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2666.05 Third Party Comments After Patent Owner Response [Added R-2] - 2600 Optional Inter Partes Reexamination
2666.05 Third Party Comments After Patent Owner Response [Added R-2]
37 CFR 1.947 Comments by third party requester to patent owner's response in inter partes reexamination.
Each time the patent owner files a response to an Office action on the merits pursuant to § 1.945, a third party requester may once file written comments within a period of 30 days from the date of service of the patent owner's response. These comments shall be limited to issues raised by the Office action or the patent owner's response. The time for submitting comments by the third party requester may not be extended. For the purpose of filing the written comments by the third party requester, the comments will be considered as having been received in the Office as of the date of deposit specified in the certificate under § 1.8.
37 CFR 1.948 Limitations on submission of prior art by third party requester following the order for inter partes reexamination.
(a) After the inter partes reexamination order, the third party requester may only cite additional prior art as defined under § 1.501 if it is filed as part of a comments submission under § 1.947 or § 1.951(b) and is limited to prior art:
(1) which is necessary to rebut a finding of fact by the examiner;
(2) which is necessary to rebut a response of the patent owner; or
(3) which for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination proceeding. Prior art submitted under paragraph (a)(3) of this section must be accompanied by a statement as to when the prior art first became known or available to the third party requester and must include a discussion of the pertinency of each reference to the patentability of at least one claim.
(b) [Reserved].
I. TIMELINESS
A third party requester may once file written comments on any patent owner response to an Office action, during the examination stage of an inter partes reexamination proceeding. The third party requester comments must be filed within a period of 30 days from the date of service of the patent owner's response on the third party requester. 37 CFR 1.947. The date that the Office receives the patent owner's response has no bearing on the time period for which the third party requester must file the comments.
The certificate of mailing and the certificate of transmission procedures (37 CFR 1.8), and the "Express Mail" mailing procedure (37 CFR 1.10), may be used to file comments. Any comments by the third party requester must be served upon the patent owner in accordance with 37 CFR 1.248, - see also MPEP § 2666.06.
If the third party requester comments are filed after 30 days from the date of service of the patent owner's response on the third party requester, the comments will not be considered. See 37 CFR 1.957(a).
II. CONTENT
The third party requester comments must be directed to points and issues covered by the Office action and/or the patent owner's response. The written comments filed by a third party requester should specify the issues and points in the Office action or the patent owner's response to which each comment is directed. Thus, the third party requester should (A) set forth the point or issue, (B) state the page of the Office action and/or the patent owner response where the point or issue is recited, and (C) then present the third party requester's discussion and argument as to the point or issue. If this is not done by the third party requester, the comments should not be held defective if the examiner can ascertain that all of the comments filed by the third party requester are directed to the issues and points in the Office action and/or the patent owner's response.
Third party requester comments are limited to issues covered by the Office action or the patent owner's response. New prior art can be submitted with the comments only where the prior art (A) is necessary to rebut a finding of fact by the examiner, (B) is necessary to rebut a response of the patent owner, or (C) for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination. Prior art submitted under (C) must be accompanied by a statement as to when the prior art first became known or available to the third party requester, and must include a discussion of the pertinency of each reference to the patentability of at least one claim.
Where the third party requester written comments are directed to matters other than issues and points covered by the Office action or the patent owner's response, or where the prior art submitted with the comments does not satisfy at least one of (A) - (C) above, the written comments are improper. If the written comments are improper, the examiner should return the written comments (the entire paper) with an explanation of what is not proper, and should provide a time period of 30 days for the third party requester to rectify and refile the comments. If, upon the second submission, the comments are still not proper, the comments will be returned to third party with an explanation of what is not proper, and at that point the comments can no longer be resubmitted. The loss of right to submit further comments applies only to the patent owner response at hand. See MPEP § 2666.20.
The practice of giving the third party requester a time period of 30 days to rectify and refile comments that are "responsive but informal" should not be confused with the situation where the third party requester files comments that are late (untimely), or such comments are "inappropriate" within the meaning of 37 CFR 1.957(a) and the time for response has expired. Where the comments are late or inappropriate, an additional 30 days is not given; rather, the comments must be refused consideration pursuant to 37 CFR 1.957(a).
The third party requester is not permitted to file further papers to supplement the third party requester's written comments. Any such improper supplemental comments will not be considered, and will be returned. A third party requester may, however, file written comments to any supplemental response filed by the patent owner.
See MPEP § 2666.20 for the situation where a third party requester elects not to file written comments on a patent owner response.
Where the patent owner does not respond to an Office action, the third party requester is prohibited from filing written comments under 37 CFR 1.947.
Note that a prior art citation which is proper under 37 CFR 1.501 and is submitted by any party as a separate paper and does not include argument and comments and does not go to the merits of the case, will not be returned, but rather will be stored until the present reexamination proceeding is terminated. See MPEP § 2204 and 2206. Also note that prior art returned by the examiner in connection with the third party requester comments as discussed above can be resubmitted as a separate prior art citation under 37 CFR 1.501, and it will be stored until the ongoing reexamination proceeding is terminated.
III. EXAMINER WITHDRAWS A GROUND OF REJECTION
If the examiner withdraws a ground of rejection at any time in the prosecution of the inter partes reexamination proceeding, the third party requester's next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a "rejection proposed by the third party requester." In the event the patent owner fails to respond to all actions leading to the Right of Appeal Notice (RAN), including the Action Closing Prosecution (ACP), and a RAN is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability - see 37 CFR 1.959(a)(2).
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