Persons Who May Cite Prior Art or Written Statements

The patent owner, or any member of the public, may submit prior art

patents or printed publications and/or written statements and additional information to the

Office.

35

U.S.C. 301

states that “[a]ny person at any time may cite to the

Office. . . .”

“Any person” may be a corporate or governmental entity as well as an

individual.

“Any person” includes patentees, licensees, reexamination requesters, real

parties in interest to the patent owner or requester, persons without a real interest, and

persons acting for real parties in interest without a need to identify the real party of

interest.

If a person citing prior art or written statements desires his or her

identity to be kept confidential, such a person need not identify himself or herself.

Persons other than reexamination requesters who desire to remain confidential are therefore

advised to not identify themselves anywhere in their papers.

For reexamination requesters, the certification requirement

of

37 CFR

1.510(b)(6)

, coupled with a party’s

37 CFR 11.18

certification obligations when transacting business before the Office, are considered

sufficient to ensure compliance with the

inter partes

review and post

grant statutory estoppel requirements. A real party in interest that wishes to remain

anonymous when filing a request for reexamination under

37 CFR 1.510

can do so by utilizing the

services of a registered practitioner. In such an instance, the registered practitioner

submitting a request for reexamination on behalf of the real party in interest would be

certifying that the real party in interest was not estopped from filing the request.

Conversely, an individual filing a request for reexamination under

37 CFR 1.510

on

behalf of himself cannot remain anonymous, as he is required to sign the document that

includes the

37

CFR 1.510(b)(6)

certification

ractitioner

submitting a request for reexamination on behalf of the real party in interest would be

certifying that the real party in interest was not estopped from filing the request.

Conversely, an individual filing a request for reexamination under

37 CFR 1.510

on

behalf of himself cannot remain anonymous, as he is required to sign the document that

includes the

37

CFR 1.510(b)(6)

certification.

Confidential submissions should include proper proof of service as

required by

37 CFR

1.248(b)

that the patent owner has been sent a copy of the

submission; otherwise the submission will not be entered into the patent file.

Patent examiners should

not

, at their own

initiative, create a submission under

35 U.S.C. 301

and place it in a patent

file or forward it for placement in the patent file. Patent examiners are delegated by the

Director with the responsibility of making decisions as to patentability. Any activity by

examiners which would appear to indicate that patent claims are not patentable, outside of

those cases pending before them, is inappropriate.

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