How does the USPTO handle inadvertent omissions in a patent owner’s response during inter partes reexamination?
The USPTO recognizes that sometimes a patent owner’s response may inadvertently omit certain matters or requirements while still being a bona fide attempt to respond and advance prosecution. In such cases, the USPTO may provide an opportunity for the patent owner to address the omission. According to MPEP 2666.10: “When action by the patent owner…
Read MoreHow does the USPTO handle an untimely or inappropriate comment from a third party requester in inter partes reexamination?
According to MPEP 2666.10, if a third party requester files an untimely or inappropriate comment, notice of appeal, or brief in an inter partes reexamination, the USPTO will refuse consideration of the paper. Specifically: “If the third party requester files an untimely or inappropriate comment, notice of appeal or brief in an inter partes reexamination,…
Read MoreWhat happens to rejected claims if a patent owner fails to respond to an Office action in inter partes reexamination?
When a patent owner fails to respond to an Office action in inter partes reexamination, the fate of rejected claims depends on whether any claims were found patentable. According to MPEP 2666.10: If no claims were found patentable, all claims under rejection will be canceled upon issuance of the reexamination certificate. If at least one…
Read MoreWhat is the process when a patent owner fails to respond to an Action Closing Prosecution (ACP) in inter partes reexamination?
When a patent owner fails to respond to an Action Closing Prosecution (ACP) in inter partes reexamination, the consequences are different from those of failing to respond to other Office actions. According to MPEP 2666.10: “A response to an ACP is not required. Where the patent owner does not respond to an ACP, the Office…
Read MoreWhat 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…
Read MoreWhat 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…
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