Can a third party requester comment on a patent owner’s incomplete response?
Yes, a third party requester can comment on a patent owner’s incomplete response. However, the rules for commenting depend on the nature of the incomplete response: If the response is incomplete due to substantive issues, the third party requester can comment on both the original incomplete response and the completed response. If the response is…
Read MoreHow long does a third party requester have to comment on a patent owner’s response in inter partes reexamination?
In inter partes reexamination, the third party requester has a specific timeframe to comment on the patent owner’s response. According to MPEP 2666.40: “The third party requester will be given one opportunity to file written comments on any patent owner response to an Office action, provided that the comments are received in the Office within…
Read MoreCan a third party requester file multiple sets of comments on a patent owner’s response in inter partes reexamination?
No, a third party requester is limited to filing only one set of comments on a patent owner’s response in inter partes reexamination. The MPEP 2666.40 clearly states: “The third party requester will be given one opportunity to file written comments on any patent owner response to an Office action, provided that the comments are…
Read MoreWhat are the rules for third party comments when a patent owner’s response is incomplete due to a fee requirement?
When a patent owner’s response is incomplete solely due to a fee requirement (other than excess claims fees), the rules for third party comments are as follows: Third party requester comments must be filed within 30 days from the date of service of the patent owner’s original response. The third party requester is not permitted…
Read MoreWhat happens if a third party requester’s comments are received late in inter partes reexamination?
If a third party requester’s comments are received after the 30-day deadline in inter partes reexamination, they will not be considered. The MPEP 2666.40 is clear on this matter: “Comments by the third party requester filed after the 30-day period will not be considered.” This strict adherence to the timeline ensures that the reexamination process…
Read MoreWhat is the timeline for patent owner response completion and third party comments in inter partes reexamination?
In inter partes reexamination, the patent owner typically has 30 days or one month (whichever is longer) to complete their response. After the patent owner completes the response, the examiner waits two months before taking action. This allows time for third party requester comments, which are due within 30 days of the date of service…
Read MoreHow 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…
Read MoreWhat happens if the patent owner fails to complete their response in inter partes reexamination?
If the patent owner fails to complete their response within the allotted time in inter partes reexamination, the consequences can be severe. According to MPEP 2666.40: “If the patent owner fails to timely complete the response, the prosecution of the reexamination proceeding will be terminated, and a Notice of Intent to Issue Inter Partes Reexamination…
Read MoreHow is a patent owner’s completed response treated in inter partes reexamination?
In inter partes reexamination, a patent owner’s completed response is generally treated as a new response on-the-merits to the Office action. This treatment has implications for third party requester comments: The third party requester is entitled to respond to the completed response. The requester has 30 days from the date of service of the completed…
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