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1134.01 Third Party Submissions Under 37 CFR 1.99 [R-5] - 1100 Statutory Invention Registration (SIR) and Pre-Grant Publication (PG Pub)
1134.01 Third Party Submissions Under 37 CFR 1.99 [R-5]
37 CFR 1.99 Third-party submission in published application.
(a) A submission by a member of the public of patents or publications relevant to a pending published application may be entered in the application file if the submission complies with the requirements of this section and the application is still pending when the submission and application file are brought before the examiner.
(b) A submission under this section must identify the application to which it is directed by application number and include:
(1) The fee set forth in § 1.17(p);
(2) A list of the patents or publications submitted for consideration by the Office, including the date of publication of each patent or publication;
(3) A copy of each listed patent or publication in written form or at least the pertinent portions; and
(4) An English language translation of all the necessary and pertinent parts of any non-English language patent or publication in written form relied upon.
(c) The submission under this section must be served upon the applicant in accordance with § 1.248.
(d) A submission under this section shall not include any explanation of the patents or publications, or any other information. The Office will not enter such explanation or information if included in a submission under this section. A submission under this section is also limited to ten total patents or publications.
(e) A submission under this section must be filed within two months from the date of publication of the application (§ 1.215(a)) or prior to the mailing of a notice of allowance (§ 1.311), whichever is earlier. Any submission under this section not filed within this period is permitted only when the patents or publications could not have been submitted to the Office earlier, and must also be accompanied by the processing fee set forth in § 1.17(i). A submission by a member of the public to a pending published application that does not comply with the requirements of this section will not be entered.
(f) A member of the public may include a self-addressed postcard with a submission to receive an acknowledgment by the Office that the submission has been received. A member of the public filing a submission under this section will not receive any communications from the Office relating to the submission other than the return of a self-addressed postcard. In the absence of a request by the Office, an applicant has no duty to, and need not, reply to a submission under this section.
To balance the mandate of 35 U.S.C. 122(c) and the Office's authority and responsibility under 35 U.S.C. 131 and 151 to issue a patent only if "it appears that the applicant is entitled to a patent under the law," the Office permits third parties to submit patents and publications (i.e., prior art documents that are public information and which the Office would discover on its own with an ideal prior art search) during a limited (2 month) period after publication of an application in compliance with 37 CFR 1.99. However, 37 CFR 1.99 prohibits third parties from submitting any explanation of the patents or publications, or submitting any other information.
Third parties may submit patents and publications relevant to the published application, with no further comment or explanation, pursuant to 37 CFR 1.99. The patents and publications may be entered in the application file if the submission complies with the requirements of 37 CFR 1.99 and the application is still pending when the submission and application file are brought before the examiner. For Image File Wrapper (IFW) processing, see IFW Manual, Section 2.1. The submission must be served upon the applicant in accordance with 37 CFR 1.248 prior to the filing of the submission in the Office.
To ensure that a third-party submission under 37 CFR 1.99 does not amount to a protest or pre-grant opposition without express consent of the applicant, the third party does not have the right to insist that the examiner consider any of the patents or publications submitted.
If the submission is not in compliance with 37 CFR 1.99, information filed in the submission may be removed prior to the examiner receiving the submission and application file. The Office will screen third-party submissions to determine whether they are limited to patents and publications, and to remove any explanations or information (other than patents and publications) from the submission before the submission is placed in the application file and forwarded to the examiner. For IFW processing, see IFW Manual, Section 2.1. If the explanations cannot be separated from the patents or publications, such patents or publications will be discarded. By the time the examiner receives the application file and submission, some or all patents or publications in the submission may have been discarded.
If the applicant wants to ensure that the information in a third-party submission is considered by the examiner, the applicant should submit such information in an IDS in compliance with 37 CFR 1.97 and 1.98. Since the third party is required to serve the applicant a copy of the submission, applicant may file the IDS prior to the Office receiving or acting on the submission. Furthermore, an individual who has a duty to disclose under 37 CFR 1.56 should submit any material information contained in a third-party submission to the Office in an IDS in compliance with 37 CFR 1.97 and 1.98 to ensure such material information is properly disclosed to the examiner, if the examiner has not indicated that the reference has been considered.
I. TIMELINESS REQUIREMENT
37 CFR 1.99(e) specifies that a submission under 37 CFR 1.99 must be filed within two months from the date of publication of the application (37 CFR 1.215(a)), or prior to the mailing of a notice of allowance (37 CFR 1.311), whichever is earlier. Republication of an application under 37 CFR 1.221 does not restart the two-month period specified in 37 CFR 1.99(e).
