What are the consequences if a patent owner fails to file a timely appeal after a Right of Appeal Notice in inter partes reexamination?
The consequences of a patent owner’s failure to file a timely appeal after a Right of Appeal Notice in inter partes reexamination depend on the patentability findings and the actions of the third party requester. According to MPEP 2666.10, the following outcomes may occur:
- If no claim was found patentable, a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) will be immediately issued.
- If at least one claim was found patentable and the third party requester does not appeal or fails to continue its appeal, the reexamination proceeding will be terminated, and an NIRC will be issued.
- If at least one claim was found patentable and the third party appellant continues its appeal, the claims in the proceeding will be limited to those found patentable, and all other claims will be withdrawn from consideration pending cancellation.
The MPEP states:
“Where at least one claim was found patentable and the third party appellant continues its appeal, the claims in the proceeding will be limited to the claim(s) found patentable at the time that the patent owner fails to take the timely action, and all other claims will be withdrawn from consideration pending cancellation of same when the NIRC is issued.”
This process ensures that the reexamination concludes appropriately based on the patentability findings and the actions of both parties.
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