Citation of Prior Art and Written Statements

35 U.S.C. 301

Citation of prior art.

(a) IN GENERAL.—Any person at any time may cite to the Office in

writing—

(1) prior art consisting of patents or printed

publications which that person believes to have a bearing on the

patentability of any claim of a particular patent; or

(2) statements of the patent owner filed in a

proceeding before a Federal court or the Office in which the patent owner

took a position on the scope of any claim of a particular patent.

(b) OFFICIAL FILE.—If the person citing prior art or

written statements pursuant to subsection (a) explains in writing the pertinence

and manner of applying the prior art or written statements to at least 1 claim of

the patent, the citation of the prior art or written statements and the

explanation thereof shall become a part of the official file of the patent.

(c) ADDITIONAL INFORMATION.—A party that submits a

written statement pursuant to subsection (a)(2) shall include any other documents,

pleadings, or evidence from the proceeding in which the statement was filed that

addresses the written statement.

(d) LIMITATIONS.—A written statement submitted pursuant

to subsection (a)(2), and additional information submitted pursuant to subsection

(c), shall not be considered by the Office for any purpose other than to determine

the proper meaning of a patent claim in a proceeding that is ordered or instituted

pursuant to

section 304

,

314

, or

324

. If any such written statement or additional

information is subject to an applicable protective order, such statement or

information shall be redacted to exclude information that is subject to that

order.

(e) CONFIDENTIALITY.—Upon the written request of the

person citing prior art or written statements pursuant to subsection (a), that

person’s identity shall be excluded from the patent file and kept confidential.

37 CFR 1.501  Citation of prior art and written statements in patent files.

ive order, such statement or

information shall be redacted to exclude information that is subject to that

order.

(e) CONFIDENTIALITY.—Upon the written request of the

person citing prior art or written statements pursuant to subsection (a), that

person’s identity shall be excluded from the patent file and kept confidential.

37 CFR 1.501  Citation of prior art and written statements in patent files.

(a)

Information content of submission:

At any time during the

period of enforceability of a patent, any person may file a written submission

with the Office under this section, which is directed to the following

information:

(1) Prior art consisting of patents or printed

publications which the person making the submission believes to have a

bearing on the patentability of any claim of the patent; or

(2) Statements of the patent owner filed by the

patent owner in a proceeding before a Federal court or the Office in which

the patent owner took a position on the scope of any claim of the patent.

Any statement submitted under this paragraph must be accompanied by any

other documents, pleadings, or evidence from the proceeding in which the

statement was filed that address the written statement, and such statement

and accompanying information under this paragraph must be submitted in

redacted form to exclude information subject to an applicable protective

order.

(3) Submissions under paragraph (a)(2) of this

section must identify:

(i) The forum and proceeding in which

patent owner filed each statement;

(ii) The specific papers and portions of the

papers submitted that contain the statements; and

(iii) How each statement submitted is a

statement in which patent owner took a position on the scope of any

claim in the patent.

(b)

Explanation:

A submission pursuant to paragraph (a) of this

section:

(1) Must include an explanation in writing of the

pertinence and manner of applying any prior art submitted under paragraph

pers and portions of the

papers submitted that contain the statements; and

(iii) How each statement submitted is a

statement in which patent owner took a position on the scope of any

claim in the patent.

(b)

Explanation:

A submission pursuant to paragraph (a) of this

section:

(1) Must include an explanation in writing of the

pertinence and manner of applying any prior art submitted under paragraph

(a)(1) of this section and any written statement and accompanying

information submitted under paragraph (a)(2) of this section to at least one

claim of the patent, in order for the submission to become a part of the

official file of the patent; and

(2) May, if the submission is made by the patent

owner, include an explanation of how the claims differ from any prior art

submitted under paragraph (a)(1) of this section or any written statements

and accompanying information submitted under paragraph (a)(2) of this

section.

(c)

Reexamination pending:

If a reexamination proceeding has been

requested and is pending for the patent in which the submission is filed, entry of

the submission into the official file of the patent is subject to the provisions

of

§§

1.502

and

1.902

.

(d)

Identity:

If the person making the submission wishes his or her

identity to be excluded from the patent file and kept confidential, the submission

papers must be submitted anonymously without any identification of the person

making the submission.

(e)

Certificate of Service:

A submission under this section by a

person other than the patent owner must include a certification that a copy of the

submission was served in its entirety upon patent owner at the address as provided

for in

§

1.33(c)

. A submission by a person other than the patent

owner that fails to include proper proof of service as required by

§

1.248(b)

will not be entered into the patent file.

37 CFR 1.502  Processing of prior art citations during an ex parte reexamination

proceeding

lude a certification that a copy of the

submission was served in its entirety upon patent owner at the address as provided

for in

§

1.33(c)

. A submission by a person other than the patent

owner that fails to include proper proof of service as required by

§

1.248(b)

will not be entered into the patent file.

37 CFR 1.502  Processing of prior art citations during an ex parte reexamination

proceeding.

Citations by the patent owner under

§ 1.555

and by an

ex

parte

reexamination requester under either

§ 1.510

or

§

1.535

will be entered in the reexamination file during a

reexamination proceeding. The entry in the patent file of citations submitted after the

date of an order to reexamine pursuant to

§ 1.525

by persons other than the

patent owner, or an

ex parte

reexamination requester under either

§

1.510

or

§ 1.535

, will be delayed until the

reexamination proceeding has been concluded by the issuance and publication of a

reexamination certificate. See

§ 1.902

for processing of prior art

citations in patent and reexamination files during an

inter partes

reexamination proceeding filed under

§ 1.913

.

37 CFR 1.902  Processing of prior art citations during an inter partes reexamination

proceeding.

Citations by the patent owner in accordance with

§ 1.933

and by an

inter partes

reexamination third party requester under

§

1.915

or

§ 1.948

will be entered in the

inter partes

reexamination file. The entry in the patent file of

other citations submitted after the date of an order for reexamination pursuant to

§

1.931

by persons other than the patent owner, or the third party

requester under either

§ 1.913

or

§ 1.948

, will be delayed until the

inter partes

reexamination proceeding has been concluded by the

issuance and publication of a reexamination certificate. See

§ 1.502

for

processing of prior art citations in patent and reexamination files during an

ex parte

reexamination proceeding filed under

§ 1.510

1

by persons other than the patent owner, or the third party

requester under either

§ 1.913

or

§ 1.948

, will be delayed until the

inter partes

reexamination proceeding has been concluded by the

issuance and publication of a reexamination certificate. See

§ 1.502

for

processing of prior art citations in patent and reexamination files during an

ex parte

reexamination proceeding filed under

§ 1.510

.

Prior art in the form of patents or printed publications may be cited to

the Office for placement into the patent files. Written statements made by the patent owner

concerning the scope of the claims can also be cited to the Office for placement into the

patent files. Submission may be made without payment of a fee. These citations may be made

separate from and without a request for reexamination.

The basic purpose for citing prior art in patent files is to inform the

patent owner and the public in general that such patents or printed publications are in

existence and should be considered when evaluating the validity of the patent claims. The

basic purpose for citing written claim scope statements is to ensure that the patent owner

takes consistent positions regarding the scope of the claims of a particular patent in the

courts and the before the Office. Placement in the patent file also ensures consideration

thereof during any subsequent reissue application, reexamination proceeding, or other

post-patent proceeding.

The citation of prior art and written statement provisions of

35 U.S.C.

301

and

37 CFR 1.501

do not apply to citations

or protests filed in pending applications.

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