partes reexamination?

When an examiner withdraws a ground of rejection in inter partes reexamination, it can affect the third party requester’s rights in several ways, depending on the circumstances:

1. Examiner-initiated rejection: If the examiner withdraws a rejection they originally initiated, the third party requester may propose the withdrawn rejection in their next set of comments. If the patent owner doesn’t respond to actions leading to the Right of Appeal Notice (RAN), the requester may appeal this withdrawal as a final decision favorable to patentability.
2. Requester-proposed rejection (unamended claims): If the examiner withdraws a rejection previously proposed by the requester for unamended claims, it’s treated as a refusal to adopt the requester’s proposed rejection.
3. Requester-proposed rejection (amended claims): Generally, if claims are amended and the examiner withdraws a previously proposed requester rejection, the requester may propose the withdrawn rejection for the amended claims in their next comments. They may also appeal the withdrawal if a RAN is issued without a patent owner response.

The MPEP states: “Where the examiner withdraws a ground of rejection at any time in the prosecution of the inter partes reexamination proceeding, the following guidelines apply:” and then provides detailed explanations for each scenario.

To learn more:

• inter partes reexamination
• examiner withdrawal of rejection
• third party requester rights
• appeal rights