MPEP 2666.40
Patent Owner Completion of Response and Third Party Comments Thereon

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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2666.40    Patent Owner Completion of Response and Third Party Comments Thereon [R-07.2015]

In most cases, the patent owner will have 30-days or one month (whichever is longer) to complete the response. After the owner completes the response, the examiner will wait two months from the date of service of the patent owner’s completion of the response, and then take up the case for action, since the 30 days for the third party requester comments on the response as completed will have expired by that time.

The third party requester may file comments on the Office action and the response as completed within 30 days of the date of service of the completed response. This is true whether or not the third party requester filed comments on the original response that was incomplete. 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.

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. An example of this would be where a terminal disclaimer is newly required in a reexamination proceeding and is submitted, but the fee is inadvertently omitted. The response would then be incomplete only as to the omitted fee. Any third party requester comments on the response including the terminal disclaimer must be filed within 30 days from the date of service of the patent owner’s response on the third party requester. Where the patent owner then completes the response by paying the fee, the third party requester is not permitted to then comment. However, if the patent owner’s response is not limited to the bare submission of the fee, i.e., if the response also includes argument, then the third party can comment since the patent owner has addressed the merits of the case.

In those instances where there is a failure to pay an excess claims fee by the patent owner, the new claim "package" in patent owner’s original request is not entered until the excess claims fee is paid. Therefore, the requester cannot comment on the new claim "package" until patent owner files a supplemental paper that pays the required excess claims fee. Thus, the third party requester comments may be filed within 30 days from the date of service of the patent owner’s response or paper correcting the excess claims fee deficiency.