What are the content limitations for third party requester comments in inter partes reexamination?

Third party requester comments in inter partes reexamination are subject to specific content limitations. According to the MPEP:

“The third party requester comments must be directed to points and issues covered by the Office action and/or the patent owner’s response. The written comments filed by a third party requester should specify the issues and points in the Office action or the patent owner’s response to which each comment is directed.”

Additionally, new prior art can only be submitted with the comments under specific circumstances, as outlined in 37 CFR 1.948:

• To rebut a finding of fact by the examiner
• To rebut a response of the patent owner
• If it became known or available to the third party requester after filing the reexamination request

Comments that go beyond these limitations may be considered improper and returned or expunged from the record.

To learn more:

• inter partes reexamination
• third party requester
• comments content
• limitations
• prior art submission