Third Party Submissions Under 37 CFR 1.290

37 CFR 1.290 Submissions by third parties in applications.

(a) A third party may submit, for consideration and

entry in the record of a patent application, any patents, published patent

applications, or other printed publications of potential relevance to the

examination of the application if the submission is made in accordance with

35 U.S.C. 122(e)

and this section. A third-party

submission may not be entered or considered by the Office if any part of the

submission is not in compliance with

35 U.S.C.

122(e)

and this section.

(b) Any third-party submission under this section

must be filed prior to the earlier of:

(1) The date a notice of allowance under

§

1.311

is given or mailed in the application; or

(2) The later of:

(i) Six months after the date on which

the application is first published by the Office under

35 U.S.C.

122(b)

and

§

1.211

, or

(ii) The date the first rejection under

§ 1.104

of any

claim by the examiner is given or mailed during the examination of

the application.

(c) Any third-party submission under this section

must be made in writing.

(d) Any third-party submission under this section

must include:

(1) A document list identifying the documents,

or portions of documents, being submitted in accordance with paragraph

(e) of this section;

(2) A concise description of the asserted

relevance of each item identified in the document list;

(3) A legible copy of each item identified in

the document list, other than U.S. patents and U.S. patent application

publications;

(4) An English language translation of any

non-English language item identified in the document list; and

(5) A statement by the party making the

submission that:

(i) The party is not an individual who

has a duty to disclose information with respect to the application

under § 1.56; and

(ii) The submission complies with the

requirements of

35 U.S.C.

122(e)

and this section.

pplication

publications;

(4) An English language translation of any

non-English language item identified in the document list; and

(5) A statement by the party making the

submission that:

(i) The party is not an individual who

has a duty to disclose information with respect to the application

under § 1.56; and

(ii) The submission complies with the

requirements of

35 U.S.C.

122(e)

and this section.

(e) The document list required by paragraph (d)(1)

of this section must include a heading that identifies the list as a

third-party submission under

§ 1.290

, identify on each

page of the list the application number of the application in which the

submission is being filed, list U.S. patents and U.S. patent application

publications in a separate section from other items, and identify each:

(1) U.S. patent by patent number, first named

inventor, and issue date;

(2) U.S. patent application publication by

patent application publication number, first named inventor, and

publication date;

(3) Foreign patent or published foreign patent

application by the country or patent office that issued the patent or

published the application; the applicant, patentee, or first named

inventor; an appropriate document number; and the publication date

indicated on the patent or published application; and

(4) Non-patent publication by author (if any),

title, pages being submitted, publication date, and, where available,

publisher and place of publication. If no publication date is known, the

third party must provide evidence of publication.

(f) Any third-party submission under this section

must be accompanied by the fee set forth in

§

1.17(o)

for every ten items or fraction thereof

identified in the document list.

ublication by author (if any),

title, pages being submitted, publication date, and, where available,

publisher and place of publication. If no publication date is known, the

third party must provide evidence of publication.

(f) Any third-party submission under this section

must be accompanied by the fee set forth in

§

1.17(o)

for every ten items or fraction thereof

identified in the document list.

(g) The fee otherwise required by paragraph (f) of

this section is not required for a submission listing three or fewer total

items that is accompanied by a statement by the party making the submission

that, to the knowledge of the person signing the statement after making

reasonable inquiry, the submission is the first and only submission under

35 U.S.C. 122(e)

filed in the application by the party

or a party in privity with the party.

(h) In the absence of a request by the Office, an

applicant need not reply to a submission under this section.

(i) The provisions of

§ 1.8

do

not apply to the time periods set forth in this section.

Section 8 of the America Invents Act (AIA) amends

35 U.S.C.

122

by adding

35 U.S.C. 122(e)

, which provides a

mechanism for third parties to submit printed publications in another party’s patent

application.

35 U.S.C. 122(e)

is implemented by

37 CFR

1.290

, which replaces

37 CFR 1.99

. See

Changes To

Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith

America Invents Act,

77 Fed. Reg. 42150 (July 17, 2012) (final rule).

Third-party submissions under

37 CFR 1.99

were eliminated as of

September 16, 2012.

I.

TIMELINESS REQUIREMENT

37 CFR

1.290(b)

sets forth the time periods in which a third party may

file a third-party submission. While there is no limit on the number of submissions

that one third party may make in an application, a third-party submission must be

filed prior to the earlier of:

(1) The date a notice of allowance under

37 CFR

1.311

is given or mailed in the application; or

(2) The later of:

LINESS REQUIREMENT

37 CFR

1.290(b)

sets forth the time periods in which a third party may

file a third-party submission. While there is no limit on the number of submissions

that one third party may make in an application, a third-party submission must be

filed prior to the earlier of:

(1) The date a notice of allowance under

37 CFR

1.311

is given or mailed in the application; or

(2) The later of:

(i) Six months after the date on which the

application is first published by the Office under

35 U.S.C.

122(b)

and

37 CFR 1.211,

or

(ii) The date the first rejection under

37

CFR 1.104

of any claim by the examiner is given or

mailed during the examination of the application.

Thus, a third-party submission cannot be filed in an

application where a notice of allowance has been issued in the application,

regardless of whether that notice of allowance is subsequently withdrawn. If a notice

of allowance has not been issued in an application, a third-party submission may be

filed prior to the date that is six months after the date of publication by the

Office or prior to the date of the first rejection of any claim by the examiner,

whichever is later.

The

37 CFR 1.290(b)(2)(i)

time period

will be initiated only by publications “by the Office” under

35 U.S.C. 122

and

37 CFR

1.211.

Thus, this time period will not be initiated by a

publication by the World Intellectual Property Organization (WIPO). For example,

publication under the Patent Cooperation Treaty by WIPO of an international

application is not a publication that would trigger the

37 CFR

1.290(b)(2)(i)

time period for a national stage application

under

35 U.S.C.

371

. Likewise, publication under the Geneva Act of the Hague

Agreement Concerning the International Registration of Industrial Designs by WIPO of

an international registration is not a publication that would trigger the

37 CFR

1.290(b)(2)(i)

time period for a nonprovisional international

design application

gger the

37 CFR

1.290(b)(2)(i)

time period for a national stage application

under

35 U.S.C.

371

. Likewise, publication under the Geneva Act of the Hague

Agreement Concerning the International Registration of Industrial Designs by WIPO of

an international registration is not a publication that would trigger the

37 CFR

1.290(b)(2)(i)

time period for a nonprovisional international

design application.

Additionally, the first publication of the

application by the Office will trigger the

37 CFR

1.290(b)(2)(i)

time period where appropriate. The republication

of an application under

37 CFR 1.221(b)

is not the

“first” publication by the Office under

35 U.S.C.122(b)

for purposes of

35

U.S.C. 122(e)

. Where the Office does not publish an

application, the date that is six months after the publication date would not occur

and, therefore, by default would be considered later than both the date of a first

rejection of any claim and the date the notice of allowance is given or mailed in the

application. Accordingly, the date that a notice of allowance is given or mailed in

the application would control the timing of a third-party submission in an

application which has not been published, not the date of the first rejection of any

claim.

The

37 CFR 1.290(b)(2)(ii)

time

period will be initiated by the date the first rejection under

37 CFR 1.104

of

any claim by the examiner is given or mailed during the examination of the

application. “Given” refers to the electronic notification of an Office action that

replaces postal mailing of an Office action for applicants participating in the

Electronic Office Action Notification (e-Office Action) program. The

37 CFR

1.290(b)(2)(ii)

time period will not be initiated, for example,

by a first Office action that only contains a restriction requirement or where the

first Office action is an action under

Ex parte Quayle,

1935 Dec.

Comm’r Pat. 11 (1935).

The filing of an RCE does not reset the

37 CFR

ction for applicants participating in the

Electronic Office Action Notification (e-Office Action) program. The

37 CFR

1.290(b)(2)(ii)

time period will not be initiated, for example,

by a first Office action that only contains a restriction requirement or where the

first Office action is an action under

Ex parte Quayle,

1935 Dec.

Comm’r Pat. 11 (1935).

The filing of an RCE does not reset the

37 CFR

(b)(2)(ii)

time period for filing a third-party submission.

Additionally, the filing of an RCE in an application does not preclude a third party

from making a third-party submission in the application, if the third-party

submission is made within the time periods set forth in

37 CFR

1.290(b)(2)

.

All third-party submissions must be filed prior to,

not on, the dates identified in

37 CFR 1.290(b)(1)

and

(b)(2)

. For example, assuming no notice of allowance has been

issued in an application, if a third-party submission is filed on the same date the

first rejection is mailed and the application has been published for more than six

months, the submission would not be timely and would not be entered. In another

example, assuming no notice of allowance has been issued in an application, if a

third-party submission is filed on the date that is six months after the date the

Office published the application and a first rejection has already been mailed, the

submission would not be timely and would not be entered (i.e., if the Office

published the application on May 21, a third-party submission filed on November 21,

which is the date that is six months after the date the Office published the

application, would not be timely as, according to the rule, the submission would need

to have been made on November 20 or earlier).

A.

Time Periods Are Statutory and Cannot Be Waived

The time periods provided for in

37 CFR

1.290(b)

are statutory and cannot be waived. See

35

U.S.C. 122(e)(1)

. Thus, the Office cannot grant any request

for extension of the

37 CFR 1.290(b)

time periods

published the

application, would not be timely as, according to the rule, the submission would need

to have been made on November 20 or earlier).

A.

Time Periods Are Statutory and Cannot Be Waived

The time periods provided for in

37 CFR

1.290(b)

are statutory and cannot be waived. See

35

U.S.C. 122(e)(1)

. Thus, the Office cannot grant any request

for extension of the

37 CFR 1.290(b)

time periods.

Third-party submissions that are not timely filed will not be entered or

considered and will be discarded.

