How 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 response to file comments.
As stated in MPEP 2666.40:
Except as provided in the paragraph below, the response as completed is treated as a new response on-the-merits to the Office action; thus, the third party requester is entitled to respond and has 30 days to do so.
However, there are exceptions to this rule, particularly when the incomplete response was due solely to a fee requirement, as discussed in other FAQs.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2666.40 - Patent Owner Completion Of Response And Third Party Comments Thereon,
Patent Law,
Patent Procedure