# MPEP § 1134.01: Third Party Submissions Under 37 CFR 1.290

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S1134.01

## Section

- **Citation:** MPEP § 1134.01
- **Heading:** Third Party Submissions Under 37 CFR 1.290
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO MPEP / Chapter 1100 - Statutory Invention Registration (SIR) › Pre-Grant Publication (PGPub) and Preissuance Submissions / MPEP § 1134.01

## Text

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
, 1 page, August 18,
2009, retrieved from Internet Archive Wayback Machine
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
[top]

## Nearby sections

- [MPEP § 1101 Request for Statutory Invention Registration (SIR)](https://www.frixlaw.com/law-library/statutes/MPEP_S1101.md)
- [MPEP § 1111 SIR Publication and Effect](https://www.frixlaw.com/law-library/statutes/MPEP_S1111.md)
- [MPEP § 1120 Eighteen-Month Publication of Patent Applications](https://www.frixlaw.com/law-library/statutes/MPEP_S1120.md)
- [MPEP § 1121 Content of a Patent Application Publication](https://www.frixlaw.com/law-library/statutes/MPEP_S1121.md)
- [MPEP § 1122 Requests for Nonpublication](https://www.frixlaw.com/law-library/statutes/MPEP_S1122.md)
- [MPEP § 1123 Rescission of a Nonpublication Request](https://www.frixlaw.com/law-library/statutes/MPEP_S1123.md)
- [MPEP § 1124 Notice of Foreign Filing](https://www.frixlaw.com/law-library/statutes/MPEP_S1124.md)
- [MPEP § 1125 Express Abandonment to Avoid Publication](https://www.frixlaw.com/law-library/statutes/MPEP_S1125.md)
- [MPEP § 1126 Publication Fees](https://www.frixlaw.com/law-library/statutes/MPEP_S1126.md)
- [MPEP § 1127 Notice of Publication](https://www.frixlaw.com/law-library/statutes/MPEP_S1127.md)
- [MPEP § 1128 Availability of Published Applications](https://www.frixlaw.com/law-library/statutes/MPEP_S1128.md)
- [MPEP § 1129 Request for Early Publication](https://www.frixlaw.com/law-library/statutes/MPEP_S1129.md)
- [MPEP § 1130 Republication and Correction of Patent Application Publications](https://www.frixlaw.com/law-library/statutes/MPEP_S1130.md)
- [MPEP § 1131 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S1131.md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S1134.01. Check the current official text before relying on it. Not legal advice.