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

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.

To learn more:

• inter partes reexamination
• patent owner response
• Office action
• patent claims