What happens if only a fee is needed to complete a patent owner’s response in inter partes reexamination?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

In inter partes reexamination, if only a fee (other than an excess claims fee to support an amendment) is needed to complete a patent owner’s response, the third party requester is not allowed to file comments after the fee is submitted.

As stated in MPEP 2666.20:

“However, where only a fee (other than an excess claims fee to support an amendment) is needed to complete the response, the third party requester may not file comments after the fee is submitted; see MPEP § 2666.40 for a detailed discussion.”

This rule is an exception to the general allowance for third party requesters to comment on completed responses. It’s important for third party requesters to be aware of this limitation to avoid submitting comments that will be refused consideration.