MPEP - Chapter 1100 - Statutory Invention …Edition of the MPEP published August 2012. The material...

Chapter 1100 Statutory Invention Registration (SIR);Pre-Grant Publication (PGPub) and Preissuance Submissions

Request for Statutory InventionRegistration (SIR)

1101

[Reserved]1102-1110

SIR Publication and Effect1111 [Reserved]1112

-1119 Eighteen-Month Publication of PatentApplications

1120

Content of a Patent ApplicationPublication

1121

Requests for Nonpublication1122 Rescission of a Nonpublication Request1123 Notice of Foreign Filing1124 Express Abandonment to AvoidPublication

1125

Publication Fees1126 Notice of Publication1127 Availability of Published Applications1128 Request for Early Publication1129 Republication and Correction of PatentApplication Publications

1130

[Reserved]1131 Requests for Redacted Publication1132 Voluntary Publication1133 Third Party Inquiries andCorrespondence in a PublishedApplication

1134

Third Party Submissions Under 37CFR 1.290

1134.01

PGPub Forms1135

1101 Request for Statutory InventionRegistration (SIR) [R-11.2013]

Only requests for a statutory invention registrationfiled prior to March 16, 2013 are timely. Requestsfor a statutory invention registration filed on or afterMarch 16, 2013 will not be treated as the provisionsof pre-AIA 35 U.S.C. 157 were repealed on March16, 2013, effective for any request filed on or afterthat date. See §3(e) of the America Invents Act.Guidance on requests filed before March 16, 2013may be found in the ninth revision of the EighthEdition of the MPEP published August 2012. The

material in former MPEP §§ 1103-1109 is notrepeated in this edition of the MPEP.

1102-1110 [Reserved]

1111 SIR Publication and Effect [R-11.2013]

(pre-2013-03-16) 37 CFR 1.297 Publication of statutoryinvention registration.

(a) If the request for a statutory invention registration isapproved the statutory invention registration will be published.The statutory invention registration will be mailed to therequester at the correspondence address as provided for in §1.33(a). A notice of the publication of each statutory inventionregistration will be published in the Official Gazette.

(b) Each statutory invention registration published willinclude a statement relating to the attributes of a statutoryinvention registration. The statement will read as follows:

A statutory invention registration is not a patent. Ithas the defensive attributes of a patent but does not havethe enforceable attributes of a patent. No article oradvertisement or the like may use the term patent, or anyterm suggestive of a patent, when referring to a statutoryinvention registration. For more specific information onthe rights associated with a statutory invention registrationsee 35 U.S.C. 157.

Published SIRs are sequentially numbered in aseparate “H” series, starting with number “H1”. Fora description of the “kind codes” used on otherdocuments published by the U.S. Patent andTrademark Office, see MPEP § 901.04(a).

In accordance with pre-AIA 35 U.S.C. 157(c) , apublished SIR will be treated the same as a U.S.patent for all defensive purposes, usable as areference as of its filing date in the same manner asa patent. A SIR is a “constructive reduction topractice” under pre-AIA 35 U.S.C. 102(g) and “priorart” under all applicable sections of 35 U.S.C. 102including 35 U.S.C. 102(a)(2) and pre-AIA 35U.S.C. 102(e). SIRs are classified, cross-referenced,and placed in the search files, disseminated to foreignpatent offices, stored in U.S. Patent and TrademarkOffice computer data bases, made available incommercial data bases, and announced in the Official Gazette.

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The waiver of patent rights to the subject matterclaimed in a statutory invention registration takeseffect on publication ( pre-AIA 37 CFR 1.293(c))and may affect the patentability of claims in relatedapplications without SIR requests, such as divisionalor other continuing applications, since the waiver ofpatent rights is effective for all inventions claimedin the SIR and would effectively waive the right ofthe inventor to obtain a patent on the inventionclaimed in the same application or on the sameinvention claimed in any other application not issuedbefore the publication date of the SIR. If anapplication containing generic claims is publishedas a SIR, the waiver in that application applies toany other related applications to the extent that thesame invention claimed in the SIR is claimed in theother application. Examiners should apply standardssimilar to those applied in making “same invention”double patenting determinations to determinewhether a waiver by an inventor to claims in a SIRprecludes patenting by the same inventor to subjectmatter in any related application. If the same subjectmatter is claimed in an application and in a publishedstatutory invention registration naming a commoninventor, the claims in the application should berejected as being precluded by the waiver in thestatutory invention registration. A rejection as beingprecluded by a waiver in a SIR cannot be overcomeby a terminal disclaimer.

The holder of a SIR will not be able to file a reissueapplication to recapture the rights, including the rightto exclude others from making, using, selling,offering to sell, or importing the invention, that werewaived by the initial publication of the SIR.

1112-1119 [Reserved]

1120 Eighteen-Month Publication of PatentApplications [R-07.2015]

35 U.S.C. 122 Confidential status of applications;publication of patent applications.

*****

(b) PUBLICATION.—

(1) IN GENERAL.—

(A) Subject to paragraph (2), each application fora patent shall be published, in accordance with procedures

determined by the Director, promptly after the expiration of aperiod of 18 months from the earliest filing date for which abenefit is sought under this title. At the request of the applicant,an application may be published earlier than the end of such18-month period.

(B) No information concerning published patentapplications shall be made available to the public except as theDirector determines.

(C) Notwithstanding any other provision of law,a determination by the Director to release or not to releaseinformation concerning a published patent application shall befinal and nonreviewable.

(2) EXCEPTIONS.—

(A) An application shall not be published if thatapplication is—

(i) no longer pending;

(ii) subject to a secrecy order under section181 ;

(iii) a provisional application filed undersection 111(b); or

(iv) an application for a design patent filedunder chapter 16.

