What 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…

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How are new claims numbered in patent reexamination?

Numbering of new claims in patent reexamination follows these rules: Original patent claims retain their numbers, even if canceled. New claims are numbered sequentially starting after the last original patent claim number. If new claims are canceled, their numbers are not reused for other new claims. At the time of the Notice of Intent to…

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What happens when all claims are canceled in an inter partes reexamination proceeding?

When all claims in an inter partes reexamination proceeding are to be canceled, the following process occurs: The examiner issues a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) indicating that all claims have been canceled and terminating the prosecution. An examiner’s amendment is drafted as an attachment to the NIRC, canceling all…

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How can an applicant withdraw appealed claims?

An applicant can withdraw appealed claims by submitting an amendment that cancels those claims. The MPEP 1215.02 provides guidance on this: “An amendment canceling the appealed claims is equivalent to a withdrawal of the appeal.” This means that if you want to withdraw your appeal for specific claims, you can simply file an amendment canceling…

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What is the significance of MPEP 1302.04(d) in relation to interference proceedings?

MPEP 1302.04(d) serves as a brief reference point for examiners and patent practitioners regarding the cancellation of claims lost in interference. The section states: “Cancellation of Claim Lost in Interference [R-08.2012] See MPEP Chapter 2300.” While this section doesn’t provide detailed information, its significance lies in directing readers to the more comprehensive MPEP Chapter 2300…

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