2666.20 Third Party Does Not Comment After Patent Owner Response [R-07.2015]

37 CFR 1.957  Failure to file a timely, appropriate or complete response or comment in inter partes reexamination.

  • (a) If the third party requester files an untimely or inappropriate comment, notice of appeal or brief in an inter partes reexamination, the paper will be refused consideration.


Where a third party requester does not timely file written comments on a patent owner response, any subsequent submission of comments on that response will be refused consideration. The third party requester does not, however, lose any rights as to commenting on future patent owner responses. The failure to file the comments applies only to the specific response which the third party requester elects not to comment upon.

Note that where the third party requester did not file comments on a patent owner response that was determined by the Office to be incomplete and the Office provides the patent owner additional time to complete the response, the third party requester may file comments on the response once it is completed (by patent owner’s submission of a supplemental response), provided the comments are filed within 30 days from the date of service of the supplemental response. However, where only a fee (other than an excess claims fee to support an amendment) is needed to complete the response, the third party requester may not file comments after the fee is submitted; see MPEP § 2666.40 for a detailed discussion.

Where the third party requester fails to make a timely appeal or the third party requester’s appeal is dismissed, the third party requester loses further rights as the appellant in the appeal. However, where a patent owner appellant continues its appeal, the third party requester as the respondent can file a respondent brief. Also, the third party requester can enter the appeal pursuant to 37 CFR 41.77(c) and (e) (submission after a Board decision). See MPEP § 2682. In addition, the third party requester can comment on any subsequent patent owner response to any Office action, where the action is issued after the appeal.

Where the third party requester fails to timely appeal, or the requester’s appeal is dismissed, and no other appeal is pending in the proceeding, the prosecution of the reexamination proceeding should be terminated by the issuance of a NIRC.