*****

37 CFR 1.211 Publication of applications.

(a) Each U.S. national application for patent filed in theOffice under 35 U.S.C. 111(a) and each international applicationin compliance with 35 U.S.C. 371 will be published promptlyafter the expiration of a period of eighteen months from theearliest filing date for which a benefit is sought under title 35,United States Code, unless:

(1) The application is recognized by the Office as nolonger pending;

(2) The application is national security classified (see§ 5.2), subject to a secrecy order under 35 U.S.C. 181, or undernational security review;

(3) The application has issued as a patent in sufficienttime to be removed from the publication process; or

(4) The application was filed with a nonpublicationrequest in compliance with § 1.213(a).

(b) Provisional applications under 35 U.S.C. 111(b)shallnot be published, and design applications under 35 U.S.C.chapter 16, international design applications under 35 U.S.C.chapter 38, and reissue applications under 35 U.S.C. chapter 25shall not be published under this section.

(c) An application filed under 35 U.S.C. 111(a) will not bepublished until it includes the basic filing fee (§ 1.16(a) or §1.16(c)) and any English translation required by § 1.52(d). TheOffice may delay publishing any application until it includesany application size fee required by the Office under § 1.16(s)or § 1.492(j), a specification having papers in compliance with

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1112-1119

§ 1.52 and an abstract ( § 1.72(b)), drawings in compliance with§ 1.84, a sequence listing in compliance with §§ 1.821 through1.825 (if applicable), and the inventor's oath or declaration orapplication data sheet containing the information specified in §1.63(b).

(d) The Office may refuse to publish an application, or toinclude a portion of an application in the patent applicationpublication (§ 1.215), if publication of the application or portionthereof would violate Federal or state law, or if the applicationor portion thereof contains offensive or disparaging material.

(e) The publication fee set forth in § 1.18(d) must be paidin each application published under this section before the patentwill be granted. If an application is subject to publication underthis section, the sum specified in the notice of allowance under§ 1.311 will also include the publication fee which must be paidwithin three months from the date of mailing of the notice ofallowance to avoid abandonment of the application. Thisthree-month period is not extendable. If the application is notpublished under this section, the publication fee (if paid) willbe refunded.

Pre-AIA 37 CFR 1.211 Publication of applications

(a) Each U.S. national application for patent filed in theOffice under 35 U.S.C. 111(a) and each international applicationin compliance with 35 U.S.C. 371 will be published promptlyafter the expiration of a period of eighteen months from theearliest filing date for which a benefit is sought under title 35,United States Code, unless:

(1) The application is recognized by the Office as nolonger pending;

(2) The application is national security classified (see§ 5.2(c)), subject to a secrecy order under 35 U.S.C. 181, orunder national security review;

(3) The application has issued as a patent in sufficienttime to be removed from the publication process; or

(4) The application was filed with a nonpublicationrequest in compliance with § 1.213(a).

(b) Provisional applications under 35 U.S.C. 111(b)shallnot be published, and design applications under 35 U.S.C.chapter 16 and reissue applications under 35 U.S.C. chapter 25shall not be published under this section.

(c) An application filed under 35 U.S.C. 111(a) will not bepublished until it includes the basic filing fee (§ 1.16(a) or1.16(c)), any English translation required by § 1.52(d), and anexecuted oath or declaration under § 1.63. The Office may delaypublishing any application until it includes any application sizefee required by the Office under § 1.16(s) or § 1.492(j), aspecification having papers in compliance with § 1.52 and anabstract (§ 1.72(b)), drawings in compliance with § 1.84, and asequence listing in compliance with §§ 1.821 through 1.825 (ifapplicable), and until any petition under § 1.47 is granted.

(d) The Office may refuse to publish an application, or toinclude a portion of an application in the patent applicationpublication (§ 1.215), if publication of the application or portionthereof would violate Federal or state law, or if the applicationor portion thereof contains offensive or disparaging material.


For applications filed on or after September 16,2012, 37 CFR 1.211(c) does not require an executedoath or declaration for publication of the applicationsince applicants may postpone filing the inventor’soath or declaration until payment of the issue fee.The Office may delay publishing any applicationuntil it includes the inventor’s oath or declaration orapplication data sheet containing the informationspecified in 37 CFR 1.63(b).

I. IN GENERAL

With certain exceptions, nonprovisional utility andplant applications for patent filed on or afterNovember 29, 2000 are published promptly after theexpiration of a period of eighteen months from theearliest filing date for which a benefit is sought undertitle 35, United States Code (eighteen-monthpublication or pre-grant publication (PGPub)). See35 U.S.C. 122(b). The Office will generally publish:

(A) utility and plant applications filed under 35U.S.C. 111(a) on or after November 29, 2000; and

(B) nonprovisional applications which enteredthe national stage after compliance with 35 U.S.C.371 from an international application under 35U.S.C. 363 filed on or after November 29, 2000(regardless of whether the international applicationhas been published by the International Bureau (IB)under PCT Article 21 in English).

The Office will not publish the followingapplications under 35 U.S.C. 122(b):

(A) Provisional applications filed under 35U.S.C. 111(b)(for more information see subsectionII. EXCEPTIONS below);

(B) Design applications filed under 35 U.S.C.171;

(C) International design applications filed under35 U.S.C. 385 ; and

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§ 1120STATUTORY INVENTION REGISTRATION (SIR); PRE-GRANT PUBLICATION (PGPUB) AND PREISSUANCESUBMISSIONS

(D) Reissue applications filed under 35 U.S.C.251 (because reissue applications are not keptconfidential under 35 U.S.C. 122(a)).

