2666.60 Response by Patent Owner/Third Party to Notice of Defective Paper [R-07.2015]
The patent owner and/or the third party requester will be given a time period of one month or thirty days, whichever is longer, from the mailing date of the notice of defective paper, except as provided in MPEP §§ 2666.05 and 2667, or the time remaining in the response/comments period set in the last Office action to correct the defect in a submission. If, in response to the notice, the defect still is not corrected, the submission will not be entered. If the failure to comply with the notice results in a patent owner failure to file a timely and appropriate response to any Office action, the prosecution of the reexamination proceeding will be terminated under 37 CFR 1.957(b) or limited under 37 CFR 1.957(c) (as is appropriate for the case).
After the patent owner or the third party requester has provided a submission directed solely to correcting the defect, the other party is not permitted to comment on the submission correcting the defect if the submission correcting the defect is directed to form and does not go to the merits of the case. This would be the case, for example, where the failure to provide a signature on an affidavit or a certificate of service, or the failure to pay a fee (other than excess claims fee), is corrected.
In the case of correcting a defective amendment or paying an excess claims fee, however, other issues come into play. For example, new claims 10-20 are improperly presented in a patent owner response (e.g., not properly underlined) and form PTOL-2069 (Box 4) is used to notify the patent owner that the claim amendments are not entered and the need to correct this defect. In this situation, until the defect is corrected, claims 10-20 do not yet exist in the proceeding for the third party requester to comment on. Likewise, any argument that was directed to such claims is not truly ripe for the third party requester comment. After the patent owner corrects the defect, claims 10-20 come into existence in the proceeding, and the argument presented by the patent owner becomes relevant. At this point, the third party requester has a right to provide comments in response to the Office action and patent owner’s argument, whether or not the argument that was included in the original patent owner submission is re-presented with the paper correcting the defect. Thus, any third party requester comments submitted either in response to the patent owner’s initial paper (presenting the informal claims) or in response to the patent owner’s supplemental paper (correcting the informality) will be considered by the examiner.
Any submission correcting the defect which provides a discussion of the merits should (A) set forth that discussion separately from the portion of the response that corrects the defect, and (B) clearly identify the additional discussion as going to the merits. The additional discussion going to the merits must, in and of itself, have an entry right, or the entire submission will be returned to the party that submitted it, and one additional opportunity (30-days or one month, whichever is longer) will be provided, to correct the defect without a discussion of the merits. If the portion directed to the merits is not clearly delineated and identified, the entire submission may be returned to the party that submitted it, and one additional opportunity (30-days or one month, whichever is longer) is then given for that party to correct the defect without intermixed discussion of the merits. The examiner may, however, choose to permit entry of such a paper.