MPEP 2666.10
Patent Owner Does Not Respond to Office Action

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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2666.10    Patent Owner Does Not Respond to Office Action [R-11.2013]

37 C.F.R. 1.957 Failure to file a timely, appropriate or complete response or comment in inter partes reexamination.

  • (a) If the third party requester files an untimely or inappropriate comment, notice of appeal or brief in an inter partes reexamination, the paper will be refused consideration.
  • (b) If no claims are found patentable, and the patent owner fails to file a timely and appropriate response in an inter partes reexamination proceeding, the prosecution in the reexamination proceeding will be a terminated prosecution and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.997 in accordance with the last action of the Office.
  • (c) If claims are found patentable and the patent owner fails to file a timely and appropriate response to any Office action in an inter partes reexamination proceeding, further prosecution will be limited to the claims found patentable at the time of the failure to respond, and to any claims added thereafter which do not expand the scope of the claims which were found patentable at that time.
  • (d) When action by the patent owner is a bona fide attempt to respond and to advance the prosecution and is substantially a complete response to the Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, an opportunity to explain and supply the omission may be given.

I.    OFFICE ACTION PRIOR TO ACTION CLOSING PROSECUTION

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 set forth in 37 CFR 1.957(b) or (c):

  • (A) 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. See MPEP § 2687.
  • (B) 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:
    • (1) Any claims under rejection or objection are withdrawn from consideration and will be canceled upon publication of the certificate; and
    • (2) 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 ACP will set a period for the patent owner response and the third party requester comments under 37 CFR 1.951. See also MPEP §§ 2671.02 and 2671.03.

II.    ACTION CLOSING PROSECUTION

A response to an ACP is not required. Where the patent owner does not respond to an ACP, the Office will issue an Right of Appeal Notice (see MPEP § 2673.02) in due course. Accordingly, the consequences of 37 CFR 1.957(b) and (c), do NOT apply to the patent owner’s failure to respond to an ACP.

III.    RIGHT OF APPEAL NOTICE AND APPEAL

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:

  • (A) 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. See MPEP § 2687.
  • (B) 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. See MPEP § 2687.
  • (C) 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.

IV.    FAILURE OF THIRD PARTY REQUESTER TO TIMELY SUBMIT PAPER

See MPEP § 2666.20 for a discussion of the consequences where the third party requester fails to timely submit a paper where a time period is set for same.