Applications will be published after the expirationof a period of eighteen months from the earliest of:(1) the U.S. filing date; (2) the international filingdate; or (3) the filing date of an earlier applicationfor which a benefit is sought under 35 U.S.C. 119,120, 121, or 365. Applicants are encouraged totimely submit any desired priority and benefit claimsto ensure that their applications will be published ontime and to avoid the need to file a petition to acceptunintentionally delayed priority or benefit claimsunder 37 CFR 1.55 or 1.78 and the surcharge setforth in 37 CFR 1.17(t). See MPEP § 211.04 and214.02. Applications are normally published basedon the application as filed and certain amendments.See MPEP § 1121. A proper continued prosecutionapplication (CPA) for utility or plant patent filed onor after November 29, 2000 will be published basedupon the application papers deposited on the filingdate of the first prior application. (Note: CPApractice has been eliminated as to utility and plantapplications effective July 14, 2003. See MPEP §201.06(d). Since a request for continued examination(RCE) under 37 CFR 1.114 is not the filing of a newapplication, filing an RCE will not cause anapplication filed before November 29, 2000 to bepublished. The Office will not mail a paper copy ofthe patent application publication to the applicant,but will mail a notice to the applicant indicating thatthe application has been published. See MPEP §1127. Patent application publications are availableon the USPTO website (www.uspto.gov).

II. EXCEPTIONS

An application will not be published if one of thefollowing exceptions as set forth in 37 CFR 1.211applies:

(A) The application is recognized by the Officeas no longer pending; for information on expressabandonment to avoid publication see 37 CFR1.138(c) and MPEP § 1125;

(B) The application is national security classified(see 37 CFR 5.2(c), subject to a secrecy order under35 U.S.C. 181, or under national security review;

(C) The application has issued as a patent insufficient time to be removed from the publicationprocess; or

(D) The application was filed with anonpublication request in compliance with 37 CFR1.213(a). See MPEP § 1122-1124.

The Office will not publish applications that arerecognized as no longer pending. See 37 CFR1.211(a)(1). An application is not “recognized bythe Office as no longer pending” when the periodfor reply (either the shortened statutory period forreply or the maximum extendable period for reply)to an Office action has expired, but the Office hasnot yet entered the change of status (to abandoned)of the application in the Office’s Patent ApplicationLocating and Monitoring (PALM) system and maileda notice of abandonment. An application will remainin the publication process until the PALM systemindicates that the application is abandoned. Once thePALM system indicates that an application isabandoned, the Office will attempt to remove theapplication from the publication process and avoiddissemination of the application information.

Unless an applicant has received a notice ofabandonment at least 4 weeks prior to the projectedpublication date, an applicant who wants to abandonthe application to avoid publication must file apetition under 37 CFR 1.138(c) to expressly abandonthe application and avoid publication. See MPEP §1125. An applicant who seeks to avoid publicationby permitting an application to become abandoned(for failure to reply to an Office action) and passivelywaiting for the Office to recognize that theapplication has become abandoned bears the riskthat the Office will not recognize that the applicationhas become abandoned and change the status of theapplication in the PALM system in sufficient timeto avoid publication.

The Office will not publish applications that haveissued as patents in sufficient time to be removedfrom the publication process. See 37 CFR1.211(a)(3). If the pre-grant publication processcoincides with the patent issue process, the Officewill continue with the pre-grant publication processuntil a patent actually issues. This is because thereare many instances in which the Office mails a noticeof allowance in an application but the application

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1120

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does not issue as a patent in regular course (e.g.,abandonment due to failure to pay the issue fee, orwithdrawal from issue). Therefore, the Office willnot discontinue the pre-grant publication processuntil a patent has actually issued. Since the Officecannot discontinue the pre-grant publication processduring the last two to four weeks of the publicationprocess, this will result in a few applications beingissued as patents and subsequently being publishedas patent application publications.

The Office may refuse to publish an application, orto include a portion of an application in thepublication, if publication of the application orportion thereof would violate Federal or state law,or if the application or portion thereof containsoffensive or disparaging material. See 37 CFR1.211(d). The Office may require a substitutespecification to delete the portion of the applicationthat would violate Federal or state law, or thatcontains offensive or disparaging material.

Converting a nonprovisional application to aprovisional application will not avoid the publicationof the nonprovisional application unless the requestto convert is recognized in sufficient time to permitthe appropriate officials to remove thenonprovisional application from the publicationprocess. The Office cannot ensure that it can removean application from the publication process or avoidpublication of application information any time afterthe publication process for the application has beeninitiated. Technical preparations for publication ofan application generally begin four months prior tothe projected publication date. The projectedpublication date is indicated on the filing receipt forthe patent application.

III. APPLICATION MUST BE COMPLETE

In accordance with 37 CFR 1.211(c), publicationwill not occur or will be delayed in certaincircumstances. The Office will not publish anapplication until the application includes:

(A) the basic filing fee; and

(B) an English translation if the application isin a language other than English.

The Office may delay publication until theapplication includes:

(A) any application size fee required by the Officeunder 37 CFR 1.16(s) or 37 CFR 1.492(j);

(B) a specification in compliance with 37 CFR1.52;

(C) an abstract in compliance with 37 CFR1.72(b);

(D) drawings (if any) in compliance with 37CFR 1.84;

(E) a sequence listing in compliance with 37CFR 1.821 through 1.825 (if applicable); and.

(F) an executed oath or declaration under 37CFR 1.63 and/or an application data sheet forapplication filed on or after September 16, 2012.

The Office may also delay publication until anypetition under 37 CFR 1.47 is granted forapplications filed prior to September 16, 2012.

If an application does not contain the contentspecified in 37 CFR 1.211(c) and papers or drawingsof sufficient quality to create a patent applicationpublication by eighteen months from the earliestfiling date for which benefit is claimed, the Officewill publish the application as soon as practical afterthese deficiencies are corrected. For example,publication of the patent application publication maybe delayed if the application papers submitted onthe filing date of the application do not include thecontent needed (e.g., an abstract, or an executed oathor declaration, and/or an application data sheet forapplications filed on or after September 16, 2012)or the specification (including claims) or drawingsare not of sufficient quality to be used to create apatent application publication. In such a situation,the Office will issue a preexamination noticerequiring a substitute specification or replacementdrawings. The applicant’s reply (e.g., substitutespecification or replacement drawings) to the noticewill be used for creating the patent applicationpublication. If the application on filing includespapers that are of sufficient quality to create thepublication, the Office will publish the applicationusing the originally filed application papers.

