Reexam - time to respond

From Patentbarquestions

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.

6. 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).