What happens if the Board affirms a rejection of some claims but reverses others in inter partes reexamination?
What happens if the Board affirms a rejection of some claims but reverses others in inter partes reexamination?
In inter partes reexamination, when the Board issues a decision that affirms some rejections while reversing others, the examiner must follow specific procedures. According to MPEP 2674:
“Where the Board decision affirms a rejection of some claims but reverses the examiner in whole or in part as to other claims, the examiner must do the following:
- (A) If the examiner determines that any rejected claims are now allowable, the examiner should enter the Board decision, cancel the rejected claims, enter the allowed claims, and issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC).
- (B) If the examiner determines that any rejected claims are not allowable, the examiner should enter the Board decision and issue an Office action setting a two-month shortened statutory period for patent owner’s response.”
This process ensures that the examiner takes appropriate action based on the Board’s decision, either moving forward with allowable claims or providing the patent owner an opportunity to respond to maintained rejections.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2674 - Appeal In Inter Partes Reexamination,
Patent Law,
Patent Procedure