In determining the timeliness of a third-party submission, the publication date of an application filed under 35 U.S.C. 111(a) is the date that the application published under 35 U.S.C. 122(b). However, the publication date of an application which entered the national stage of an international application after compliance with 35 U.S.C. 371 is the publication date of the World Intellectual Property Organization (WIPO) publication, if the international application is filed on or after November 29, 2000. The WIPO publication of an international application designating the United States filed on or after November 29, 2000 under PCT Article 21(2) is deemed a publication under 35 U.S.C. 122(b) except as provided in 35 U.S.C. 102(e) and 154(d). See 35 U.S.C. 374.
Any submission not filed within the time period specified in 37 CFR 1.99(e) is permitted only when the patents or publications could not have been submitted to the Office earlier (e.g., an amendment submitted in the application after publication changes the scope of the claims to an extent that could not reasonably have been anticipated by a person reviewing the published application during the period specified in 37 CFR 1.99(e)). Submissions after the time period specified in 37 CFR 1.99(e) must be accompanied by (1) a **>satisfactory explanation why< the patents or publications being submitted in the submission could not have been submitted to the Office earlier, and (2) the processing fee as set forth in 37 CFR 1.17(i).
II. CONTENTS REQUIREMENTS FOR A THIRD-PARTY SUBMISSION
The submission should be clearly labeled as a third-party submission under 37 CFR 1.99 and not as a protest, an IDS or a pre-issuance opposition. Prior to filing a submission under 37 CFR 1.99, the patents or publications being submitted must be served upon the applicant pursuant to 37 CFR 1.248. A submission under 37 CFR 1.99 must identify the application to which it is directed by the application number and must include:
(A) the fee set forth in 37 CFR 1.17(p);
(B) a listing of the patents or publications submitted for consideration by the Office (including the date of publication of each patent or publication);
(C) a copy of each listed patent or publication in written form or at least the pertinent portions thereof;
(D) an English language translation of all pertinent parts of any non-English language patent or publication in written form; and
(E) a certification that the third party has served the information being submitted upon the applicant in compliance with 37 CFR 1.248(b).
Pursuant to 37 CFR 1.99(d), a submission cannot include any of the following:
(A) more than ten total references (patents or publications);
(B) explanations of the patents or publications;
(C) documents other than patents or publications (e.g., the submission cannot include any affidavits or declarations); or
(D) markings or highlights on the patents or publications.
The third party may, however, submit redacted versions of a patent or publication containing only the most relevant portions of the patent or publication. The Office will review submissions to determine whether they are limited to patents and publications and remove any explanations or documents other than patents and publications from the submission before the submission is placed in the file of the application and forwarded to the examiner. The Office will dispose of such explanations or documents if included in a submission. Furthermore, if the explanation cannot be readily removed from the patents or publications (e.g., highlights), the patents or publications will be discarded.
III. NO THIRD-PARTY PARTICIPATION
The involvement of a third party in filing a submission under 37 CFR 1.99 ends with the filing of the submission. A third party may include a self-addressed postcard with a submission filed under 37 CFR 1.99 to receive an acknowledgment by the Office that the submission has been received. The third party filing the submission will not receive any communications from the Office relating to the submission other than the return of the self-addressed postcard. The third party should not contact the Office or submit any other inquiries. See MPEP § 1134.
IV. TREATMENT OF A THIRD-PARTY SUBMISSION
A. Procedures for Technical Support Staff
Technical support staff in the Technology Center (TC) will initially process third party submissions under 37 CFR 1.99. Once the technical support personnel recognizes a prior art submission as a third party submission under 37 CFR 1.99, he or she will enter the third party submission into PALM and into the application file. For Image File Wrapper (IFW) processing, see IFW Manual, Section 2.1. The technical support personnel will verify that the fee for a submission under 37 CFR 1.99 (i.e., the fee set forth in 37 CFR 1.17(p)) has been paid and, if appropriate, collect the fee(s) that may have been authorized in the third party submission. If the fee has not been paid (and there is no authorization to charge the fee contained in the third party submission), technical support personnel are not to charge applicant's deposit account for the requisite fee since the submission is being submitted by a third party and not the applicant. The technical support personnel will review the listing of patents and publications to verify that it is clearly identified as a submission under 37 CFR 1.99. If the listing is not identified as a submission under 37 CFR 1.99, the technical support personnel will write on the listing "Submission under 37 CFR 1.99" followed by his or her initials and the date of entry. The technical support personnel will then forward the submission and the application file to the Supervisory Patent Examiner (SPE) or Special Program Examiner (SPRE) responsible for screening submissions under 37 CFR 1.99. Occasionally, a third party may file a correspondence that is not properly labeled as a third party submission under 37 CFR 1.99 in a published application (e.g., the paper may be labeled as an IDS or a protest). Such paper should be processed as a third-party submission under 37 CFR 1.99 and the designated screener should review the paper as a submission under 37 CFR 1.99.
