Question 1

What are the consequences of failing to respond to a 37 CFR 1.251 notice?

Accepted Answer

The consequences of failing to respond to a 37 CFR 1.251 notice differ for pending applications and granted patents:

For pending applications: Failure to reply within the set time period will result in abandonment of the application. MPEP 508.04 cites 37 CFR 1.251(b): "With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application."
For granted patents: While the patent won't expire, there may be limitations on the certified copy of the patent file that the Office can produce. MPEP 508.04 states: "While abandonment (or expiration) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent)."

Additionally, for patents involved in proceedings before the Office, action may be taken under 37 CFR 41.128 or 37 CFR 11.18.

Question 2

What are the consequences of failing to respond to a 37 CFR 1.251 notice?

Accepted Answer

The consequences of failing to respond to a 37 CFR 1.251 notice differ for pending applications and granted patents:

For pending applications: Failure to reply within the set time period will result in abandonment of the application. MPEP 508.04 cites 37 CFR 1.251(b): "With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application."
For granted patents: While the patent won't expire, there may be limitations on the certified copy of the patent file that the Office can produce. MPEP 508.04 states: "While abandonment (or expiration) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent)."

Additionally, for patents involved in proceedings before the Office, action may be taken under 37 CFR 41.128 or 37 CFR 11.18.