Time for Filing Prior Art or Section 301 Written Statements

Submissions may be filed “at any time” under

35 U.S.C.

301

. However, this period has been defined by rule (

37 CFR 1.501(a)

) to

be “any time during the period of enforceability of a patent.” The period of enforceability

is generally the length of the term of the patent plus the 6 years under the statute of

limitations for bringing an infringement action (

35 U.S.C. 286

). In addition, if

litigation is instituted within the period of the statute of limitations, submissions may

be filed after the statute of limitations has expired, as long as the patent is still

enforceable against someone. While submission under

35 U.S.C.

301

may be filed at any time during the period of enforceability of

the patent, submissions filed after the date of any order to reexamine will not be entered

into the patent file until the pending reexamination proceeding has been concluded

(

37 CFR

1.501(c)

), unless the submissions are submitted (A) by the patent

owner, (B) by an

ex parte

reexamination requester who also submits the

appropriate fee and other documents required under

37 CFR 1.510

, (C) in an

ex

parte

third party requester’s reply under

37 CFR 1.535

, or (D) as an enterable

submission pursuant to

37

CFR 1.948

in an

inter partes

reexamination

proceeding.

The purpose of this rule is to prevent harassment of the patent owner due

to frequent submissions of prior art citations during reexamination proceedings.

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