Submission and Handling of Prior Art or Section 301 Written Statements

A submission of prior art patents or printed publications

and/or written statements under

37 CFR 1.501

may be submitted to the

Office via mail, hand-delivery, or via the USPTO patent electronic filing system if the

submission is properly filed as a prior art submission under

37 CFR 1.501

and not

as a follow-on document or other paper. Both registered and unregistered users of the USPTO

patent electronic filing system may make a submission electronically for a patent under

37 CFR

1.501

. A submission under

37 CFR 1.501

cannot be filed via the

USPTO patent electronic filing system for design or plant patents. All submissions under

37 CFR

1.501

are reviewed for compliance prior to entry into the patent

file. A submission submitted via the USPTO patent electronic filing system may not be

submitted as a follow-on paper into the patent (similar to Third-Party Preissuance

submissions) because the submission would be directly entered into the patent file without

review. The limitations on the method of submission allow staff to review the papers to

determine if they are compliant before they are entered into the patent file. Submitting

papers or documents via the USPTO patent electronic filing system directly into the patent

by someone other than patent owner’s representative is a violation of the Office's

electronic filing agreement (e.g., the Patent Electronic System Subscriber Agreement) and

may lead to revocation of the account used for the submission.

Submissions under

37 CFR 1.501

received in the Office

will be forwarded to the Technology Center (TC) that currently examines the technology

where the patent to which the submission is directed is classified.

It is the responsibility of the TC to promptly determine whether the

submission meets the requirements of the statute and the rules and to enter it into the

patent file at the appropriate time if proper.

If a proper submission is filed after the date of an order for

reexamination, the submission will be stored until the reexamination is concluded

to which the submission is directed is classified.

It is the responsibility of the TC to promptly determine whether the

submission meets the requirements of the statute and the rules and to enter it into the

patent file at the appropriate time if proper.

If a proper submission is filed after the date of an order for

reexamination, the submission will be stored until the reexamination is concluded. Note

37 CFR

1.502

and

1.902

. After the reexamination

proceeding is concluded, the submission is entered in the patent file. Submissions filed

after the date of an order for reexamination will not be considered by the examiner during

the reexamination.

I.

SUBMISSION QUALIFIES FOR ENTRY UNDER 37 CFR 1.501

A.

Submission by Third Party

1.

Prior to Order in Any Pending Reexamination Proceeding

If the

37 CFR 1.501

submission is

proper (i.e., is limited to patents, printed publications, and/or patent owner

written claim scope statements and additional information and includes the

requisite citation description and information and proof of service on the patent

owner), it should be entered into the patent file.

2.

After the Order in Any Pending Reexamination Proceeding

If the

37 CFR 1.501

submission is filed

after an order for reexamination in a pending reexamination proceeding, the submission

must include proof of service of a copy of the submission on the patent owner. If the

submission satisfies the conditions set forth in subsection I.A.1. above, and includes

proof of service on the patent owner, the submission will be deemed to be proper. A

proper submission is not entered after an order for reexamination in a pending

reexamination because of the ongoing reexamination. It will be stored until the

conclusion of the reexamination proceeding, after which the submission will be entered

into the patent file. The patent owner and third-party submitter (if known) should be

alerted of this by a letter providing notification

d to be proper. A

proper submission is not entered after an order for reexamination in a pending

reexamination because of the ongoing reexamination. It will be stored until the

conclusion of the reexamination proceeding, after which the submission will be entered

into the patent file. The patent owner and third-party submitter (if known) should be

alerted of this by a letter providing notification. If there is a third-party requester,

the third-party requester should also be sent a copy of the notification letter pursuant

to

37 CFR

1.550(f)

. Such notification is important to enable the patent

owner to consider submitting the prior art under

37 CFR 1.555

or

1.933

during the

reexamination. Such notification will also enable the third-party submitter to consider

the desirability of filing a separate request for reexamination.

B.

Submission Filed by Patent Owner

If a proper

37 CFR 1.501

submission is filed

by the patent owner, it should be entered in the file. This is true whether the

submission is filed prior to or after an order for reexamination has been mailed. No

notification to the patent owner is necessary.

II.

SUBMISSION DOES NOT QUALIFY FOR ENTRY UNDER 37 CFR 1.501

A.

Submission by Third Party

If the

37 CFR 1.501

submission is not

proper because it is not limited to patents, printed publications, and/or patent

owner written claim scope statements and additional information or it fails to

include the requisite description and information or proof of service, it will not be

entered into the patent file. The third-party submitter (if known) and the patent

owner may, as described below, be notified that the citation submission is improper

and that it is not being entered in the patent file. If the

37 CFR 1.501

submission is submitted via the USPTO patent electronic filing system, the

third-party submitter or the patent owner may request to be notified that the

citation submission is improper by requesting notification and entry of an email

address in the appropriate field provided

e notified that the citation submission is improper

and that it is not being entered in the patent file. If the

37 CFR 1.501

submission is submitted via the USPTO patent electronic filing system, the

third-party submitter or the patent owner may request to be notified that the

citation submission is improper by requesting notification and entry of an email

address in the appropriate field provided.

The handling of the submission will vary depending on

the particular following situations:

1.

Service of Copy Included

Where the submission includes an indication of service of copy on

the patent owner and the identity of the third-party sender is known, the original

submission should be returned to the third-party sender, discarded, or closed if

inadvertently entered into the file, and the third-party submitter will be

notified. Patent owner should be notified of non-entry.

2.

Service of Copy Not Included; Identity of Third-Party Sender Known

Where the submission does not include an indication of service on

the patent owner and the identity of the third-party submitter is known, the

submission should be returned to the third-party submitter, discarded, or closed

if inadvertently entered into the file, and the third-party submitter will be

notified. Patent owner will not be notified.

3.

Service of Copy Not Included; Identity of Third-Party Sender Not

Known

Where the submission does not include an indication of service on

the patent owner and the identity of the third-party submitter is not known, the

original submission papers will be discarded. Patent owner will not be notified.

B.

Citation Filed by the Patent Owner

If an improper submission under

37 CFR 1.501

is filed by the

patent owner prior to an order for reexamination, it should not be entered in the

file.

The patent owner should be notified of the non-entry, and the

submission should be returned to the patent owner, discarded, or closed if

inadvertently entered in the file

carded. Patent owner will not be notified.

B.

Citation Filed by the Patent Owner

If an improper submission under

37 CFR 1.501

is filed by the

patent owner prior to an order for reexamination, it should not be entered in the

file.

The patent owner should be notified of the non-entry, and the

submission should be returned to the patent owner, discarded, or closed if

inadvertently entered in the file. Proper submissions filed by the patent owner in a

reexamination proceeding after an order for reexamination should be entered in the

file under

37 CFR

1.555

(for

ex parte

reexamination) or under

37 CFR

1.933

(for

inter partes

reexamination).

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