MPEP Q & A 165: When Patent Owner Fails to File Timely Response to Any Office Action Prior to an Action Closing Prosecution (ACP)

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Question:

List one consequence for when the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP).

Answer:

If the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP), it will result in the following consequences:

  • Where there were no claims found patentable in the Office action, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) terminating prosecution and indicating the status of the claims as canceled.
  • Where at least one claim is found patentable, all future prosecution will be limited to the claim(s) found patentable at the time of the failure to respond and to claims which do not expand the scope of the claim(s) found patentable at that time.
  • The patent owner will not be permitted to add claims broader in the scope than the patentable claims which remain in the proceeding at the time of the patent owner’s failure to timely respond.
  • The examiner will proceed to issue an ACP indicating that:
    • Any claims under rejection or objection are withdrawn from consideration and will be canceled upon publication of the certificate; and
    • Prosecution will be limited to the claim(s) found patentable at the time of the failure to respond and to claims which 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 08.2017. 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.