What 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 found patentable, further prosecution will be limited to those claims and any subsequently added claims that do not expand their scope.

As stated in MPEP 2666.10:

“If no claims are found patentable, and the patent owner fails to file a timely and appropriate response in an inter partes reexamination proceeding, the prosecution in the reexamination proceeding will be a terminated prosecution and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.997 in accordance with the last action of the Office.”

This excerpt summarizes the consequences of non-response when no claims are found patentable.

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Topics: MPEP 2600 - Optional Inter Partes Reexamination, MPEP 2666.10 - Patent Owner Does Not Respond To Office Action, Patent Law, Patent Procedure
Tags: inter partes reexamination, office action, patent claims, Patent Owner Response