The statutory time period for making a third-party

submission will not be tolled by a non-compliant submission. Accordingly, making a

third-party submission at the earliest opportunity increases the likelihood there

will be sufficient time to make a resubmission should the initial submission be

found non-compliant. A third party who previously filed a non-compliant submission

may file another complete submission, provided the statutory time period for

filing a third-party submission has not closed.

The abandonment of an application will not toll the

statutory time period for making a third-party submission. For example, if prior

to publication an application goes abandoned because the applicant fails to timely

respond to a first rejection of any claim, and the application is later revived, a

third-party submission would be timely if made prior to the earlier of: the date a

notice of allowance is given or mailed or the date that is six months after the

date the application is published by the Office.

B.

A Third-Party Submission Is Filed On Its Date of Receipt in the

Office

A third-party submission under

37 CFR

1.290

is filed on its date of receipt in the Office as set

forth in

37 CFR

1.6

. The holiday/weekend rule set forth in

37 CFR

1.7(a)

applies to a third-party submission under

37

CFR 1.290

or mailed or the date that is six months after the

date the application is published by the Office.

B.

A Third-Party Submission Is Filed On Its Date of Receipt in the

Office

A third-party submission under

37 CFR

1.290

is filed on its date of receipt in the Office as set

forth in

37 CFR

1.6

. The holiday/weekend rule set forth in

37 CFR

1.7(a)

applies to a third-party submission under

37

CFR 1.290

. For example, if the day prior to the date that is

six months after publication of an application which has not been allowed but

which application was subject to a first Office action including a rejection of at

least one claim more than six month previously is a Saturday, the submission may

be timely filed on the next business day, e.g., the following Monday via Priority

Mail Express

®

service pursuant to

37 CFR 1.10

,

hand delivery or preferably via the Office’s dedicated web-based interface for

preissuance submissions in Patent Center.

See also

Subsection

IV.D. below (providing that the certificate of mailing and transmission provisions

of

37 CFR

1.8

do not apply, but the United States Postal Service

(USPS) Priority Mail Express

®

service provisions of

37 CFR

1.10

do apply to a third-party submission under

37

CFR 1.290

.

II.

CONTENT REQUIREMENTS FOR A THIRD-PARTY SUBMISSION

37 CFR

1.290(d)

identifies the required content of a third-party

submission as follows:

(A) a document list, identifying the publications, or portions of

publications, submitted (form PTO/SB/429 or an equivalent document list for

paper submissions only; a completed form PTO/SB/429 is automatically generated

for electronic submissions);

(B) a concise description of the asserted relevance of each item

identified in the document list;

(C) a legible copy of each item identified in the document list,

other than U.S. patents and U.S

tions, or portions of

publications, submitted (form PTO/SB/429 or an equivalent document list for

paper submissions only; a completed form PTO/SB/429 is automatically generated

for electronic submissions);

(B) a concise description of the asserted relevance of each item

identified in the document list;

(C) a legible copy of each item identified in the document list,

other than U.S. patents and U.S. patent application publications;

(D) an English language translation of any non-English language

item identified in the document list;

(E) a statement by the party making the submission that:

a) the party is not an individual who has a

duty to disclose information with respect to the application under

37 CFR 1.56

; and

b) the submission complies with the

requirements of

35 U.S.C. 122(e)

and

37 CFR 1.290

; and

(F) any required fee or the

37 CFR

1.290(g)

statement that the fee exemption applies to the

submission.

A.

Document List

37 CFR

1.290(d)(1)

provides that any third-party submission under

37

CFR 1.290

must include a document list identifying the

documents, or portions of documents, being submitted in accordance with

37

CFR 1.290(e)

.

37 CFR 1.290(e)

sets forth the

requirements for identifying the items in the

37 CFR

1.290(d)(1)

document list. Because

37 CFR

1.290(d)(1)

provides for an item identified in the document

list to be either an entire document or a portion of a document, in the case where

a lengthy document contains both information of potential relevance to the

examination of the application and other information that is not of potential

relevance, a third party may choose to identify only the relevant portion of the

document (e.g., one chapter of a textbook) in lieu of the entire document where it

is practical to do so. Otherwise, the third party should identify the entire

document.

1.

Form PTO/SB/429

When filing in paper, third parties may use form

PTO/SB/429 (or equivalent) to prepare the document list in accordance with

37 CFR 1.290(d)(1)

and

37 CFR

1.290(e)

se to identify only the relevant portion of the

document (e.g., one chapter of a textbook) in lieu of the entire document where it

is practical to do so. Otherwise, the third party should identify the entire

document.

1.

Form PTO/SB/429

When filing in paper, third parties may use form

PTO/SB/429 (or equivalent) to prepare the document list in accordance with

37 CFR 1.290(d)(1)

and

37 CFR

1.290(e)

. Electronic filing via the Office’s dedicated

web-based interface for preissuance submissions in the USPTO patent electronic

filing system is an alternative to paper filing using form PTO/SB/429 (or

equivalent). Use of this form will not be necessary for third-party submissions

filed electronically via the Office’s dedicated web-based interface for

preissuance submissions, as this interface will prompt the third party to

complete the fields that are provided on the form and will automatically format

the entered information into an electronic version of the form PTO/SB/429 for

electronic submission. While use of form PTO/SB/429 is not required for paper

submissions, form PTO/SB/429 is designed to help ensure that important

requirements are not overlooked, such as the document listing requirements

pursuant to

37 CFR 1.290(e)

and the

required statements pursuant to

37 CFR 1.290(d)(5)

. The

form PTO/SB/429 also enables the third party to indicate whether a fee is due

or to select the “first and only” statement pursuant to

37 CFR

1.290(g)

where the fee exemption applies. Form PTO/SB/429

and instructions for completion are available on the USPTO website at

www.uspto.gov/PatentForms

.

2.

Listing Requirements

37

CFR 1.290(e)

sets forth the requirements for identifying

the items in the document list pursuant to

37 CFR

1.290(d)(1)

.

Section

1.290(e)

requires the document list include a heading

that identifies the list as a third-party submission under

37 CFR

1.290

es. Form PTO/SB/429

and instructions for completion are available on the USPTO website at

www.uspto.gov/PatentForms

.

2.

Listing Requirements

37

CFR 1.290(e)

sets forth the requirements for identifying

the items in the document list pursuant to

37 CFR

1.290(d)(1)

.

Section

1.290(e)

requires the document list include a heading

that identifies the list as a third-party submission under

37 CFR

1.290

.

37 CFR 1.290(e)

also

requires that the document list identify on each page of the list, the

application number (i.e., the series code and serial number) of the application

in which the submission is being filed. This requirement is consistent with the

requirement set forth in

37 CFR 1.98(a)(1)(i)

for

applicant information disclosure statement listings.

37 CFR

1.290(e)

further requires that U.S. patents and U.S.

patent application publications be listed in a separate section from other

items in the document list. Separating the listing of U.S. patents and U.S.

patent application publications from the listing of other items in the document

list will facilitate printing the U.S. patents and U.S. patent application

publications considered by the examiner in a third-party submission on the face

of the patent. The dedicated web-based interface for electronically filing

preissuance submissions will automatically generate a document list in

accordance with these requirements of

37 CFR

1.290(e)

.

Sections 1.290(e)(1)

through

(e)(4)

set forth the requirements for identifying the

items in the

37 CFR 1.290(d)(1)

document

list.

(a)

U.S. Patents and U.S. Patent Application Publications

37 CFR 1.290(e)(1)

requires that each U.S. patent be

identified by patent number, first named inventor, and issue date.

37 CFR 1.290(e)(2)

requires that each U.S. patent application publication be identified by

patent application publication number, first named inventor, and publication

date.

e

items in the

37 CFR 1.290(d)(1)

document

list.

(a)

U.S. Patents and U.S. Patent Application Publications

37 CFR 1.290(e)(1)

requires that each U.S. patent be

identified by patent number, first named inventor, and issue date.

37 CFR 1.290(e)(2)

requires that each U.S. patent application publication be identified by

patent application publication number, first named inventor, and publication

date.

(b)

Foreign Patents and Published Foreign Patent Applications

37 CFR 1.290(e)(3)

requires that each foreign patent

or published foreign patent application be identified by the country or

patent office that issued the patent or published the application; the

applicant, patentee, or first named inventor; an appropriate document

number; and the publication date indicated on the patent or published

application. The requirement for U.S. patents and patent application

publications to be identified by first named inventor, and for foreign

patents and published patent applications to be identified by the applicant,

patentee, or first named inventor, is intended to aid in identifying the

items in the document list in the event the application number, publication

number, or other appropriate document number data is in error, for example,

inadvertently transposed. Further,

37 CFR

1.290(e)(3)

offers flexibility in permitting

identification of foreign patents and published foreign patent applications

by expanding the identification to also include the applicant or patentee,

in addition to the first named inventor.

the event the application number, publication

number, or other appropriate document number data is in error, for example,

inadvertently transposed. Further,

37 CFR

1.290(e)(3)

offers flexibility in permitting

identification of foreign patents and published foreign patent applications

by expanding the identification to also include the applicant or patentee,

in addition to the first named inventor.

(c)

Non-Patent Publications

All non-patent publications, such as Office

actions, journal articles, communications from foreign patent offices, court

documents, etc. that qualify as publications should be listed under the

“Non-Patent Publications” section of the form PTO/SB/429 (or equivalent) or

entered in the “Non-Patent Publications” section of the Office’s dedicated

web-based interface for preissuance submissions when filing electronically.

37 CFR 1.290(e)(4)

requires that each non-patent

publication be identified by author (if any), title, pages being submitted,

publication date, and where available, publisher and place of publication.