Rev. 07.2015, October 20151100-5


Applicants who attempt to delay publication byintentionally delaying the submission of theapplication content necessary for publication mayencounter a reduction in any patent term adjustmentunder 35 U.S.C. 154(b). See 35 U.S.C.154(b)(2)(C)(ii) and 37 CFR 1.704(b).

IV. PROJECTED PUBLICATION DATE

Once the application is complete, the Office willprovide applicants the projected publication date ofthe application on a filing receipt. The projectedpublication date normally will be the later of: (1)eighteen months from the earliest filing date claimed;or (2) fourteen weeks from the mailing date of thefiling receipt. The publication process takes aboutfourteen weeks. Publication occurs on Thursday ofeach week.

Applicants should carefully and promptly reviewtheir filing receipts. Applicants should promptly filea request for corrected filing receipt if theinformation on the filing receipt needs to becorrected. In addition, applicants should contact theOffice of Data Management – Patent PublicationBranch (see MPEP § 1730) if the projectedpublication date is incorrect or if a projectedpublication date has been assigned to an applicationthat should not be published. Applicants should alsopromptly check any priority or benefit claimsprovided on the filing receipt and timely file orcorrect any priority or benefit claims if the filingreceipt does not include the desired claims orincludes incorrect claims. If the information isincorrect, Applicants should promptly file a requestfor corrected filing receipt to assist the Office inquickly processing the change prior to export of theapplication to the publisher. This will avoid the needto file a petition under 37 CFR 1.55 or 1.78 to acceptunintentionally delayed claims and the surchargeunder 37 CFR 1.17(t). See MPEP § 211.04 and214.02. Furthermore, if the corrections are notrecognized by the Office of Data Management –Patent Publication Branch before the technicalpreparation for publication has begun, the Office

cannot change the projected publication date andinclude the corrections in the publication.

1121 Content of a Patent ApplicationPublication [R-07.2015]

37 CFR 1.215 Patent Application Publication

(a) The publication of an application under 35 U.S.C.122(b) shall include a patent application publication. The dateof publication shall be indicated on the patent applicationpublication. The patent application publication will be basedupon the specification and drawings deposited on the filing dateof the application, as well as the application data sheet and/orthe inventor's oath or declaration. The patent applicationpublication may also be based upon amendments to thespecification (other than the abstract or the claims) that arereflected in a substitute specification under § 1.125(b),amendments to the abstract under § 1.121(b), amendments tothe claims that are reflected in a complete claim listing under §1.121(c), and amendments to the drawings under § 1.121(d),provided that such substitute specification or amendment issubmitted in sufficient time to be entered into the Office filewrapper of the application before technical preparations forpublication of the application have begun. Technical preparationsfor publication of an application generally begin four monthsprior to the projected date of publication. The patent applicationpublication of an application that has entered the national stageunder 35 U.S.C. 371 may also include amendments made duringthe international stage. See paragraph (c) of this section forpublication of an application based upon a copy of theapplication submitted via the Office electronic filing system.

(b) The patent application publication will include the nameof the assignee, person to whom the inventor is under anobligation to assign the invention, or person who otherwiseshows sufficient proprietary interest in the matter if thatinformation is provided in the application data sheet in anapplication filed under § 1.46. Assignee information may beincluded on the patent application publication in otherapplications if the assignee information is provided in anapplication data sheet submitted in sufficient time to be enteredinto the Office file wrapper of the application before technicalpreparations for publication of the application have begun.Providing assignee information in the application data sheetdoes not substitute for compliance with any requirement of part3 of this chapter to have an assignment recorded by the Office.

(c) At applicant's option, the patent application publicationwill be based upon the copy of the application (specification,drawings, and the application data sheet and/or the inventor'soath or declaration) as amended, provided that applicant suppliessuch a copy in compliance with the Office electronic filingsystem requirements within one month of the mailing date ofthe first Office communication that includes a confirmationnumber for the application, or fourteen months of the earliestfiling date for which a benefit is sought under title 35, UnitedStates Code, whichever is later.

(d) If the copy of the application submitted pursuant toparagraph (c) of this section does not comply with the Officeelectronic filing system requirements, the Office will publish

1100-6Rev. 07.2015, October 2015


the application as provided in paragraph (a) of this section. If,however, the Office has not started the publication process, theOffice may use an untimely filed copy of the applicationsupplied by the applicant under paragraph (c) of this section increating the patent application publication.

Pre-AIA 37 CFR 1.215 Patent application publication

(a) The publication of an application under 35 U.S.C.122(b) shall include a patent application publication. The dateof publication shall be indicated on the patent applicationpublication. The patent application publication will be basedupon the specification and drawings deposited on the filing dateof the application, as well as the executed oath or declarationsubmitted to complete the application. The patent applicationpublication may also be based upon amendments to thespecification (other than the abstract or the claims) that arereflected in a substitute specification under 37 CFR 1.125(b),amendments to the abstract under 37 CFR 1.121(b), amendmentsto the claims that are reflected in a complete claim listing under§ 1.121(c), and amendments to the drawings under 37 CFR1.121(d), provided that such substitute specification oramendment is submitted in sufficient time to be entered into theOffice file wrapper of the application before technicalpreparations for publication of the application have begun.Technical preparations for publication of an application generallybegin four months prior to the projected date of publication.The patent application publication of an application that hasentered the national stage under 35 U.S.C. 371 may also includeamendments made during the international stage. See paragraph(c) of this section for publication of an application based upona copy of the application submitted via the Office electronicfiling system.

(b) If applicant wants the patent application publication toinclude assignee information, the applicant must include theassignee information on the application transmittal sheet or theapplication data sheet (§ 1.76). Assignee information may notbe included on the patent application publication unless thisinformation is provided on the application transmittal sheet orapplication data sheet included with the application on filing.Providing this information on the application transmittal sheetor the application data sheet does not substitute for compliancewith any requirement of part 3 of this chapter to have anassignment recorded by the Office.

