How are withdrawn rejections handled in inter partes reexamination?

The handling of withdrawn rejections in inter partes reexamination depends on the specific circumstances. According to MPEP 2671.01:

1. When an examiner withdraws a rejection they originally initiated:
   • The withdrawal should be clearly stated as a decision favorable to patentability.
   • The third party requester may propose the withdrawn rejection in their next set of comments.
2. When an examiner withdraws a rejection previously proposed by the third party requester:
   • If claims have not been amended, it’s treated as a refusal to adopt the requester’s proposed rejection.
   • If claims have been amended, it’s generally not considered a refusal to adopt the requester’s proposed rejection, as the rejection was never proposed for the amended claims.

The MPEP notes an exception: “If a claim is amended merely to include a dependent claim that was previously subjected to a proposed requester rejection, and the examiner withdraws that ground of rejection as to the newly amended claim, such would be a refusal to adopt the third party requester’s previously proposed rejection of the dependent claim.“

In cases where the patent owner fails to respond to all actions leading to the Right of Appeal Notice (RAN), the third party requester may appeal the withdrawal of rejection as a final decision favorable to patentability under 37 CFR 41.61(a)(2).

To learn more:

• withdrawn rejections
• inter partes reexamination
• patent examination
• USPTO procedure
• third party requester