What happens if a patent owner fails to respond to an Office action in an inter partes reexamination?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The consequences of a patent owner’s failure to respond to an Office action in an inter partes reexamination depend on the stage of the proceedings and whether any claims were found patentable:

• If no claims were found patentable, the prosecution will be terminated, and a certificate concluding the reexamination will be issued.
• If claims were found patentable, further prosecution will be limited to those claims and any subsequently added claims that do not expand their scope.

As stated in MPEP 2666.10:

“If no claims are found patentable, and the patent owner fails to file a timely and appropriate response in an inter partes reexamination proceeding, the prosecution in the reexamination proceeding will be a terminated prosecution and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.997 in accordance with the last action of the Office.”

This excerpt summarizes the consequences of non-response when no claims are found patentable.