What happens if a patent owner doesn’t file a submission after an ACP?
If a patent owner doesn’t file a submission after an Action Closing Prosecution (ACP) in inter partes reexamination, the following occurs: The third party requester is precluded from filing comments under 37 CFR 1.951(b) A Right of Appeal Notice (RAN) will be issued The patent owner does not lose any rights of appeal MPEP 2672…
Read MoreWhat happens if a patent owner doesn’t respond to a new ground of rejection?
If a patent owner does not respond to a new ground of rejection issued by the Board, the consequences are outlined in MPEP 2682: If the patent owner does not request, or does not properly request, rehearing or reopening of prosecution in accordance with 37 CFR 41.77(b), the Board may terminate the appeal proceeding as…
Read MoreWhat are the consequences of not filing a respondent brief in inter partes reexamination?
The MPEP 2675.01 outlines the consequences of not filing a respondent brief in inter partes reexamination: “If no respondent brief is filed, the reexamination will proceed to the Board for decision based upon the appellant’s brief and the examiner’s answer.” This means that: The absence of a respondent brief does not halt the reexamination process…
Read MoreWhat happens if a respondent brief does not comply with the requirements?
If a respondent brief fails to meet the requirements set forth in 37 CFR 41.68(a) and (b), the following process occurs: The respondent will be notified of the non-compliance reasons. The respondent will be given a non-extendable time period to file an amended brief. If the respondent fails to file an amended brief within the…
Read MoreWhat are the consequences of failing to file a timely appellant brief?
Failing to file a timely appellant brief in an inter partes reexamination can have serious consequences. The MPEP states: “Failure to timely file the appellant brief and fee within the time allowed will result in dismissal of the appeal of the party that failed to take the timely action.” Furthermore: If all parties who filed…
Read MoreWhat happens if the statement applying prior art is insufficient in an inter partes reexamination request?
If the statement applying prior art in an inter partes reexamination request is insufficient, the request may be denied. The MPEP 2617 explains: “If the required statement applying the prior art is not included in the request, the request will be denied.” An insufficient statement could include: Failing to address all claims for which reexamination…
Read MoreWhat are the consequences of failing to complete a response after notification in inter partes reexamination?
If a patent owner fails to complete a response after being notified of deficiencies, there can be serious consequences. According to MPEP 2666.30: “The patent owner must then supply the omission within the new time period for response or any extensions under 37 CFR 1.956 thereof to avoid termination of the prosecution (pursuant to 37…
Read MoreWhat happens if the patent owner fails to complete their response in inter partes reexamination?
If the patent owner fails to complete their response within the allotted time in inter partes reexamination, the consequences can be severe. According to MPEP 2666.40: “If the patent owner fails to timely complete the response, the prosecution of the reexamination proceeding will be terminated, and a Notice of Intent to Issue Inter Partes Reexamination…
Read MoreWhat happens if a requester fails to complete an inter partes reexamination request within the specified time?
If a requester fails to complete an inter partes reexamination request within the specified time, the USPTO takes specific actions: The request is not granted. The incomplete request papers are placed in the patent file. The fee paid is refunded, with certain exceptions. MPEP 2626 states: “Where the request is not granted, the request papers…
Read MoreWhat happens if a party fails to serve documents in an inter partes reexamination?
Failure to serve documents in an inter partes reexamination can have serious consequences. According to MPEP 2666.06: “The failure of the patent owner or the third party requester to serve documents may result in their being refused consideration.” If the USPTO becomes aware that service was not made, they will typically issue a notice using…
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