However,

37 CFR 1.290(e)(4)

does

not preclude a third party from providing additional information not

specified in

37 CFR 1.290(e)(4)

(

e.g.,

journal title and volume/issue information for

a journal article). Because publisher and place of publication information

may not be available in some instances,

37 CFR

1.290(e)(4)

emphasizes that such information need only

be provided where it is available. For publications obtained from the

internet, the uniform resource locator (URL) of the web page that is the

source of the publication must be provided for the place of publication

(

e.g.,

“www.uspto.gov”)

e). Because publisher and place of publication information

may not be available in some instances,

37 CFR

1.290(e)(4)

emphasizes that such information need only

be provided where it is available. For publications obtained from the

internet, the uniform resource locator (URL) of the web page that is the

source of the publication must be provided for the place of publication

(

e.g.,

“www.uspto.gov”). Further, for an internet

publication obtained from a website that archives web pages, both the URL of

the archived web page submitted for consideration and the URL of the website

from which the archived copy of the web page was obtained should be provided

on the document listing (e.g., “Hand Tools,” web page

<http://www.farmshopstore.com/handtools.html>, 1 page, August 18,

2009, retrieved from Internet Archive Wayback Machine

<http://web.archive.org/web/20090818144217/

http://www.farmshopstore.com/handtools.html> on December 20, 2012).

37 CFR 1.290(e)(4)

further requires that, if no

publication date is known, the third party must provide evidence of

publication. This requirement recognizes that some documents may not

indicate a date of publication. Where the actual publication date of a

non-patent document is not known, a third party must, at a minimum, provide

a date of retrieval (

e.g.,

the date a web page was

retrieved) or a time frame (

e.g.,

a year, a month and

year, a certain period of time) when the document was available as a

publication for purposes of identifying the document by publication date

pursuant to

37 CFR 1.290(e)(4)

, in

addition to including evidence that establishes the document as a

publication.

See

Subsection III.A. below for additional

discussion regarding evidence of publication.

B.

Concise description of relevance

37 CFR

1.290(d)(2)

requires a concise description of the asserted

relevance of each item identified in the document list in view of the statutory

requirement of

35 U.S.C

to

37 CFR 1.290(e)(4)

, in

addition to including evidence that establishes the document as a

publication.

See

Subsection III.A. below for additional

discussion regarding evidence of publication.

B.

Concise description of relevance

37 CFR

1.290(d)(2)

requires a concise description of the asserted

relevance of each item identified in the document list in view of the statutory

requirement of

35 U.S.C. 122(e)(2)(A)

that

each third-party preissuance submission be accompanied by a “concise description

of the asserted relevance of each submitted document.” A concise description of

relevance for an item is a statement of facts regarding the submitted evidence

(

i.e.,

the patent, published patent application, or other

publication) and will not, itself, be treated as evidence. The concise description

should set forth facts, explaining how an item listed is of potential relevance to

the examination of the application in which the third-party submission has been

filed.

1.

Format

The concise description of relevance for a

listed publication can be presented in any format that would best explain to

the examiner the relevance of the accompanying document, such as in a narrative

description or a claim chart. A concise description of relevance is most

effective when it draws the examiner’s attention to the potential relevance of

a submitted document to the examination of an application. A concise

description that points out the relevant pages or lines of the respective

document may be an effective way to draw the examiner’s attention to the

potential relevance of the document, particularly where the document is lengthy

and complex and the third party can identify a highly relevant section, such as

a particular figure or paragraph

ted document to the examination of an application. A concise

description that points out the relevant pages or lines of the respective

document may be an effective way to draw the examiner’s attention to the

potential relevance of the document, particularly where the document is lengthy

and complex and the third party can identify a highly relevant section, such as

a particular figure or paragraph.

A third party using the Office’s dedicated

web-based interface to electronically file a third-party submission may fill in

the concise description of relevance field for an item or upload a separate

paper with the concise description for the item in lieu of entering the concise

description in the field.

See

Subsection IV.E. below for

more information regarding electronic filing. When filing in paper, a third

party should provide the concise description of relevance for an item as a

separate paper.

See

Subsection IV.F below for more

information regarding paper filing. Whether filing electronically or in paper,

the concise descriptions of relevance for all items may be combined into a

single paper. A concise description of relevance that prominently identifies

the item or items in the document list to which the concise description

pertains will help ensure that the screener and the examiner can readily

identify it.

2.

Content

At a minimum, a concise description of relevance

must be more than a bare statement that the document is relevant because such a

statement does not amount to a meaningful concise description. For example, the

following statements, presented alone, would not be considered anything more

than bare statements of relevance that do not rise to the level of meaningful

concise descriptions: “Document 1 is relevant,” “See Document 1,” “Document 1

discloses/may disclose the invention,” and “Document 1 teaches the invention in

Claim 1.” Additionally, a copy of the listed document that is merely annotated

or highlighted will not be deemed a proper concise description of relevance

hing more

than bare statements of relevance that do not rise to the level of meaningful

concise descriptions: “Document 1 is relevant,” “See Document 1,” “Document 1

discloses/may disclose the invention,” and “Document 1 teaches the invention in

Claim 1.” Additionally, a copy of the listed document that is merely annotated

or highlighted will not be deemed a proper concise description of relevance.

Further, concise descriptions of relevance that appear to be mere form

paragraphs/letters in opposition to a general class of invention or technology

will not be deemed proper concise descriptions of relevance.

While there is no page limit on a concise

description of relevance, third parties should refrain from submitting a

verbose description of relevance, not only because the statute calls for a

“concise” description, but also because a focused description is more effective

in drawing the examiner’s attention to the relevant issues. For example, a

description that includes an introductory paragraph describing the field of

technology of a document and a claim chart that maps portions of the document

to different claim elements would likely be considered “concise.” On the other

hand, descriptions that merely repeat in narrative format the same information

that is also depicted in a claim chart or that approach the length of the

documents themselves will not likely be considered “concise.”

Third-party submissions that include unpublished

materials as attachments to or inserted into the text of a concise description

of relevance of a listed publication will be found to be non-compliant

tions that merely repeat in narrative format the same information

that is also depicted in a claim chart or that approach the length of the

documents themselves will not likely be considered “concise.”

Third-party submissions that include unpublished

materials as attachments to or inserted into the text of a concise description

of relevance of a listed publication will be found to be non-compliant. For

example, where a third party submits a publication for consideration, describes

how a feature shown in an image from the publication is relevant, and inserts

an image from a different source into the concise description to show details

that are not visible or otherwise apparent in the published image, such

submission would be deemed non-compliant unless the image from the different

source was also published and separately listed for consideration.

3.

Not an invitation to participate in the prosecution of the

application

The statutory requirement for a concise

description of relevance should not be interpreted as permitting a third party

to participate in the prosecution of an application, as

35 U.S.C.

122(c)

prohibits the initiation of a protest or other

form of pre-issuance opposition for published applications without the consent

of the applicant. Therefore, while a concise description of relevance may

include claim charts (i.e., mapping various portions of a submitted document to

different claim elements), the concise description of relevance is not an

invitation to a third party to propose rejections of the claims or set forth

arguments relating to an Office action in the application or to an applicant’s

reply to an Office action in the application. Unlike the concise explanation

for a protest under

37 CFR 1.291

, which allows for

arguments against patentability, the concise description of relevance required

by

35 U.S.C. 122(e)

is limited to a factual description of

a document’s relevance

ions of the claims or set forth

arguments relating to an Office action in the application or to an applicant’s

reply to an Office action in the application. Unlike the concise explanation

for a protest under

37 CFR 1.291

, which allows for

arguments against patentability, the concise description of relevance required

by

35 U.S.C. 122(e)

is limited to a factual description of

a document’s relevance. The concise description of relevance, therefore, does

not permit third parties to submit arguments against patentability or set forth

conclusions regarding whether one or more claims are patentable. In other

words, the concise description of relevance must not rise to the level of a

protest under

37 CFR 1.291

.

Examples of compliant concise descriptions

formatted as a narrative:

“Claim 1 recites a refrigeration system

comprising elements A, B, and C. Publication X discloses the refrigeration

system recited in claim 1, except that the refrigeration system disclosed in

publication X uses element D instead of element C. See Figure 1 on page 2 of

publication X. Publication Y discloses the specific element C recited in claim

1, but not in the context of refrigeration systems. See pages 1-3 of

publication Y. Publication Z teaches that element C is frequently used in

refrigeration systems. See lines 2-10 on page 6 of publication Z.”

“Claim 1 recites a chemical composition

comprising chemicals A, B, C, and D. Patent publication X teaches a chemical

composition comprising chemicals A, B, C, and E. See claim 4 of patent

publication X. Publication Y teaches chemical D and discusses why chemical D is

an art-recognized equivalent of chemical E. See page 4 of publication Y.”

Examples of non-compliant concise descriptions

formatted as a narrative (the non-compliant portion is shown in bold):

“Claim 1 recites a refrigeration system

comprising elements A, B, and C. Publication X discloses the refrigeration

system recited in claim 1, except that the refrigeration system disclosed in

publication X uses element D instead of element C

hemical E. See page 4 of publication Y.”

Examples of non-compliant concise descriptions

formatted as a narrative (the non-compliant portion is shown in bold):

“Claim 1 recites a refrigeration system

comprising elements A, B, and C. Publication X discloses the refrigeration

system recited in claim 1, except that the refrigeration system disclosed in

publication X uses element D instead of element C. See Figure 1 on page 2 of

publication X. Publication Y discloses the specific element C recited in claim

1, but not in the context of refrigeration systems. See pages 1-3 of

publication Y. Publication Z teaches that element C is frequently used in

refrigeration systems. See lines 2-10 on page 6 of publication Z.

It

would have been obvious to one of ordinary skill in the art to combine the

teachings of publication X and publication Y to obtain the refrigeration

system recited in claim 1.”

“Claim 1 recites a chemical composition

comprising chemicals A, B, C, and D. Patent publication X teaches a chemical

composition comprising chemicals A, B, C, and E. See claim 4 of patent

publication X. Publication Y teaches chemical D and discusses why chemical D is

an art-recognized equivalent of chemical E. See pages 3-4 of publication Y.