(c) At applicant’s option, the patent application publicationwill be based upon the copy of the application (specification,drawings, and oath or declaration) as amended, provided thatapplicant supplies such a copy in compliance with the Officeelectronic filing system requirements within one month of themailing date of the first Office communication that includes aconfirmation number for the application, or fourteen months ofthe earliest filing date for which a benefit is sought under title35, United States Code, whichever is later.

(d) If the copy of the application submitted pursuant toparagraph (c) of this section does not comply with the Officeelectronic filing system requirements, the Office will publishthe application as provided in paragraph (a) of this section. If,however, the Office has not started the publication process, theOffice may use an untimely filed copy of the applicationsupplied by the applicant under paragraph (c) of this section increating the patent application publication.

A patent application publication includes a frontpage containing information similar to that containedon the front page of a patent, the drawings (if any),and the specification (including claims). The patentapplication publication will generally be based uponthe following:

(A) The patent application papers and drawingsdeposited on the filing date of the application;

(B) The executed oath or declaration submittedto complete the application and/or application datasheet for applications filed on or after September 16,2012; and

(C) Any subsequently filed application papersand drawings submitted in reply to a preexaminationnotice requiring a title and abstract in compliancewith 37 CFR 1.72, application papers in compliancewith 37 CFR 1.52, drawings in compliance with 37CFR 1.84, or a sequence listing in compliance with37 CFR 1.821 through 1.825; and

I. AMENDMENTS

The patent application publication may also be basedupon amendments that expedite the publicationprocess, provided that such amendments aresubmitted in sufficient time to be entered into theapplication file before technical preparations forpublication of the application have begun (generallyfour months prior to the projected publication date).While the Office will attempt to use the amendmentssubmitted by applicants, applicants are not entitledto have the amendments used in the publication. Forexample, the patent application publication may alsobe based upon the following amendments becausethey are in formats useable for publication:

(A) Amendments to the specification that arereflected in a substitute specification under 37 CFR1.125(b);

(B) An amendment to the abstract under 37 CFR1.121(b);

(C) Amendments to the claims that are reflectedin a complete claim listing under 37 CFR 1.121(c);and

(D) Amendments to drawings under 37 CFR1.121(d).

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The patent application publication of an applicationthat has entered the national stage under 35 U.S.C.371 may also include amendments made during theinternational stage, such as: amendments underArticle 34 and 19; rectifications; corrections ofphysical defects under PCT Rule 26; and an abstractrewritten by the International Searching Authority.

If an applicant wants the publication to includedrawings other than those submitted with theapplication as filed (e.g., better quality or amendeddrawings), applicant may file the replacementdrawings in sufficient time to be entered into theapplication file before four months prior to theprojected publication date. The Office cannotguarantee that the latest amendment or anyparticular amendment will be included in thepatent application publication. If applicant wishesto have the patent application publication be basedupon a copy of the application (specification,drawings and oath or declaration) as amended,applicant must supply such a copy via the electronicfiling system (EFS), e.g., set forth in the EFS-WebLegal Framework within one month of the mailingdate of the first Office correspondence (e.g., filingreceipt) including a confirmation number for theapplication or fourteen months of the earliest filingdate for which a benefit is sought under title 35,United States Code, whichever is later (see 37 CFR1.215(c) and Assignment of Confirmation Numberand Time Period for Filing a Copy of an Applicationby EFS for Eighteen-Month Publication Purposes,1241 Off. Gaz. Pat. Office 97 (December 12, 2000)).See also III. AMENDED APPLICATION FILEDVIA EFS, below. The Office will use the electroniccopy provided by the applicant to create thepublication. A proper continued prosecutionapplication (CPA) filed on or after November 29,2000 (but before July 14, 2003) will be publishedbased upon the application papers deposited on thefiling date of the first prior application.

Applicants may review the bibliographic informationcontained in the Office’s database, and applicationpapers that have been scanned into the Image FileWrapper system, via the Office’s Patent ApplicationInformation Retrieval (PAIR) system. Applicantsshould bring any errors to the Office’s attentionbefore technical preparations for publication of the

application have begun (generally four months priorto the projected publication date).

Long nucleotide and/or amino acid sequences orlarge numbers of such sequences are very difficultfor the Office to publish as part of patent applicationpublications. Therefore, long sequence listings willonly be published in electronic form on the USPTOsequence homepage (http://seqdata.uspto.gov) asan ASCII text file. The patent application publicationwill include a statement that the application containsa lengthy sequence listing section and a hyperlinkto the Web page containing the sequence listing. See Notice of Change in Publishing of Patents andPatent Application Publications With SequenceListings, 1250 Off. Gaz. Pat. Office 70 (September11, 2001).

A. Avoid Filing Preliminary Amendments

Applicants should not file any preliminaryamendment with the application. Submittingapplications without any accompanying preliminaryamendment reduces the processing required of theOffice, and will help to ensure that patent applicationpublications are printed correctly.

A preliminary amendment that is present on thefiling date of the application is part of the originaldisclosure of the application under 37 CFR1.115(a)(1). The Office will include such apreliminary amendment that is present on the filingdate of the application in the patent applicationpublication. If the preliminary amendment that ispresent on the filing date of the application is not ina format that is useable for publication, the Officewill issue a notice requiring the applicant to submitthe amendment in a format useable for publication.Generally, a substitute specification (excludingclaims) is required for any preliminary amendmentsto the specification (other than the claims) that arepresent on the filing date of the application. Eventhough a substitute specification is a useable formatfor publication, applicant should not file a substitutespecification with the application because theapplication size fee will be calculated based on theapplication papers including the clean version andmarked-up version of the substitute specification.

