What options does a patent owner have if they disagree with a final rejection in reexamination?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-30

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.

If a patent owner disagrees with a final rejection in reexamination, they have several options:

  • File a petition under 37 CFR 1.181 requesting that the final rejection be withdrawn and prosecution be reopened.
  • File a petition under 37 CFR 1.181 requesting entry of an amendment that was refused by the examiner.
  • File a notice of appeal.

The MPEP states: The petition under 37 CFR 1.181 must be filed within the time period for filing a notice of appeal. Note that the filing of a petition under 37 CFR 1.181 does not toll the time period for filing a notice of appeal.

It’s important for patent owners to carefully consider their options and act within the specified time periods to preserve their rights.

Topics: MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents MPEP 2272 - After Final Practice Patent Law Patent Procedure
Tags: Appeal Notice Filing, appeals, first office action, Reexamination Order, Reinstatement Petition