What happens when the PTAB issues a new ground of rejection in an inter partes reexamination?

When the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection in an inter partes reexamination, it triggers specific procedures outlined in MPEP 2681:

1. The decision is considered non-final for judicial review.
2. The patent owner has one month to choose one of two options:
   • Reopen prosecution by filing a response with amendments or new evidence.
   • Request a rehearing by the Board.

The MPEP states: Any decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board makes a new ground of rejection, the owner, within one month from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal proceeding as to the rejected claim.

To learn more:

• PTAB
• new ground of rejection
• inter partes reexamination
• patent appeals