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2666.60 Response by Patent Owner/Third Party to Notice of Defective Paper [Added R-2] - 2600 Optional Inter Partes Reexamination
2666.60 Response by Patent Owner/Third Party to Notice of Defective Paper [Added R-2]
The patent owner and/or the third party requester will be given a time period of 30-days or one month from the mailing date of the notice of defective paper or the time remaining in the response/comments period set in the last Office action, whichever is longest, 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. Where the defect is not corrected within the time permitted by the notice, the submission will not be considered, except for the case of an improper amendment which does not comply with 37 CFR 1.530(d)-(j). The amendment directed by the submission will not be entered; however, the argument (presented in the submission) will be considered as best it can be applied to the case without entry of the amendment. Thus, the patent owner will still be considered to have responded to the Office action (though the response might be incomplete).
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, since 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 or a certificate of service is corrected, or where a permanent copy is submitted to replace an "easily erasable" paper that was originally submitted.
In the case of correcting a defective amendment, however, other issues come into play. Where for example, new claims 10-20 are improperly presented in a patent owner response (e.g., not properly underlined), they generally will not be entered and form PTOL-2069 (Box 4) will be used to notify the patent owner of the need to correct this defect. 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 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.
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