37 CFR 1.290: Submissions by third parties in applications

Taken from the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

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1.290    Submissions by third parties in applications.

  • (a) A third party may submit, for consideration and entry in the record of a patent application, any patents, published patent applications, or other printed publications of potential relevance to the examination of the application if the submission is made in accordance with 35 U.S.C. 122(e) and this section. A third-party submission may not be entered or considered by the Office if any part of the submission is not in compliance with 35 U.S.C. 122(e) and this section.
  • (b) Any third-party submission under this section must be filed prior to the earlier of:
    • (1) The date a notice of allowance under § 1.311 is given or mailed in the application; or
    • (2) The later of:
      • (i) Six months after the date on which the application is first published by the Office under 35 U.S.C. 122(b) and § 1.211, or
      • (ii) The date the first rejection under § 1.104 of any claim by the examiner is given or mailed during the examination of the application.
  • (c) Any third-party submission under this section must be made in writing.
  • (d) Any third-party submission under this section must include:
    • (1) A document list identifying the documents, or portions of documents, being submitted in accordance with paragraph (e) of this section;
    • (2) A concise description of the asserted relevance of each item identified in the document list;
    • (3) A legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;
    • (4) An English language translation of any non-English language item identified in the document list; and
    • (5) A statement by the party making the submission that:
      • (i) The party is not an individual who has a duty to disclose information with respect to the application under § 1.56; and
      • (ii) The submission complies with the requirements of 35 U.S.C. 122(e) and this section.
  • (e) The document list required by paragraph (d)(1) of this section must include a heading that identifies the list as a third-party submission under § 1.290, identify on each page of the list the application number of the application in which the submission is being filed, list U.S. patents and U.S. patent application publications in a separate section from other items, and identify each:
    • (1) U.S. patent by patent number, first named inventor, and issue date;
    • (2) U.S. patent application publication by patent application publication number, first named inventor, and publication date;
    • (3) Foreign patent or published foreign patent application by the country or patent office that issued the patent or published the application; the applicant, patentee, or first named inventor; an appropriate document number; and the publication date indicated on the patent or published application; and
    • (4) Non-patent publication by author (if any), title, pages being submitted, publication date, and, where available, publisher and place of publication. If no publication date is known, the third party must provide evidence of publication.
  • (f) Any third-party submission under this section must be accompanied by the fee set forth in § 1.17(o) for every ten items or fraction thereof identified in the document list.
  • (g) The fee otherwise required by paragraph (f) of this section is not required for a submission listing three or fewer total items that is accompanied by a statement by the party making the submission that, to the knowledge of the person signing the statement after making reasonable inquiry, the submission is the first and only submission under 35 U.S.C. 122(e) filed in the application by the party or a party in privity with the party.
  • (h) In the absence of a request by the Office, an applicant need not reply to a submission under this section.
  • (i) The provisions of § 1.8 do not apply to the time periods set forth in this section.
[Added, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012; para. (f) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]