B. Procedures for Screeners
Once the third party submission and application file have been forwarded to the SPE or SPRE who is responsible for screening submissions under 37 CFR 1.99, the SPE or SPRE will screen the third party submission to determine whether the submission is in compliance with the timeliness requirements noted in subsection I. above and the content requirements noted in subsection II. above. Submissions under 37 CFR 1.99 that do not comply with the timeliness or content requirements will be discarded. Only those submissions that comply with 37 CFR 1.99 will be forwarded to the examiner along with the application file for consideration. For IFW processing, see IFW Manual, Section 2.1.
If the entire submission or parts of the submission need to be discarded, the screener should place the cover letter or the first page of the submission (transmittal) and parts of the submission that are in compliance with the requirements of 37 CFR 1.99 in the application file and discard the rest of the submission. The screener should write on the transmittal that "the third party submission (or the list of items) has been discarded," and include the reason(s) why the submission or the items have been discarded (e.g., the submission was not timely filed or copies of items 1, 2, & 3 are not provided). The screener should also include his or her initials, and the date of entry.
If a patent or publication has been discarded (e.g., because it contained highlighted portions), there is nothing to preclude the screener from separately obtaining a clean copy of the patent or publication. After the submission has been reviewed for compliance with all the requirements of 37 CFR 1.99, the submission and the application file will be forwarded to the examiner for consideration.
C. Procedures for Examiners
Once the third-party submission and the application file have been forwarded to the examiner, the examiner should act on the submission immediately. If an Office action is outstanding, the examiner may treat the submission when preparing the Office action. If an Office action is not outstanding, the examiner should treat the submission immediately on a separate Office communication (i.e., a PTOL-90).
The examiner should not initial any patents or publications on the listing of patents or publications submitted in a third-party submission. The examiner may request applicant's comments on any patent or publication in the submission.
The examiner should notify applicant of the Office treatment of the third-party submission using form paragraph 6.56. If any patent or publication in the submission under 37 CFR 1.99 has been determined by the examiner to be relevant to the patentability of the claims in the published application, the examiner should list the patent or publication on form PTO-892 and provide an explanation of its relevance unless the patent or publication has been used in a rejection. If the examiner considers it desirable, or necessary, to obtain applicant's comments on the patents or publications submitted before further action, the examiner will offer applicant an opportunity to file comments. If the examiner has specific questions or requests for information from the applicant regarding any of the patents or publications, the examiner may make a requirement for information under 37 CFR 1.105. See MPEP § 704.
>¶ 6.56 Notify Applicant of Office Treatment of a Third-Party Submission
A third-party submission has been filed under 37 CFR 1.99 on [1] in the published application.
To ensure that a third-party submission does not amount to a protest or pre-grant opposition, 37 CFR 1.99 does not permit the third party to have the right to insist that the examiner consider any of the patents or publications submitted. Furthermore, if the submission or part of the submission is not in compliance with 37 CFR 1.99, that noncompliant submission or part thereof will not be entered in the application file. Therefore, unless the examiner clearly cites a patent or publication on form PTO-892, Notice of References Cited and such reference is used in a rejection or its relevance is actually discussed during prosecution, consideration by the examiner of any patent or publication submitted in a third-party submission cannot be presumed.
If the applicant wants to ensure that the information in a third-party submission is considered by the examiner, the applicant should submit the information in an IDS in compliance with 37 CFR 1.97 and 37 CFR 1.98. An individual who has a duty to disclose under 37 CFR 1.56 should also submit any material information contained in a third-party submission to the Office in an IDS in compliance with 37 CFR 1.97 and 37 CFR 1.98 to ensure such material information is properly disclosed to the examiner.
Examiner Note
1. In bracket 1, insert the date that the Office received the submission.
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