1100-8Rev. 07.2015, October 2015


http://seqdata.uspto.gov

To avoid submitting preliminary amendments,applicants should incorporate any desiredamendments into the text of the specificationincluding a new set of claims, even where theapplication is a continuation or divisional applicationof a previously-filed patent application. In such acontinuation or divisional application, a newspecification (e.g., reflecting amendments made inthe parent application) may be submitted togetherwith a copy of the oath or declaration from thepreviously filed application so long as no new matteris included in the specification. See 37 CFR1.63(d)(1)(iii). The specific reference to the priorapplication required by 35 U.S.C. 119(e) or 120 and37 CFR 1.78(a) in applications filed beforeSeptember 16, 2012 can be submitted in anapplication data sheet (ADS) rather than in apreliminary amendment to the first sentence(s) ofthe specification. Such references in applicationsfiled on or after September 16, 2012 may only bemade in an ADS. If the specific reference issubmitted in a preliminary amendment, however, asubstitute specification will not be required if thepreliminary amendment only adds or amends abenefit claim.

B. Requests for Republication to Correct Errors

Applications with poor quality text, which may beacceptable for scanning and examination purposes,may lead to errors in the patent applicationpublication. Correction of these errors and inclusionof any desired amendments into the text of theoriginally-filed specification and drawings will onlyoccur if applicant files a request for republicationunder 37 CFR 1.221(a). They will not be correctedby the Office in a corrected publication under 37CFR 1.221(b). See MPEP § 1130.

II. APPENDICES

Appendices, other than those containing sequencelistings or certain tables, are not printed if they arecontained on pages located after the claims. If theapplication includes multiple claim sets in thespecification, the Office may treat pages locatedafter the first set of claims as appendices. Note thatcomputer program listings may be printed if theyare included in the specification before the claims,but that computer program listings that are provided

on compact disc in accordance with 37 CFR 1.96(c)and 37 CFR 1.52(e) are not printed as part of thepatent or patent application publication.

III. AMENDED APPLICATION FILED VIA EFS

At applicant’s option, a patent applicationpublication may be based upon a copy of theapplication (specification, drawings and oath ordeclaration) as amended, provided that applicantsupplies such a copy in compliance with the Officeelectronic filing system (EFS) requirements, e.g. setforth in the EFS-Web Legal Framework within onemonth of the mailing date of the first Officecommunication that includes a confirmation numberfor the application, or fourteen months of the earliestfiling date for which a benefit is sought under title35, United States Code, whichever is later. 37 CFR1.215(c). If the copy of the application submittedunder 37 CFR 1.215(c) does not comply with theOffice EFS requirements, the Office will publish theapplication as provided in 37 CFR 1.215(a). If thecopy of the application submitted under 37 CFR1.215(c) was untimely, the Office may use theuntimely filed copy of the application supplied bythe applicant under 37 CFR 1.215(c) in creating thepatent application publication so long as the copywas received before the Office has started thepublication process. For further information aboutEFS, see the Electronic Business Center on theUSPTO website (www.uspto.gov).

IV. APPLICANT INFORMATION

If a patent application is filed pursuant to 37 CFR1.46, the patent application publication will includethe name of the assignee, person to whom theinventor is under an obligation to assign theinvention, or person who otherwise shows sufficientproprietary interest in the matter. The informationmust be provided on the application data sheet(ADS) filed with the application. If the applicantinformation is corrected or updated in accordancewith 37 CFR 1.46(c) after filing the application, thecorrected or updated information may be used, if theinformation is recognized by the Office of DataManagement – Patent Publication Branch before thetechnical preparation for the publication has begun.

Rev. 07.2015, October 20151100-9



Errors in applicant information printed on thepublication are not considered material mistakes bythe Office under 37 CFR 1.211(b) (e.g., errors in theassignee’s name). See MPEP § 1130. Thus, theseerrors may only be corrected if applicant files arequest for republication under 37 CFR 1.211(a).

V. ASSIGNEE INFORMATION

For applications filed on or after September 16,2012, if the applicant would like the assignee datato be published, the assignee data must be submittedon the application data sheet (ADS). For applicationsfiled before September 16, 2012, if the applicantwould like the assignee data to be published, theinformation must be provided on the applicationtransmittal letter or the application data sheet (ADS)filed with the application. Providing this informationon the application transmittal letter or the applicationdata sheet does not substitute for compliance withany requirement of 37 CFR Part 3 to have anassignment recorded by the Office. If the assigneedata is recorded with the Assignment Division only,the information will not be published as part of thepatent application publication.

Errors in assignee information printed on thepublication are not considered material mistakes bythe Office under 37 CFR 1.221(b) (e.g., errors in theassignee’s name). See MPEP § 1130. Thus, theseassignment errors and applicant’s failure to includeassignment data may only be corrected if applicantfiles a request for republication under 37 CFR1.221(a).

1122 Requests for Nonpublication[R-07.2015]


*****

(b) PUBLICATION.—

*****

(2) EXCEPTIONS.—

*****

(B)(i) If an applicant makes a request uponfiling, certifying that the invention disclosed in the applicationhas not and will not be the subject of an application filed in

another country, or under a multilateral international agreement,that requires publication of applications 18 months after filing,the application shall not be published as provided in paragraph(1).

*****

37 CFR 1.213 Nonpublication request.

(a) If the invention disclosed in an application has not beenand will not be the subject of an application filed in anothercountry, or under a multilateral international agreement, thatrequires publication of applications eighteen months after filing,the application will not be published under 35 U.S.C. 122(b)and § 1.211 provided:

(1) A request (nonpublication request) is submittedwith the application upon filing;

(2) The request states in a conspicuous manner that theapplication is not to be published under 35 U.S.C. 122(b);

(3) The request contains a certification that theinvention disclosed in the application has not been and will notbe the subject of an application filed in another country, or undera multilateral international agreement, that requires publicationat eighteen months after filing; and

(4) The request is signed in compliance with § 1.33(b).

