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 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 are the consequences of failing to complete a response after notification in inter partes reexamination?
If a patent owner fails to complete a response after being notified of deficiencies, there can be serious consequences. According to MPEP 2666.30: “The patent owner must then supply the omission within the new time period for response or any extensions under 37 CFR 1.956 thereof to avoid termination of the prosecution (pursuant to 37…
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 MoreWhat form paragraph can be used for a bona fide incomplete reply?
For a bona fide incomplete reply, examiners can use form paragraph 7.95. The MPEP states: “Where the reply is a bona fide reply, form paragraph 7.95 may be used.” Form paragraph 7.95 is titled “Bona Fide, Non-Responsive Amendments” and provides a template for examiners to communicate with applicants about incomplete responses while giving them an…
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