What happens after a Board decision in an ex parte reexamination?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

After a Board decision in an ex parte reexamination, the examiner follows procedures similar to those outlined in MPEP § 1214 through § 1214.07, with some exceptions specific to reexamination proceedings. The examiner’s actions depend on whether claims are allowed or rejected.

As stated in the MPEP: Claims indicated as allowable but objected to prior to appeal because of their dependency from rejected new or amended claims will be treated as if they were rejected. This means that dependent claims with allowable subject matter but based on rejected new or amended claims would be “objected to” and handled similarly to regular patent applications.

However, it’s important to note that allowable dependent claims based on an unamended patent claim that has been rejected, canceled, or otherwise not subject to reexamination should not be objected to or rejected because of its dependency.