Revival of abandoned reexamination

Q) Reexam Extension of Time (10.03.6a)

6. In a reexamination proceeding a non-final Office action dated November 8, 2001 set a shortened statutory

period of 2 months to reply. The patent owner, represented by a registered practitioner, filed a response

on March 7, 2002, which included an amendment of the claims. No request for an extension of time was received.

As of May 8, 2002, which of the following actions would be in accord with the patent laws, rules and

procedures as related in the MPEP?

(A) The registered practitioner should file a request and fee for an extension of time of two months.

(B) The registered practitioner should file a petition for revival of a terminated reexamination

proceeding showing the delay was unavoidable or unintentional, and the appropriate petition fee

for entry of late papers.

(C) The primary examiner responsible for the reexamination should mail a Notice of Allowance and grant

a new patent. The patent owner’s failure to timely respond to the outstanding Office action does not

affect the allowability of the claims in the patent.

(D) The examiner should provide an Office action based upon the claims in existence prior to the patent

owner’s late amendment, and mail a Final Office action.

(E) The registered practitioner should request an extension of time of four months, and file a Notice of Appeal.

ANSWER: (B) is the most correct answer. 37 CFR § 1.137; and MPEP § 2268. The patent owner will need to file

a petition for entry of late papers in order to have their response entered, considered and acted upon.

According to MPEP 2268, “[p]ursuant to 37 CFR 1.550(d), an ex parte reexamination proceeding is terminated if the

patent owner fails to file a timely and appropriate response to any Office . . . An ex parte reexamination

proceeding terminated under 37 CFR 1.550(d) can be revived if the delay in response by the patent . . . was

unavoidable in accordance with 37 CFR 1.137(a), or unintentional in accordance with 37 CFR 1.137(b).”

(A) is not the most correct answer. In a reexamination proceeding, requests for extensions of time must be filed

on or before the day on which action by the patent owner is due pursuant to 37 CFR § 1.550(c). See MPEP § 2265.

(C) is incorrect. (C) is inconsistent with MPEP § 2266, which states that if the patent owner fails to file a

timely response to any Office action, the reexamination proceeding will be terminated, and after the proceeding

is terminated, the Commissioner will proceed to issue a reexamination certificate. There is no provision for

issuing a notice of allowance in a reexamination proceeding. Further, (C) is incorrect inasmuch as the examiner

should not mail a Notice of Allowance and grant a new patent. (D) is not the most correct answer.

In a reexamination proceeding where patent owner fails to file a timely and appropriate response to any Office

action, the reexamination proceeding will be terminated via issuance of the Notice of Intent to Issue Reexamination

Certificate. See MPEP § 2266. (E) is not the most correct answer. In a reexamination proceeding, requests for

extensions of time must be filed on or before the day on which action by the patent owner is due pursuant to

37 C.F.R. § 1.550(c).