MPEP Q & A 116: Consequence That May Result Where Patent Owner Fails to Make Timely Appeal After the Issuance of a Right of Appeal Notice

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Question:

What is one consequence that may result where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is subsequently dismissed?

Answer:

Where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is subsequently dismissed, the following consequences would result:

  • If no claim was found patentable at the time that the patent owner fails to take the timely action, a NIRC will immediately be issued.
  • Where at least one claim was found patentable and the third party requester does not appeal, or fails to continue its appeal, the prosecution of the reexamination proceeding should be terminated. In order to do so, a NIRC will be issued.
  • Where at least one claim was found patentable and the third party appellant continues its appeal, the claims in the proceeding will be limited to the claim(s) found patentable at the time that the patent owner fails to take the timely action, and all other claims will be withdrawn from consideration pending cancellation of same when the NIRC is issued. Any future prosecution is limited to the claims that do not expand the scope of the claim(s) found patentable at that time.

Chapter Details:

The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers Optional Inter Partes Reexamination.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2666.10 of the MPEP.  The following is a brief summary of section 2666.10.

2666.10 Patent Owner Does Not Respond to Office Action

This section covers instances when the patent owner does not respond to an Office action. The consequences are outlined for when a patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP) and where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is subsequently dismissed.