What 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 to file comments in response to the mere submission of the fee.
• If the patent owner’s response includes arguments along with the fee submission, the third party can comment on the merits of the case.

As stated in MPEP 2666.40:

In some instances, the Office will mail a notice that the original response is incomplete only because a fee (other than a failure to pay excess claims fees) is required for the patent owner to complete the response. In these instances, any 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 to file comments in response to the submission of the fee, because the submission of a fee clearly adds nothing on the merits.

To learn more:

• inter partes reexamination
• incomplete response
• fee requirement
• third party comments
• MPEP 2666.40