The composition of claim 1 is unpatentable in view of publication X

and publication Y.”

Examples of compliant concise descriptions

formatted as a claim chart for a claim having only two elements:

Claim 1

Publication X

Preamble

As discussed on page 1, publication X discloses a machine that

performs the same function as the machine recited in claim 1. The

machine set forth in publication X includes many of the same parts

discussed in the specification of this application.

Element A

For example, in the first embodiment depicted in Figure 2 and

discussed on page 5, the machine of publication X expressly

includes element A of claim 1. See lines 7-14 on page 5 of

publication X.

Element B

The first embodiment also includes element B of claim 1. See lines

1-3 on page 6 of publication X

X includes many of the same parts

discussed in the specification of this application.

Element A

For example, in the first embodiment depicted in Figure 2 and

discussed on page 5, the machine of publication X expressly

includes element A of claim 1. See lines 7-14 on page 5 of

publication X.

Element B

The first embodiment also includes element B of claim 1. See lines

1-3 on page 6 of publication X.

Claim 1

Publication X

Publication Y

Preamble

Publication X discloses a machine that performs the same function

as the machine recited in claim 1. The machine set forth in

publication X includes many of the same parts discussed in the

specification of this application.

Publication Y discloses a machine that performs the same function

as the machine recited in claim 1.

Element A

For example, in the first embodiment depicted in Figure 2 and

discussed on page 5, the machine of publication X expressly

includes element A of claim 1. See lines 7-14 on page 5 of

publication X.

Element B

Publication Y teaches a machine having element B of claim 1. See

lines 1-3 on page 6 of publication Y. Publication Y teaches the

benefits of using element B in this type of a machine.

Examples of non-compliant concise descriptions

formatted as a claim chart for a claim having only two elements (the

non-compliant portion is shown in bold):

Claim 1

Publication X

Preamble

As discussed on page 1, publication X discloses a machine that

performs the same function as the machine recited in claim 1. The

machine set forth in publication X includes many of the same parts

discussed in the specification of this application.

Element A

For example, in the first embodiment depicted in Figure 2 and

discussed on page 5, the machine of publication X expressly

includes element A of claim 1. See lines 7-14 on page 5 of

publication X.

Element B

The first embodiment also includes element B of claim 1. See lines

1-3 on page 6 of publication X.

Thus, publication X

anticipates claim 1 because it teaches all of the elements of

claim 1

ent A

For example, in the first embodiment depicted in Figure 2 and

discussed on page 5, the machine of publication X expressly

includes element A of claim 1. See lines 7-14 on page 5 of

publication X.

Element B

The first embodiment also includes element B of claim 1. See lines

1-3 on page 6 of publication X.

Thus, publication X

anticipates claim 1 because it teaches all of the elements of

claim 1.

Claim 1

Publication X

Publication Y

Preamble

Publication X discloses a machine that performs the same function

as the machine recited in claim 1. The machine set forth in

publication X includes many of the same parts discussed in the

specification of this application.

Publication Y discloses a machine that performs the same function

as the machine recited in claim 1.

Element A

For example, in the first embodiment depicted in Figure 2 and

discussed on page 5, the machine of publication X expressly

includes element A of claim 1. See lines 7-14 on page 5 of

publication X.

Element B

Publication Y teaches a machine having element B of claim 1. See

lines 1-3 on page 6 of publication Y. Publication Y teaches the

benefits of using element B in this type of a machine.

Accordingly, claim 1 is unpatentable in view of the

combination of publication X and publication Y.

A concise description of relevance for a

submitted document is not considered evidence but, rather, a statement of facts

regarding the submitted evidence. Accordingly, the Office will not consider a

declaration as evidence, where such declaration is submitted as a concise

description of relevance for a document. Where a third party submits a

declaration for the concise description of relevance, the concise description

of relevance must not amount to an attempt at third-party participation in the

examination of the application.

C.

Copies

37 CFR

1.290(d)(3)

requires submission of a legible copy of each

item identified in the document list, other than U.S. patents and U.S. patent

application publications.

See

37 CFR

1.98(a)(2)(ii)

and

MPEP § 609.04(a)

the concise description of relevance, the concise description

of relevance must not amount to an attempt at third-party participation in the

examination of the application.

C.

Copies

37 CFR

1.290(d)(3)

requires submission of a legible copy of each

item identified in the document list, other than U.S. patents and U.S. patent

application publications.

See

37 CFR

1.98(a)(2)(ii)

and

MPEP § 609.04(a)

. Any copies of

documents that are submitted in color will be scanned into black and white prior

to entry of a compliant submission in the record of an application. There is no

provision for the submission of copies of documents via compact disc or other

electronic data storage medium. However, a third party may upload electronic

copies of documents when using the Office’s dedicated web-based interface to

electronically file a third-party submission.

See

Subsection

IV.E. below.

37 CFR

1.290(d)(1)

provides for the listing of either entire

documents or portions of documents. Thus, where only a portion of a document is

listed as an item in the document list, a copy of that portion and not a copy of

the entire document (e.g., where a particular chapter of a book is listed and not

the entire book) must be submitted. Further, when a copy of only a portion of a

document is submitted, copies of pages of the document that provide identifying

information (e.g., a copy of the cover, the title page, the copyright information

page, etc.) should also be submitted. Under

37 CFR

1.290(d)(3)

, copies of U.S. patents and U.S. patent

application publications need not be submitted because such documents are readily

accessible to examiners

copy of only a portion of a

document is submitted, copies of pages of the document that provide identifying

information (e.g., a copy of the cover, the title page, the copyright information

page, etc.) should also be submitted. Under

37 CFR

1.290(d)(3)

, copies of U.S. patents and U.S. patent

application publications need not be submitted because such documents are readily

accessible to examiners.

Whether filing a third-party submission under

37

CFR 1.290

in paper or electronically, it would be a best

practice for third parties to include an identifying label for each item in the

document list and place the identifying label on the accompanying concise

description of relevance for the item, on the copy of the item (if submitted), and

on the translation of the item (if submitted) so that screeners and examiners can

more quickly identify the descriptions of relevance, copies, and translations that

correspond to each item in the document list.

Images of non-patent literature (NPL) cited in a

compliant third-party submission will not be available for either viewing or

downloading through Patent Center. However, when entering a compliant third-party

submission into an application file, the Office will separate the document list

from the copies of the documents so that the identifying bibliographical

information for the documents cited in the third-party submission will be visible

in Patent Center. The Office currently employs such a practice when entering IDS

submissions under

37 CFR 1.98

.

D.

Translations

37 CFR

1.290(d)(4)

requires an English language translation of any

non-English language item identified in the document list. A translation submitted

pursuant to

37 CFR 1.290(d)(4)

may be a

reliable machine translation and need not be certified.

37 CFR

1.290(d)(1)

provides for the listing of either entire

documents or portions of documents. Thus, where only a portion of a non-English

language document is listed, a translation of the entire non-English language

document must not be submitted

entified in the document list. A translation submitted

pursuant to

37 CFR 1.290(d)(4)

may be a

reliable machine translation and need not be certified.

37 CFR

1.290(d)(1)

provides for the listing of either entire

documents or portions of documents. Thus, where only a portion of a non-English

language document is listed, a translation of the entire non-English language

document must not be submitted. Rather, a copy of the listed portion of the

non-English language document and a translation of only this portion must be

submitted.

E.

Statements

37 CFR

1.290(d)(5)(i)

requires a statement by the party making the

submission that the party is not an individual who has a duty to disclose

information with respect to the application (i.e., each individual associated with

the filing and prosecution of the patent application) under

37 CFR

1.56

. Such statement is intended to avoid potential misuse

of third-party submissions by applicants (e.g., by employing a third-party “straw

man”) to attempt to circumvent the IDS rules.

37 CFR

1.290(d)(5)(ii)

requires a statement by the party making the

submission that the submission complies with the requirements of

35 U.S.C.

122(e)

and

37 CFR 1.290

. Additionally, to

take advantage of the fee exemption, a third-party submission must be accompanied

by the statement under

37 CFR 1.290(g)

. See

Subsection IV.F. below for more information regarding the fee exemption.

To facilitate compliance by third parties, form

PTO/SB/429 and the dedicated web-based interface for preissuance submissions

include the statements required by

37 CFR 1.290(d)(5)(i)

and

ditionally, to

take advantage of the fee exemption, a third-party submission must be accompanied

by the statement under

37 CFR 1.290(g)

. See

Subsection IV.F. below for more information regarding the fee exemption.

To facilitate compliance by third parties, form

PTO/SB/429 and the dedicated web-based interface for preissuance submissions

include the statements required by

37 CFR 1.290(d)(5)(i)

and

(ii)

, as well as the statement under

37 CFR

1.290(g)

(which can be selected if applicable). The Office

will not entertain challenges to the accuracy of such statements because, pursuant

to

37 CFR

11.18(b)

, whoever knowingly and willfully makes any false,

fictitious, or fraudulent statements or representations to the Office shall be

subject to the penalties set forth under

18 U.S.C. 1001

.

37 CFR

11.18(b)

applies to any paper presented to the Office,

whether by a practitioner or non-practitioner.

The Office cannot permit a third-party submission

to be presented unsigned by the submitter in view of the signature requirement set

forth in

37 CFR

1.4

for papers filed in a patent application, which require

a person’s signature. Third-party submissions are required to be signed because

37

CFR 1.290(d)(5)

and

37 CFR

1.290(g)

(if applicable) require statements by the party

making the submission. Thus, a third-party submission must be signed by the

submitter, but there is no requirement to identify a real party in interest. A

real party in interest can remain anonymous by having someone else make the

third-party submission for them, but the submitter cannot remain anonymous.

F.

Fee (if necessary)

37 CFR

1.290(f)

requires payment of the fee set forth in

37

CFR 1.17(o)

for every ten items or fraction thereof listed

in the document list, except where the submission is accompanied by the statement

set forth in

37 CFR 1.290(g)

. The Office

will determine the item count based on the

37 CFR

1.290(d)(1)

document list. Thus, if a U.S. patent or a U.S

r cannot remain anonymous.

