What happens to rejected claims if a patent owner fails to respond to an Office action in inter partes 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.

When a patent owner fails to respond to an Office action in inter partes reexamination, the fate of rejected claims depends on whether any claims were found patentable. According to MPEP 2666.10:

• If no claims were found patentable, all claims under rejection will be canceled upon issuance of the reexamination certificate.
• If at least one claim was found patentable, the rejected claims will be withdrawn from consideration and will be canceled upon publication of the certificate.

Specifically, the MPEP states:

“Any claims under rejection or objection are withdrawn from consideration and will be canceled upon publication of the certificate.”

This process ensures that only claims determined to be patentable remain in force after the reexamination proceeding concludes, provided the patent owner has not responded to defend the rejected claims.