*****

If the invention disclosed in an application filedunder 35 U.S.C. 111(a) has not been and will not bethe subject of a foreign or international applicationfiled in another country, or under a multilateralinternational agreement, that requires publication ofapplications eighteen months after filing (e.g., acounterpart PCT application), applicants may requestthat the application filed under 35 U.S.C. 111(a) notbe published by filing a nonpublication request under37 CFR 1.213(a). The Office will not publish anapplication filed under 35 U.S.C. 111(a) with anonpublication request in compliance with thefollowing:

(A) The request for nonpublication under 37CFR 1.213(a) must be submitted with the applicationupon filing (this is a statutory requirement andcannot be waived);

(B) The request for nonpublication must statein a conspicuous manner that the application is notto be published under 35 U.S.C. 122(b) (see FormPTO/SB/35 in MPEP § 1135);

(C) The request must contain a certification thatthe invention disclosed in the application has notbeen and will not be the subject of an application

1100-10Rev. 07.2015, October 2015


filed in another country, or under a multilateralinternational agreement, that requires eighteen-monthpublication. Before making the certification, theperson who signs the certification must make anactual inquiry to determine whether thecertification under 35 U.S.C. 122(b)(2)(B)(i) and 37CFR 1.213(a)(3) can be appropriately made (see I.REQUIREMENTS PRIOR TO FILING ANONPUBLICATION REQUEST, below); and

(D) The request is signed in compliance with 37CFR 1.33(b).

If applicant filed a nonpublication request and laterdecides to file a counterpart foreign or internationalapplication in another country, or under a multilateralagreement, that requires eighteen-month publication,applicant must either: (1) rescind the nonpublicationrequest before filing such foreign or internationalapplication; or (2) notify the Office of such filingno later than 45 days after the filing date of thecounterpart foreign or international application. SeeMPEP §§ 1123 and 1124.

I. REQUIREMENTS PRIOR TO FILING ANONPUBLICATION REQUEST

A nonpublication request is not appropriate unlessthe person who is signing the nonpublication requesthas made an actual inquiry consistent with therequirements of 37 CFR 11.18(b) to determine that:

(A) The application under 35 U.S.C. 111(a) hasnot been the subject of a foreign or internationalapplication filed in another country, or under amultilateral international agreement, that requirespublication of applications at eighteen months afterfiling ( e.g., a counterpart PCT application); and

(B) The applicant’s intent at the time thenonpublication request is being filed is that theapplication under 35 U.S.C. 111(a) will not be thesubject of a foreign or international application filedin another country, or under a multilateralinternational agreement, that requires publication ofapplications at eighteen months after filing.

Only when both conditions are satisfied, canapplicants file a nonpublication request under 37CFR 1.213(a). A nonpublication request is notappropriate if applicants have already filed acounterpart foreign or international application inanother country, or under a multilateral international

agreement, that requires publication of applicationsat eighteen months after filing. A nonpublicationrequest is not proper even if the foreign orinternational application is abandoned before theforeign or international application is published.

A nonpublication request also is not appropriate ifthe applicant has not yet made a decision whetherto file a counterpart application in a foreign country,or under a multilateral international agreement, thatrequires publication of applications at eighteenmonths after filing. A certification under 37 CFR1.213(a)(3) cannot be made based on a lack ofknowledge of the applicant’s plans concerning thefiling of any counterpart application that would besubject to eighteen-month publication or theapplicant’s past practices or tendencies with respectto the filing of foreign counterpart applications. Thefact that a particular applicant has a tendency to filecounterpart applications for fewer than fifty percentof its U.S. applications is not alone an adequate basisfor filing all or any of the U.S. applications with anonpublication request. The applicant must have anaffirmative intent not to file a counterpartapplication, and not just the absence of any intentor plan concerning the filing of any counterpartapplication that would be subject to eighteen-monthpublication. A nonpublication request is onlyappropriate if the applicant’s intent at the time thenonpublication request is being filed is not to file acounterpart foreign or international application thatwould be subject to eighteen-month publication.

II. FILING A NONPUBLICATION REQUEST

Applicants should use the format set forth in formPTO/SB/35, Nonpublication Request under 35U.S.C. 122(b)(2)(B)(i), to ensure that thecertification includes the proper language requiredby the statute and the request is stated in aconspicuous manner. Form PTO/SB/35 is availablefrom the USPTO website (www.uspto.gov), and isreproduced in MPEP § 1135. A nonpublicationrequest that does not include the language requiredby 35 U.S.C. 122(b)(2)(B)(i) (i.e., certifying that the“invention disclosed in the application has not andwill not be the subject of an application filed inanother country, or under a multilateral internationalagreement, that requires publication of applications18 months after filing”) will not be accepted. A

Rev. 07.2015, October 20151100-11



request for nonpublication may not be recognizedunless it is conspicuous. See 37 CFR 1.213(a)(2).Providing text as one paragraph among numerousother paragraphs with no highlighting of the requestfor nonpublication is not conspicuous, and thus theOffice’s assignment of a publication date would beappropriate.

A nonpublication request must be filed upon thefiling of the application. This is a statutoryrequirement and cannot be waived. For example, anonpublication request filed with a request under 37CFR 1.53(c)(3) to convert a provisional applicationto a nonprovisional application will not be acceptedas timely filed because the nonprovisionalapplication would be accorded the original filingdate of the provisional application if the request toconvert is granted. The nonpublication request mustalso be included with the application papers. Thenonpublication request cannot be filed separately onthe same date as the filing date of the application(e.g., the nonpublication request is filed in a different

Priority Mail Express® package than the packagethat contains the application). If the Officemistakenly accepts an improper nonpublicationrequest, applicants should notify the Office of DataManagement – Patent Publication Branch andrescind the request immediately. See MPEP § 1730for contact information.

When the Office recognizes the nonpublicationrequest, the filing receipt will not include a projectedpublication date. If applicant includes anonpublication request as specified by 35 U.S.C.122(b)(2)(B)(i) and the filing receipt reflects aprojected publication date, applicant should promptlycontact the Office and determine whether thenonpublication request was overlooked.

