37 CFR 1.957: Failure to file a timely, appropriate or complete response or comment in inter partes reexamination

Taken from the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

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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.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (b) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]