How are excess claims fees handled in inter partes reexamination?

In inter partes reexamination, excess claims fees are handled differently from other fees. If a patent owner fails to pay excess claims fees:

• The new claim “package” in the patent owner’s original request is not entered until the excess claims fee is paid.
• The third party requester cannot comment on the new claim “package” until the patent owner files a supplemental paper paying the required excess claims fee.
• The third party requester has 30 days from the date of service of the patent owner’s paper correcting the excess claims fee deficiency to file comments.

As stated in MPEP 2666.40:

In those instances where there is a failure to pay an excess claims fee by the patent owner, the new claim “package” in patent owner’s original request is not entered until the excess claims fee is paid. Therefore, the requester cannot comment on the new claim “package” until patent owner files a supplemental paper that pays the required excess claims fee.

To learn more:

• inter partes reexamination
• excess claims fees
• patent owner response
• third party comments
• MPEP 2666.40