F.

Fee (if necessary)

37 CFR

1.290(f)

requires payment of the fee set forth in

37

CFR 1.17(o)

for every ten items or fraction thereof listed

in the document list, except where the submission is accompanied by the statement

set forth in

37 CFR 1.290(g)

. The Office

will determine the item count based on the

37 CFR

1.290(d)(1)

document list. Thus, if a U.S. patent or a U.S.

patent application publication is identified in the document list, but a copy of

the item is not submitted (i.e., because a copy is not required), the listed U.S.

patent or U.S. patent application publication will be counted toward the document

count. If a copy of an item is submitted but the item is not identified in the

document list, the item will not be counted or considered and will be discarded.

Additionally, if a third party identifies an item in the

37 CFR

1.290(d)(1)

document list that is only a portion of a

publication, the portion of the publication will be counted as one item. Further,

while a third party is permitted to cite different publications that are all

available from the same electronic source, such as a website, each such

publication listed will be counted as a separate item. See

Changes To

Implement the Preissuance Submissions by Third Parties Provision of the

Leahy-Smith America Invents Act,

77 Fed. Reg. 42150, 42163 (July 17,

2012) (final rule) for guidance on what constitutes a separate document on a

website.

When filing electronically, payment may be made by

credit card, USPTO deposit account, or electronic funds transfer and the fee must

accompany the submission at the time of filing. Credit card information for

electronic credit card payments should be entered exclusively on the USPTO website

providing electronic payment capability. When filing in paper, payment may be made

by check, money order, credit card, or deposit account. Checks and money orders

must be made payable to the Director of the United States Patent and Trademark

Office

ny the submission at the time of filing. Credit card information for

electronic credit card payments should be entered exclusively on the USPTO website

providing electronic payment capability. When filing in paper, payment may be made

by check, money order, credit card, or deposit account. Checks and money orders

must be made payable to the Director of the United States Patent and Trademark

Office. Credit Card Payment Form (PTO-2038) is available for making payment by

credit card for paper submission. See

www.uspto.gov/PatentForms

. To protect credit card information,

form PTO-2038 must not be submitted electronically through the USPTO patent

electronic filing system.

1.

Fee exemption

37

CFR 1.290(g)

provides an exemption from the

37 CFR 1.290(f)

fee requirement where a third-party

submission listing three or fewer total items is the first third-party

submission by a third party, or a party in privity with the third party, in a

given application. Where one third party takes advantage of the fee exemption

in an application, another third party is not precluded from also taking

advantage of the fee exemption in the same application as long as the third

parties are not in privity with each other.

Third parties are not required to avail

themselves of the fee exemption. Thus, a third party can make a first

submission of three or fewer documents in an application and choose to pay the

fee instead of making the statement under

37 CFR

1.290(g)

(e.g., where a third party is uncertain whether

it is appropriate to make the “privity” statement pursuant to

37 CFR

1.290(g)

.)

To implement the fee exemption in

37 CFR 1.290(g)

and avoid potential misuse of such

exemption, exemption-eligible third-party submissions must be accompanied by a

statement of the third party (i.e., “the party making the submission”) that, to

the knowledge of the person signing the statement after making reasonable

inquiry, the submission is the first and only third-party submission in the

application by the third party or a party in privity with the thi

potential misuse of such

exemption, exemption-eligible third-party submissions must be accompanied by a

statement of the third party (i.e., “the party making the submission”) that, to

the knowledge of the person signing the statement after making reasonable

inquiry, the submission is the first and only third-party submission in the

application by the third party or a party in privity with the third party. To

preclude a third party from making multiple third-party submissions in the same

application on the same day and asserting that each such submission is the

first third-party submission in the application by the third party, the

37 CFR 1.290(g)

statement requires that the submission

be the “first and only” third-party submission. This statement will not,

however, preclude the third party from making more than one third-party

submission in an application, where the need for the subsequent submissions was

not known at the time the third party filed the earlier submission that

included the

37 CFR 1.290(g)

statement.

The third party would not be required to state in any such subsequent

submission that the need for the subsequent submission was not known at the

time the third party filed the earlier submission that included the

37 CFR 1.290(g)

statement. Any such subsequent

submission, however, would not be exempt from the

37 CFR

1.290(f)

fee requirement.

2.

Fee is required for a resubmission after a finding of

non-compliance

Where a third party receives a notification of

non-compliance for a third-party submission, the third party may make necessary

revisions to its submission, limited to addressing the non-compliance, and

resubmit the now corrected submission provided the statutory time period for

filing a third-party submission has not closed. The resubmission must be

another complete submission, as the Office will not accept amendments to the

non-compliant submission. See Subsection II. for content requirements for a

third-party submission

revisions to its submission, limited to addressing the non-compliance, and

resubmit the now corrected submission provided the statutory time period for

filing a third-party submission has not closed. The resubmission must be

another complete submission, as the Office will not accept amendments to the

non-compliant submission. See Subsection II. for content requirements for a

third-party submission. To be complete, the appropriate fee for the number of

documents being submitted (e.g., $180 for 1-10 documents) must accompany any

resubmission made in response to a notification of non-compliance. However, to

satisfy the fee requirement for a resubmission after a finding of

non-compliance where the proper fee set forth in

37 CFR

1.290(f)

accompanied the non-compliant submission, the

third party may request that the Office apply the previously-paid fee to the

resubmission. Similarly, to satisfy the fee requirement for a resubmission

after a finding of non-compliance where the third party’s non-compliant

submission of three or fewer documents was accompanied by the fee exemption

statement set forth in

37 CFR 1.290(g)

, the third

party may state that the fee exemption applies to the resubmission. The

determination of whether the fee requirement for a resubmission is satisfied

will be made at the sole discretion of the Office.

3.

Small entity discount

A small entity discount is available for

third-party submissions where applicable. To assert small entity status when

filing in paper, a third party should select the “small entity” box on form

PTO/SB/429 and pay the applicable small entity fee. By selecting the “small

entity” box on form PTO/SB/429 (or equivalent) or selecting “Small Entity” when

submitting a third-party submission via the USPTO patent electronic filing

system and paying the applicable small entity fee, the party making the

submission asserts that the party qualifies as a small entity

lect the “small entity” box on form

PTO/SB/429 and pay the applicable small entity fee. By selecting the “small

entity” box on form PTO/SB/429 (or equivalent) or selecting “Small Entity” when

submitting a third-party submission via the USPTO patent electronic filing

system and paying the applicable small entity fee, the party making the

submission asserts that the party qualifies as a small entity. A

micro

entity discount is not available for third-party submissions

because

a third party is not eligible for the micro entity discount.

4.

Fee Examples

The following are examples of when a fee may or

may not be required for a third-party submission.

If the regular undiscounted and small entity

fees are $180.00 and $72.00, respectively, then for the first third-party

submission in an application by a third party:

(1) no fee would be required where the first

submission contains three or fewer total items and is accompanied by the

37 CFR 1.290(g)

fee

exemption statement;

(2) a $180/$72 fee would be required where the

first submission contains three or fewer total items and is not

accompanied by the

37 CFR 1.290(g)

fee

exemption statement;

(3) a $180/$72 fee would be required where the

first submission contains more than three, but ten or fewer total items;

and

(4) a $360/$144 fee would be required where the

first submission contains more than ten, but twenty or fewer total items,

and so on (e.g., where the first submission contains twelve documents and

the third party does not qualify for the small entity discount, a fee of

$180 would be required for the first ten documents and a fee of $180

would be required for the remaining two documents, for a total fee of

$360).

For a second or subsequent third-party

submission by the same third party:

(1) a $180/$72 fee would be required where the

second or subsequent submission contains ten or fewer total items; and

arty does not qualify for the small entity discount, a fee of

$180 would be required for the first ten documents and a fee of $180

would be required for the remaining two documents, for a total fee of

$360).

For a second or subsequent third-party

submission by the same third party:

(1) a $180/$72 fee would be required where the

second or subsequent submission contains ten or fewer total items; and

(2) a $360/$144 fee would be required where the

second or subsequent submission contains more than ten, but twenty or

fewer total items, and so on.

III.

“PRINTED PUBLICATIONS”

35 U.S.C.

122(e)(1)

and

37 CFR 1.290(a)

limit the type of

information that may be submitted in a third-party submission to patents, published

patent applications, and other printed publications of potential relevance to the

examination of a patent application. See

MPEP § 2128

for guidance regarding

printed publications. For example, a third-party submission may include U.S. patents

and patent application publications, foreign patents and published foreign patent

applications, as well as non-patent documents that qualify as publications, such as

published articles, Office actions issued in published U.S. patent applications, and

communications from foreign patent offices issued in published foreign patent

applications. Documents that do not qualify as publications, such as materials that

are subject to a court-imposed protective or secrecy order, trade secret information,

unpublished internal documents of a corporation intended to be confidential, email

correspondence not widely disseminated to the public, etc., must not be submitted for

consideration under

37 CFR 1.290

. Accordingly,

third-party submissions cannot be submitted under

MPEP § 724.02

.

Pursuant to

35 USC

122(e)(1)

and

37 CFR 1.290(c)

, a third-party

submission is required to be made in writing

mation,

unpublished internal documents of a corporation intended to be confidential, email

correspondence not widely disseminated to the public, etc., must not be submitted for

consideration under

37 CFR 1.290

. Accordingly,

third-party submissions cannot be submitted under

MPEP § 724.02

.

Pursuant to

35 USC

122(e)(1)

and

37 CFR 1.290(c)

, a third-party

submission is required to be made in writing. Thus, published information, such as

the visual output of a software program or a video, may be submitted only if reduced

to writing, such as in the form of screen shots, and evidence of publication provided

if the date of publication is not known. Additionally, physical samples must not be

submitted for consideration. Any physical samples submitted with a third-party

submission will not be entered and will be discarded.

