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720 Public Use Proceedings [R-3] - 700 Examination of Applications
720 Public Use Proceedings [R-3]
37 CFR 1.292 Public use proceedings.
**>(a) When a petition for the institution of public use proceedings, supported by affidavits or declarations is found, on reference to the examiner, to make a prima facie showing that the invention claimed in an application believed to be on file had been in public use or on sale more than one year before the filing of the application, a hearing may be had before the Director to determine whether a public use proceeding should be instituted. If instituted, the Director may designate an appropriate official to conduct the public use proceeding, including the setting of times for taking testimony, which shall be taken as provided by part 41, subpart D, of this title. The petitioner will be heard in the proceedings but after decision therein will not be heard further in the prosecution of the application for patent.<
(b) The petition and accompanying papers, or a notice that such a petition has been filed, shall be entered in the application file if:
(1) The petition is accompanied by the fee set forth in § 1.17(j);
(2) The petition is served on the applicant in accordance with § 1.248, or filed with the Office in duplicate in the event service is not possible; and
(3) The petition is submitted prior to the date the application was published or the mailing of a notice of allowance under § 1.311, whichever occurs first.
**>(c) A petition for institution of public use proceedings shall not be filed by a party to an interference as to an application involved in the interference. Public use and on sale issues in an interference shall be raised by a motion under § 41.121(a)(1) of this title.<
Public use proceedings are provided for in 37 CFR 1.292. The institution of public use proceedings is discretionary with the Director of the USPTO. This section is intended to provide guidance when a question concerning public use proceedings arises.
Any member of the public other than the applicant, including private persons, corporate entities, and government agencies, may file a petition under 37 CFR 1.292. A petition may be filed by an attorney or other representative on behalf of an unnamed principal since 37 CFR 1.292 does not require that the principal be identified. A petition and fee ( 37 CFR 1.17(j)) are required to initiate consideration of whether to institute a public use proceeding. The petitioner ordinarily has information concerning a pending application which claims, in whole or in part, subject matter that the petitioner alleges was in "public use" or "on sale" in this country more than one year prior to the effective United States filing date of the pending application (see 35 U.S.C. 119 and 120). He or she thus asserts that a statutory bar ( 35 U.S.C. 102(b) alone or in combination with 35 U.S.C. 103) exists which prohibits the patenting of the subject matter of the application.
When public use petitions and accompanying papers are submitted they, or a notice in lieu thereof, will be entered in the application file if the petition is:
(A) accompanied by the fee set forth in 37 CFR 1.17(j);
(B) served on the applicant in accordance with 37 CFR 1.248, or filed with the Office in duplicate in the event service is not possible; and
(C) submitted prior to the date the application was published or the mailing of a notice of allowance under 37 CFR 1.311, whichever occurs first.
Duplicate copies should be submitted only when, after diligent effort, it has not been possible for petitioner to serve a copy of the petition on the applicant, or his or her attorney or agent in accordance with 37 CFR 1.248 in which case the Office of Patent Legal Administration of the Office of the Deputy Commissioner for Patent Examination Policy will attempt to get the duplicate copy to the applicant, or his or her attorney or agent.
Notice of a petition for a public use proceeding will be entered in the file in lieu of the petition itself when the petition and the accompanying papers are too bulky to accompany the file. Any public use papers not physically entered in the file will be publicly available whenever the application file wrapper is available. For Image File Wrapper (IFW) processing, see IFW Manual section 3.3.
There are two types of public use proceedings: ex parte and inter partes. It is important to understand the difference. In the ex parte situation, the petitioner is not entitled, as a matter of right, to inspect the pending application. Thus, he or she stands in no better position than any other member of the public regarding access to the pending application. In the inter partes situation, the pending application is a reissue application. In the inter partes situation, the petitioner is privy to the contents of the pending application ( 37 CFR *>41.109<). Thus, as pointed out below, the petitioner in the inter partes situation participates in the public use proceedings to a greater degree than in the ex parte situation. A petitioner who was once involved in a terminated interference with a pending application is no longer privy to the application contents and will accordingly be treated as an ex parte petitioner. It should be noted that petitions filed on and after February 11, 1985 will not be allowed in accordance with 37 CFR 1.292(c) unless the petition arises out of an interference declared prior to February 11, 1985 or the interference was declared after February 11, 1985 but arose from an interference declared prior to that date.