Submissions filed pursuant to

37 CFR

1.290

will be reviewed for compliance before being forwarded to

an examiner for consideration. During this review, the Office will determine if the

documents submitted for consideration appear on their faces to be publications. If

any of the submitted documents are found not to be a publication, the entire

submission will be found non-compliant. In such a situation, the submission will not

be entered into the patent application file or considered by the examiner and will be

discarded. If a submission is determined to be compliant, the publications will be

considered by the examiner and entered into the file as required by

35 U.S.C.

122(e)

. If the patent applicant, however, has evidence that a

document filed by a third party is, in fact, not a publication, then the applicant

can challenge the determination by the Office that the document is a publication, for

example, in response to a rejection applying the document in question.

A.

Evidence of Publication

In order for a submission to be compliant under

35

U.S.C. 122(e)

and

37 CFR

1.290

, each item submitted for consideration and inclusion

into the file of a patent application must be a publication

, then the applicant

can challenge the determination by the Office that the document is a publication, for

example, in response to a rejection applying the document in question.

A.

Evidence of Publication

In order for a submission to be compliant under

35

U.S.C. 122(e)

and

37 CFR

1.290

, each item submitted for consideration and inclusion

into the file of a patent application must be a publication. Thus,

37

CFR 1.290(e)(4)

requires that, if no publication date is

known, the third party must provide evidence of publication. As a result, a

third-party submission must either include items that are

prima

facie

publications, or evidence that establishes that they are

publications. In such situations, the third party may submit evidence in the form

of affidavits, declarations, or any other appropriate format. Each item of

evidence submitted will be evaluated with respect to both its authenticity and its

persuasiveness. Evidence of publication must be specific to the document(s)

submitted for consideration.

Any affidavits or declarations submitted as

evidence of publication must comply with the Office’s formal requirements.

See

MPEP §

715.04(II)

(providing that “[a]n affidavit is a

statement in writing made under oath before a notary public, magistrate, or

officer authorized to administer oaths” and that a declaration “must include an

acknowledgment by the declarant that willful false statements and the like are

punishable by fine or imprisonment, or both (

18 U.S.C. 1001

)” and must also

“set forth in the body of the declaration that all statements made of the

declarant’s own knowledge are true and that all statements made on information and

belief are believed to be true.” [Note that a third party need not state “may

jeopardize the validity of the application or any patent issuing therefrom.”]).

Affidavits and declarations submitted as evidence of publication should explain

how the affiant/declarant has personal knowledge of the facts described therein

declarant’s own knowledge are true and that all statements made on information and

belief are believed to be true.” [Note that a third party need not state “may

jeopardize the validity of the application or any patent issuing therefrom.”]).

Affidavits and declarations submitted as evidence of publication should explain

how the affiant/declarant has personal knowledge of the facts described therein.

Further, affidavits and declarations submitted as evidence of publication must be

limited to facts establishing why a submitted document qualifies as a publication

and must not to be used as a mechanism to place information that is not pertinent

to establishing the document as a publication before the examiner.

For example, a third party might submit a company’s

undated marketing brochure for consideration with a declaration from an employee

of the company stating that the employee attended a trade show on a particular

date and distributed copies of the brochure being submitted for consideration to

trade show attendees. In another example, if the third party had emailed the

company’s undated marketing brochure to the members of a trade organization

without restriction, a copy of the email might be submitted as evidence of

publication. In a further example, a third party might submit as evidence of

publication a printout from a website showing that the content of the website was

publicly available at least as of the date retrieved shown on the printout, or

screenshots from a website that establish the content of the website on a

particular date. See Subsection II.A.2.c. for information on listing a document

obtained from a website that archives web pages.

Such evidence will not be counted toward the item

count for fee purposes, unless the evidence is in the form of a patent document or

other printed publication and the evidence itself is listed and submitted for

consideration by the examiner

he content of the website on a

particular date. See Subsection II.A.2.c. for information on listing a document

obtained from a website that archives web pages.

Such evidence will not be counted toward the item

count for fee purposes, unless the evidence is in the form of a patent document or

other printed publication and the evidence itself is listed and submitted for

consideration by the examiner. In some instances, the copy of the document

provided pursuant to

37 CFR 1.290(d)(3)

may itself

be the evidence, such as where a printout from the website showing the date the

document was retrieved is provided to satisfy the copy requirement. See Subsection

II.A.2.c. for information on listing a document where the actual publication date

of the submitted document is not known.

B.

Need Not Be Prior Art

There is no requirement in

37 CFR

1.290(a)

that the information submitted be prior art

documents in order to be considered by the examiner. Further,

37 CFR

1.290(a)

does not require a third party to indicate whether

a listed document is or is not asserted to be prior art. For those documents where

the date of publication is not apparent from a review of the document, the third

party may provide information regarding the publication date of the document in

its accompanying concise description of relevance.

C.

Cumulative Information/Information Already of Record

37 CFR

1.290(a)

does not prohibit third-party submissions that

include patents, published patent applications, or other printed publications that

are already of record in an application, where the submission is otherwise

compliant

information regarding the publication date of the document in

its accompanying concise description of relevance.

C.

Cumulative Information/Information Already of Record

37 CFR

1.290(a)

does not prohibit third-party submissions that

include patents, published patent applications, or other printed publications that

are already of record in an application, where the submission is otherwise

compliant. While it would be a best practice for third parties not to submit

documents that are cumulative of each other or that are cumulative of information

already under consideration by the Office,

37 CFR

1.290(a)

does not explicitly prohibit cumulative submissions

because it has been the Office’s experience that identifying purely cumulative

submissions is difficult where a submission includes both a publication and a

description of the publication’s relevance.

A document submitted may appear on its face to be

cumulative of information already of record, but its accompanying concise

description of relevance may provide additional information with respect to the

document, such that the submission of the document, together with the concise

description of relevance of the document, is not cumulative of information already

of record. For example, a submission would not be considered cumulative where it

includes a document previously submitted by the applicant in an information

disclosure statement and describes the document’s relevance to the examination of

the application. In another example, a submission that includes documents cited in

the background section of an application would not be considered cumulative if

accompanied by concise descriptions of relevance that provide additional

information regarding the documents.

D.

Of “Potential Relevance to the Examination of the

Application”

The standard under

37 CFR

1.290(a)

for the documents submitted to be of “potential

relevance to the examination of the application” is imposed by

35 U.S.C.

122(e)(1)

n of an application would not be considered cumulative if

accompanied by concise descriptions of relevance that provide additional

information regarding the documents.

D.

Of “Potential Relevance to the Examination of the

Application”

The standard under

37 CFR

1.290(a)

for the documents submitted to be of “potential

relevance to the examination of the application” is imposed by

35 U.S.C.

122(e)(1)

. This standard requires the submitter to believe

the documents being submitted are relevant to the extent that the submitter can

provide the concise description of the asserted relevance of each document

submitted as required by

35 U.S.C. 122(e)

and

37

CFR 1.290(d)(2)

.

IV.

FILING A THIRD-PARTY SUBMISSION

A.

For Consideration and Inclusion in a “Patent Application”

35

U.S.C. 122(e)

provides that any third party may submit for

consideration and inclusion in the record of a

patent

application

, any patent, published patent application, or other

printed publication of potential relevance to the examination of the application.

A third-party submission may be directed to any non-provisional utility

application, design application, or plant application filed before, on, or after

September 16, 2012. Any continuations, divisionals, and continuations-in-part of

such applications (as applicable) are also eligible to receive third-party

submissions.

1.

Applies to Abandoned and Unpublished Applications

35

U.S.C. 122(e)

and

37 CFR

1.290

do not require that the application to which a

third-party submission is directed be pending or published. A third-party

submission made within the statutory time period, and otherwise compliant, will

be entered even if the application to which the submission is directed has been

abandoned. An examiner will not consider such third-party submission unless the

application resumes a pending status (

e.g.,

the application

is revived, the notice of abandonment is withdrawn, etc.)

ed be pending or published. A third-party

submission made within the statutory time period, and otherwise compliant, will

be entered even if the application to which the submission is directed has been

abandoned. An examiner will not consider such third-party submission unless the

application resumes a pending status (

e.g.,

the application

is revived, the notice of abandonment is withdrawn, etc.). Additionally, a

third-party submission made within the statutory time period, and otherwise

compliant, will be entered even if the application to which the submission is

directed has not been published, for example, due to a nonpublication request

filed under

35 U.S.C. 122(b)(2)(B)(i)

and

37 CFR

1.213.

2.

Cannot Be Filed In Provisional Applications or Post-Issuance

Proceedings

35

U.S.C. 122(e)

provides for consideration and inclusion of

third-party submissions in the record of a patent application, and limits such

submissions to publications that are of potential relevance to the examination

of the application. Thus, third-party submissions may not be directed to: (1)

provisional applications, (2) issued patents, (3) reissue applications, and (4)

reexamination proceedings. The Office will not accept third-party submissions

in provisional applications as provisional applications are not examined by the

Office. Additionally, the Office will not accept third-party submissions in

issued patents. The provisions of

35 U.S.C. 301

and

37 CFR

1.501

provide an avenue for third parties who have a need

to submit information in an issued patent.

Further, third-party submissions are not

permitted in post-issuance proceedings, including reexamination proceedings and

reissue applications.

See

35 U.S.C.

302

and

35 U.S.C. 311

and

MPEP §

1441.01

(“a reissue application is a post-issuance

proceeding”). The protest provisions of

37 CFR 1.291

provide an

avenue for third parties who have a need to submit information in a reissue

application

patent.

Further, third-party submissions are not

permitted in post-issuance proceedings, including reexamination proceedings and

reissue applications.

See

35 U.S.C.

302

and

35 U.S.C. 311

and

MPEP §

1441.01

(“a reissue application is a post-issuance

proceeding”). The protest provisions of

37 CFR 1.291

provide an

avenue for third parties who have a need to submit information in a reissue

application. See

MPEP § 1441.01

(“the prohibition against the filing

of a protest after publication of an application under

35 U.S.C.

122(c)

is not applicable to a reissue application”).

Further, where a third-party submission is directed to a reissue application

and would otherwise be compliant under

37 CFR

1.290

, the Office will enter the submission into the

record of a reissue application as a protest under

37 CFR

1.291

.

B.

“Any Third Party”

35

U.S.C. 122(e)(1)

provides for “[a]ny third party” to file a

preissuance submission. Thus, a third-party submission may be filed by any member

of the public, including, for example, private persons and corporate entities.

However, the third party must not be the applicant or any individual who has a

duty to disclose information with respect to the application under

37 CFR

1.56

. See

37 CFR 1.290(d)(5)(i)

.

A third party does not need to be a registered

practitioner to file a third-party submission. However, a registered practitioner

may file a third-party submission on behalf of an unnamed real party in interest.

If a third party wishes to remain anonymous, an attorney or other representative

may submit a third-party submission on the third party’s behalf, but the submitter

will need to be identified. See Subsection II.E above.

C.

No Service on Applicant Required

Third parties are not required to serve the

applicant with a copy of the third-party submission

n on behalf of an unnamed real party in interest.

If a third party wishes to remain anonymous, an attorney or other representative

may submit a third-party submission on the third party’s behalf, but the submitter

will need to be identified. See Subsection II.E above.

C.

No Service on Applicant Required

Third parties are not required to serve the

applicant with a copy of the third-party submission. By not requiring service of

third-party submissions on the applicant, the Office is underscoring that such

third-party submissions will not create a requirement on the part of the applicant

to independently file the submitted documents with the Office in an information

disclosure statement (IDS). Additionally, not requiring service of third-party

submissions on the applicants will prevent challenges regarding whether service of

a third-party submission was proper from negatively impacting the pendency of an

application.

D.

Certificate of Mailing/Transmission Does Not Apply

37 CFR

1.290(i)

provides that the provisions of

37 CFR 1.8

do not apply to the time periods set forth in

37 CFR

1.290

. See also

37 CFR 1.8(a)(2)(i)(A)

. Thus,

third parties may not use a certificate of mailing or transmission in filing a

third-party submission under

37 CFR 1.290

. By not according

a third-party submission filed by first class mail the benefit of its date of

deposit with the USPS pursuant to a

37 CFR 1.8

certificate of

mailing, the Office reduces the potential for papers crossing in the mail. That

is, the requirement of

37 CFR 1.290(i)

reduces the

risk that a third-party submission, if it was permitted to rely on a certificate

of mailing to be timely, would not be identified and entered until after an Office

action is mailed. The requirement of

37 CFR 1.290(i)

also

encourages third parties to file third-party submissions at their earliest

opportunity.

The United States Postal Service (USPS) Priority

Mail Express

®

service provisions of

37 CFR 1.10

do apply to a third-party submission under

37 CFR

1.290

on a certificate

of mailing to be timely, would not be identified and entered until after an Office

action is mailed. The requirement of

37 CFR 1.290(i)

also

encourages third parties to file third-party submissions at their earliest

opportunity.

The United States Postal Service (USPS) Priority

Mail Express

®

service provisions of

37 CFR 1.10

do apply to a third-party submission under

37 CFR

1.290

.

See

MPEP §

513

for guidance on the Priority Mail

Express

®

service provisions of

37 CFR 1.10

.

E.

Electronic Filing

The Office has a dedicated web-based interface to

permit third-party submissions under

37 CFR 1.290

to be filed

electronically. Third parties can access the web-based interface by using the

USPTO patent electronic filing system available at

www.uspto.gov/PatentCenter

. Filing via the dedicated web-based

interface in the USPTO patent electronic filing system is an electronic

alternative to paper filing using form PTO/SB/429 (or equivalent) that will

automatically generate and complete the form after a third party enters all of the

necessary information.

Filing via the dedicated web-based interface in the

USPTO patent electronic filing system is the most efficient means of making

compliant third-party submissions available to an examiner for consideration.

Additionally, the dedicated web-based interface will verify some of the content of

a submission (e.g., U.S. patent data). Also, when filing a third-party submission

electronically, a third party will receive immediate, electronic acknowledgment of

the Office’s receipt of the submission. The electronic acknowledgment is not an

indication that the third-party submission is compliant or has been entered;

rather, it merely shows Office receipt of the submission

ome of the content of

a submission (e.g., U.S. patent data). Also, when filing a third-party submission

electronically, a third party will receive immediate, electronic acknowledgment of

the Office’s receipt of the submission. The electronic acknowledgment is not an

indication that the third-party submission is compliant or has been entered;

rather, it merely shows Office receipt of the submission. Note that a third party

cannot electronically file a third-party submission for a non-public application

without a Confirmation Number for the application, which can be obtained by

looking up the application number in the Patent Center located at

www.uspto.gov/PatentCenter

and viewing the Bibliographic Data.

If the Confirmation Number is not available or not known, the third-party

submission cannot be filed electronically and instead must be filed in paper.

The EFS-Web Legal Framework prohibited third-party

submissions under

former 37 CFR 1.99

from being

filed electronically in patent applications because documents filed electronically

via EFS-Web were instantly loaded into the Image File Wrapper (IFW).

See

Legal Framework for Electronic Filing System—Web (EFS-Web),

74 FR

55200, 55202, 55206-7 (October 27, 2009). Third-party submissions under

37

CFR 1.290

that are filed electronically via the dedicated

web-based interface for preissuance submissions in the USPTO patent electronic

filing system, however, will not be instantly loaded into the file wrapper. Thus,

third-party submissions under

37 CFR 1.290

are permitted to

be filed electronically via the dedicated web-based interface for preissuance

submissions because such submissions will be screened for compliance with the

requirements of

35 U.S.C. 122(e)

and

37

CFR 1.290

before being entered into the file wrapper of an

application. Note that protests under

37 CFR 1.291

are still

prohibited from being filed electronically in patent applications

0

are permitted to

be filed electronically via the dedicated web-based interface for preissuance

submissions because such submissions will be screened for compliance with the

requirements of

35 U.S.C. 122(e)

and

37

CFR 1.290

before being entered into the file wrapper of an

application. Note that protests under

37 CFR 1.291

are still

prohibited from being filed electronically in patent applications.

Electronically-filed third-party submissions not

made via the dedicated web-based interface for preissuance submissions are

prohibited and will be discarded. Further, applicants must not file follow-on

papers in their applications via the dedicated web-based interface for third-party

submissions. Applicant papers filed via this interface will not be entered into

the application file. If an applicant wishes to file papers electronically in

their application, they must become a registered user of the USPTO patent

electronic filing system.

F.

Paper Filing

Additionally, third-party submissions may be filed

in paper via first-class mail, United States Postal Service (USPS) Priority Mail

Express

®

service pursuant to

37 CFR 1.10

,

or delivery by hand. Instructions for filing a third-party submission in paper

using form PTO/SB/429 (or equivalent) are located at

www.uspto.gov/patents/initiatives/

third-party-preissuance-submissions

.

Pursuant to

37 CFR 1.6(d)(3)

, third-party

submissions may not be filed by facsimile. Facsimile transmissions, although not

subject to the delay associated with first class mail, are often received in poor

quality, which may result in illegible content and cause the submission to be

found non-compliant. Because facsimile transmission of third-party submissions

under

37 CFR 1.290

is not permitted, the use of a certificate of

transmission pursuant to

37 CFR 1.8

is not applicable

to third-party submissions

s, although not

subject to the delay associated with first class mail, are often received in poor

quality, which may result in illegible content and cause the submission to be

found non-compliant. Because facsimile transmission of third-party submissions

under

37 CFR 1.290

is not permitted, the use of a certificate of

transmission pursuant to

37 CFR 1.8

is not applicable

to third-party submissions.

When filing a third-party submission in paper, a

third party may include a self-addressed postcard with the submission to receive

an acknowledgment by return receipt postcard that a third-party submission has

been received. The return receipt postcard is not an indication that the

third-party submission is compliant or has been entered; rather, it merely shows

Office receipt of the submission. Where a third-party submission is filed in an

unpublished application, a returned postcard acknowledging receipt will not

indicate whether such application in fact exists or the status of any such

application because, pursuant to

35 U.S.C. 122

, original

applications are kept in confidence unless published under

35 U.S.C.

122(b)

or available to the public pursuant to

37 CFR

1.14(a)(1)(iv)

,

(v)

, or

(vi)

.

Thus, unless a third party has been granted access to an original application, the

third party is not entitled to obtain from the Office any information concerning

the same, including the mere fact that such an application exists.

Electronic filing via the dedicated web-based

interface for third-party submissions in the USPTO patent electronic filing system

is the most efficient means of making compliant third-party submissions available

to an examiner for consideration, as compliant third-party submissions filed in

paper will experience a delay in entry due to the additional processing required

for scanning and indexing of paper submissions into electronic form

-based

interface for third-party submissions in the USPTO patent electronic filing system

is the most efficient means of making compliant third-party submissions available

to an examiner for consideration, as compliant third-party submissions filed in

paper will experience a delay in entry due to the additional processing required

for scanning and indexing of paper submissions into electronic form. Additionally,

third parties filing third-party submissions electronically via the dedicated

web-based interface will receive immediate, electronic acknowledgment of the

Office’s receipt of the submission, instead of waiting for the Office to mail a

return receipt postcard when provided with a paper submission.

V.