Since February 11, 1985, a petition for institution of public use proceedings cannot be filed by a party to an interference as to an application involved in the interference. Public use issues can only be raised by a * motion under 37 CFR *>41.121<. However, if the issue of public use arises out of an interference declared prior to February 11, 1985, the petition may be filed by a party to the interference as to an application involved in the interference.
There may be cases where a public use petition has been filed in an application which has been restricted or is subject to a proper restriction requirement. If the petition alleges that subject matter covering both elected claims and nonelected claims is a statutory bar, only that part of the petition drawn to subject matter of the elected claims will be considered. However, if a public use proceeding is ultimately instituted, it will not necessarily be limited to the subject matter of the elected claims but may include the nonelected subject matter. Any evidence adduced on the nonelected subject matter may be used in any subsequently-filed application claiming subject matter without the requirement of a new fee ( 37 CFR 1.17(j)). The petitioner will not be heard regarding the appropriateness of any restriction requirement.
A petition under 37 CFR 1.292 must be submitted in writing, must specifically identify the application to which the petition is directed by application number or serial number and filing date, and should include a listing of all affidavits or declarations and exhibits relied on. The petition must contain a sufficient description of the subject matter that the petitioner alleges was in "public use" or "on sale," including any necessary photographs, drawings, diagrams, exhibits, or flowcharts, to enable the examiner to compare the claimed subject matter to the subject matter alleged to have been in "public use" or "on sale." In addition, the petition and any accompanying papers must either (A) reflect that a copy of the same has been served upon the applicant or upon the applicant's attorney or agent of record; or (B) be filed with the Office in duplicate in the event service is not possible.
It is important that any petition in a pending application specifically identify the application to which the petition is directed with the identification being as complete as possible. The following information, if known, should be placed on the petition:
(A) Name of Applicant(s).
(B) Application number.
(C) Confirmation number.
(D) Filing date of application.
(E) Title of invention.
(F) Technology Center art unit number.
(G) Name of examiner to whom the application is assigned.
(H) Current status and location of application.
(I) The word "ATTENTION:" followed by the area of the Office to which the petition is directed as set forth below.
In addition, to the above information, the petition itself should be clearly identified as a "PETITION UNDER 37 CFR 1.292." If the petition is accompanied by exhibits or other attachments, these should also contain identifying information thereon in order to prevent them from becoming inadvertently separated and lost.
Any petition under 37 CFR 1.292 can be submitted by mail to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, and should be directed to the attention of the director of the particular Technology Center (TC) in which the application is pending. If the petitioner is unable to specifically identify the application to which the petition is directed, but, nevertheless, believes such an application to be pending, the petition should be directed to the attention of the Office of Patent Legal Administration of the Office of the Deputy Commissioner for Patent Examination Policy or to "Mail Stop Petition," along with as much identifying data for the application as possible.
Where a petition is directed to a reissue application for a patent which is involved in litigation, the outside envelope and the top right-hand portion of the petition should be marked with the words "REISSUE LITIGATION." The notations preferably should be written in a bright color with a felt point marker. Any "REISSUE LITIGATION" petition mailed to the Office should be so marked and mailed to "Mail Stop Petition." However, in view of the urgent nature of most "REISSUE LITIGATION" petitions, petitioners may wish to hand-carry the petition in order to ensure prompt receipt and to avoid any unnecessary delays. These hand-carried petitions and replies may only be delivered to the Customer Window located at:
U.S. Patent and Trademark Office
**>Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314<
Every effort should be made by a petitioner to effect service of the petition upon the attorney or agent of record or upon the applicant if no attorney or agent is of record. Of course, the copy served upon applicant or upon applicant's attorney or agent should be a complete copy including a copy of each photograph, drawing, diagram, exhibit, flowchart, or other document relied on. The petition filed in the Office should reflect, by an appropriate "Certificate of Service," that service has been made as provided in 37 CFR 1.248. Only in those instances where service is not possible should the petition be filed in duplicate in order that the Office can attempt service. In addition, all other papers filed by the petitioner relating to the petition or subsequent public use proceeding must be served in accordance with 37 CFR 1.248.
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