NO THIRD-PARTY PARTICIPATION

The involvement of a third party in filing a

submission under

37 CFR 1.290

ends with the filing

of the submission. The third party filing the submission will not receive any

communications from the Office relating to the submission other than the electronic

acknowledgement receipt (see Subsection IV.E.), the return of the self-addressed

postcard (see Subsection IV.F.), or a notification to the third party regarding its

third-party submission (see Subsection VI.A.1.). A third party is not permitted to

contact the examiner. Questions regarding a third-party submission may be directed to

the point of contact listed on a notification to the third party regarding its

third-party submission. Further, because the prosecution of a patent application is

an

ex parte

proceeding, a third party is not permitted to respond

to an examiner’s treatment of the third-party submission in the application (see

Subsection VI.B.).

VI.

TREATMENT OF A THIRD-PARTY SUBMISSION

A.

Submissions Screened for Compliance Prior to Entry in an

Application

Third-party submissions, whether submitted in paper

or electronically via the dedicated web-based interface, will not be automatically

entered into the file wrapper of an application,

i.e.,

will not

be made of record in the application

mission in the application (see

Subsection VI.B.).

VI.

TREATMENT OF A THIRD-PARTY SUBMISSION

A.

Submissions Screened for Compliance Prior to Entry in an

Application

Third-party submissions, whether submitted in paper

or electronically via the dedicated web-based interface, will not be automatically

entered into the file wrapper of an application,

i.e.,

will not

be made of record in the application. Instead, third-party submissions submitted

by third parties will be reviewed by the Office to determine compliance with

35

U.S.C. 122(e)

and

37 CFR

1.290

before being entered into the file wrapper. The Office

has established procedures to complete its compliance determination, for both

paper and electronic submissions, promptly following receipt of the submission so

that compliant third-party submissions will be quickly entered into the file

wrapper and made available to the examiner for consideration. Third-party

submissions filed in paper, however, will incur more processing delay than

submissions filed electronically via the dedicated web-based interface for

preissuance submissions due to the scanning and indexing process. Each Technology

Center (TC) has designated points of contact for screening third-party submissions

made in applications docketed to the respective TCs.

37 CFR

1.290(a)

provides that a third-party submission may not be

entered or considered by the Office if any part of the submission is not in

compliance with

35 U.S.C. 122(e)

and

37

CFR 1.290

. The Office will enter a third-party submission

that is compliant with both

35 U.S.C. 122(e)

and

37

CFR 1.290

; however, any part of a third-party submission

that is non-compliant with respect to the requirements of

35 U.S.C.

122(e)

, whether or not the third-party submission is

otherwise compliant with

37 CFR 1.290

, will prevent

entry of the entire third-party submission into the record. By contrast, a

third-party submission that is compliant with

35 U.S.C

ant with both

35 U.S.C. 122(e)

and

37

CFR 1.290

; however, any part of a third-party submission

that is non-compliant with respect to the requirements of

35 U.S.C.

122(e)

, whether or not the third-party submission is

otherwise compliant with

37 CFR 1.290

, will prevent

entry of the entire third-party submission into the record. By contrast, a

third-party submission that is compliant with

35 U.S.C.

122(e)

, but non-compliant with some requirement of

37

CFR 1.290

, may be entered into the record if the error is of

such a minor character that, in the opinion of the Office, it does not raise an

ambiguity as to the content of the submission. For example, if an error with

respect to a requirement of

37 CFR 1.290

is of such a

nature that the content of the third-party submission can still be readily

ascertained (

e.g.,

a U.S. patent is identified by the correct

patent number and issue date but the name of the first named inventor is clearly

misspelled), the Office may have enough information to be able to enter the

third-party submission into the record despite the error. However, the

determination of whether to enter or not to enter a submission that partially

complies with a requirement of

37 CFR 1.290

will be made on a

case-by-case basis and at the sole discretion of the Office

(

e.g.,

the Office may decline to enter a third-party

submission listing a U.S. patent whose patent number does not match Office records

with respect to that patent number’s issue date and/or first named inventor). In

any event, the Office will either enter or not enter the entire submission and

will not attempt to enter portions of partially compliant submissions.

Non-compliant third-party submissions, except those

submissions having a non-compliance of minor character noted above, will not be

entered into the file wrapper of an application or considered, and will be

discarded. Also, the Office will not refund the required fees in the event a

third-party submission is determined to be non-compliant

tempt to enter portions of partially compliant submissions.

Non-compliant third-party submissions, except those

submissions having a non-compliance of minor character noted above, will not be

entered into the file wrapper of an application or considered, and will be

discarded. Also, the Office will not refund the required fees in the event a

third-party submission is determined to be non-compliant. The statutory time

period for making a third-party submission will not be tolled by an initial

non-compliant submission. The Office will not set a time period for a third party

to file a corrected third-party submission. Additionally, the Office will not

accept amendments to a non-compliant submission that was previously filed.

Instead, a third party who previously filed a non-compliant submission may file

another complete submission, provided the statutory time period for filing a

submission has not closed. See also Subsection II.F.2. (fee is required for a

resubmission after a finding of non-compliance).

1.

Notification to Third Party Regarding Third-Party Submission

A third-party may request a courtesy electronic

mail message (email) notification in the event their third-party submission is

found to be compliant or non-compliant. Such request may be made when filing

electronically by selecting the appropriate check box and entering an email

address to which the notification should be directed in the “Request email

notification” section of the Office’s dedicated web-based interface for

preissuance submissions. Such request may be made when filing in paper by

including a separate paper with the third-party submission clearly titled

“REQUEST FOR NOTIFICATION REGARDING THIRD-PARTY PREISSUANCE SUBMISSION” and

clearly indicating the email address to which the notification should be

directed

in the “Request email

notification” section of the Office’s dedicated web-based interface for

preissuance submissions. Such request may be made when filing in paper by

including a separate paper with the third-party submission clearly titled

“REQUEST FOR NOTIFICATION REGARDING THIRD-PARTY PREISSUANCE SUBMISSION” and

clearly indicating the email address to which the notification should be

directed.

A notification of non-compliance will include

the reason(s) for non-compliance (

e.g.,

no concise

description of relevance was provided for a listed document, the concise

description of relevance for a listed document was improper, the submission was

not timely,

etc.

). The non-compliant third-party submission

will not be made of record in the application.

No notification will be issued where a third

party does not provide an email address with the submission. Further, no

notification will be issued where the third-party submission is directed to an

unpublished application.

See

Subsection IV.F. (unpublished

patent applications preserved in confidence).

The notification to the third party will not be

made of record in the application. Further, the Office does not intend to enter

the email address provided for notification into the record of the patent

application.

2.

Notification to Applicant of Compliant Third-Party Submission

An applicant will be notified upon entry of a

compliant third-party submission in their application file where the applicant

participates in the Office’s e-Office Action program, and the contents of a

compliant third-party submission will be made available to the applicant after

it has been entered into the file wrapper of the application. An applicant may

view non-patent documents identified in a third-party submission document list

via the USPTO patent electronic filing system. The applicant will not be

notified of a non-compliant submission.

3

s e-Office Action program, and the contents of a

compliant third-party submission will be made available to the applicant after

it has been entered into the file wrapper of the application. An applicant may

view non-patent documents identified in a third-party submission document list

via the USPTO patent electronic filing system. The applicant will not be

notified of a non-compliant submission.

3.

Applicant Need Not Reply To a Third-Party Submission

37

CFR 1.290(h)

provides that in the absence of a request by

the Office, an applicant need not reply to a third-party submission under

37 CFR 1.290

. Where the Office believes information from

applicant is needed, the Office may issue a requirement for information

pursuant to

37 CFR 1.105

.

B.

Examiner Consideration of Third-Party Submissions

Once a third-party submission has been screened and

found compliant, the submission will be entered into the file wrapper for examiner

consideration. The examiner should consider the listed publications and

accompanying concise descriptions in the third-party submission in the same manner

as information in an information disclosure statement (IDS), generally before

issuing the next Office action. Entry of a third-party submission does not

expedite the application.

During examination, the examiner should sign form

PTO/SB/429 (or equivalent) in the same manner as an IDS to indicate all the items

and their concise descriptions have been considered. The examiner’s signature does

not indicate the examiner agrees with the third party’s position regarding the

publication, but only that the examiner considered the submission. Further, the

examiner should clear the submission’s IDS flag in Patent Data Portal and provide

a signed copy of the PTO/SB/429 with the next Office action. There is no need for

the examiner to comment on the submitted documents or the concise descriptions of

relevance in the Office action. However, the examiner should apply the information

as deemed necessary (

i.e.,

in a rejection of a claim)

on. Further, the

examiner should clear the submission’s IDS flag in Patent Data Portal and provide

a signed copy of the PTO/SB/429 with the next Office action. There is no need for

the examiner to comment on the submitted documents or the concise descriptions of

relevance in the Office action. However, the examiner should apply the information

as deemed necessary (

i.e.,

in a rejection of a claim). Also,

the applicant need not respond to the third-party submission in the absence of a

request by the Office to do so.

See

37 CFR

1.290(h)

. Where the examiner believes information from the

applicant is needed, the examiner may issue a requirement for information pursuant

to

37 CFR

1.105

. In no circumstance may an examiner direct a

requirement for information to the third party that submitted the paper under

37

CFR 1.290

. Further, because the prosecution of a patent

application is an

ex parte

proceeding, no response from a third

party with respect to an examiner’s treatment of the third-party submission will

be permitted or considered.

Documents from a third-party submission that were

considered by the examiner will be printed on the patent, similar to the way

documents from an IDS that were considered by the examiner are printed on the

patent. Documents cited by third-parties under

37 CFR

1.290

will be distinguished on an issued patent from

documents cited by the applicant and by the examiner.

In the unlikely event an examiner believes a

submission is non-compliant (

e.g.,

the examiner believes a

submitted document is not a publication), the examiner should immediately consult

the screener or other appropriate TC point of contact. If as a result of such

consultation it is determined that the examiner should not consider a listed

document, the examiner should strike through the document to indicate that the

examiner did not consider either the document or its accompanying concise

description. In some instances, the stricken document may be cited by the examiner

on a form PTO-892

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