III. INAPPROPRIATE NONPUBLICATIONREQUEST

If prior to filing a U.S. application under 35 U.S.C.111(a), applicants have filed a counterpart foreignor international application in a foreign country, orunder a multilateral international agreement, thatrequires publication of applications 18 months afterfiling, a nonpublication request would not beappropriate in the U.S. application. If applicants fileda nonpublication request in a U.S. application that

claims the benefit to an earlier foreign orinternational application, the Office will not acceptthe nonpublication request and will assign aprojected publication date. The applicant will benotified that the certification is inconsistent with thepriority claim. The notice will provide anon-extendable time period of 30 days from the maildate of the notice for applicant to provide asatisfactory explanation as to how the certificationsubmitted is valid in light of the priority claim. Ifapplicants fail to provide a satisfactory explanation,the Office will publish the U.S. application.

If an applicant files a PCT application, abandons thePCT application before the International Bureaupublishes the PCT application, and thereafter filesa corresponding U.S. application under 35 U.S.C.111(a) with a non-publication request under 37 CFR1.213, the nonpublication request is improper. Themere filing of the PCT application precludes theproper use of a nonpublication request, since theinvention disclosed in the U.S. application was thesubject of an application that was filed under aninternational agreement requiring publication at 18months (the PCT application). 35 U.S.C.122(b)(2)(B)(i) states that an application will not bepublished “[i]f an applicant makes a request uponfiling, certifying that the invention disclosed in theapplication has not and will not be the subject of anapplication filed in another country, or under amultilateral international agreement, that requirespublication of applications 18 months after filing, .. . .” The trigger in the statute is not whether the otherapplication will be published, but rather the triggeris the act of filing where eighteen-month publicationof patent applications is required. Abandonment ofthe foreign application, or the application under amultilateral international agreement, prior to foreignpublication at 18-months has no bearing on thepropriety of requesting nonpublication of the U.S.application.

Where a foreign or PCT application is filed first, anda U.S. application is filed thereafter with an(improper) nonpublication request, the Office willnot consider the U.S. application as abandoned forhaving made the nonpublication request. This isbecause the statute only provides for an applicationto be regarded as abandoned when the applicant failsto notify the Office within 45 days of a subsequently

1100-12Rev. 07.2015, October 2015


filed application that is directed to the same subjectas the invention of the U.S. application in anothercountry, or under a multilateral internationalagreement, that requires eighteen-month publicationof applications. 35 U.S.C. 122(b)(2)(B)(iii) does notapply to the situation where the applicant has madean improper certification subsequent to the foreignfiling. A petition to revive under 37 CFR 1.137(a)/(f)is inappropriate and not necessary in the above-notedsituation because the U.S. application is pending(unless the application is abandoned for otherreasons). If a petition to revive under 37 CFR1.137(a)/(f) is filed, the Office will dismiss thepetition as inappropriate but retain the petition feebecause the Office was required to evaluate themerits of the petition before being able to determinethat the petition was not appropriate.

Applicants and their representatives should makesure that the certification is proper before signingand filing it with the Office. While applicants shouldrescind any improper nonpublication request as soonas possible, 35 U.S.C. 122(b)(2)(B)(i)-(iv) does notinclude any provision for “correction” of an impropercertification. Any applicant or applicant’srepresentative who makes a false statement (e.g., animproper certification) may be in violation of 37CFR 11.18(b) . In addition, false statements byregistered patent practitioners may also violate otherDisciplinary Rules (see 37 CFR Part 11).

While applicant cannot undo the fact that animproper certification was made, any applicant whohas made such a mistake should promptly file arescission of the nonpublication request and notethat the original certification was improper.

1123 Rescission of a Nonpublication Request[R-07.2015]

35 U.S.C. 122 Confidential status of applications;publication of patent applications

*****

(b) PUBLICATION.—

*****

(2) EXCEPTIONS.—

*****

(B)(i) If an applicant makes a request uponfiling, certifying that the invention disclosed in the applicationhas not and will not be the subject of an application filed inanother country, or under a multilateral international agreement,that requires publication of applications 18 months after filing,the application shall not be published as provided in paragraph(1).

(ii) An applicant may rescind a request madeunder clause (i) at any time.

(iii) An applicant who has made a requestunder clause (i) but who subsequently files, in a foreign countryor under a multilateral international agreement specified inclause (i), an application directed to the invention disclosed inthe application filed in the Patent and Trademark Office, shallnotify the Director of such filing not later than 45 days after thedate of the filing of such foreign or international application. Afailure of the applicant to provide such notice within theprescribed period shall result in the application being regardedas abandoned.

(iv) If an applicant rescinds a request madeunder clause (i) or notifies the Director that an application wasfiled in a foreign country or under a multilateral internationalagreement specified in clause (i), the application shall bepublished in accordance with the provisions of paragraph (1)on or as soon as is practical after the date that is specified inclause (i).

(v) If an applicant has filed applications in oneor more foreign countries, directly or through a multilateralinternational agreement, and such foreign filed applicationscorresponding to an application filed in the Patent andTrademark Office or the description of the invention in suchforeign filed applications is less extensive than the applicationor description of the invention in the application filed in thePatent and Trademark Office, the applicant may submit aredacted copy of the application filed in the Patent andTrademark Office eliminating any part or description of theinvention in such application that is not also contained in anyof the corresponding applications filed in a foreign country. TheDirector may only publish the redacted copy of the applicationunless the redacted copy of the application is not received within16 months after the earliest effective filing date for which abenefit is sought under this title. The provisions of section 154(d)shall not apply to a claim if the description of the inventionpublished in the redacted application filed under this clause withrespect to the claim does not enable a person skilled in the artto make and use the subject matter of the claim.

*****

37 CFR 1.213 Nonpublication request.*****

(b) The applicant may rescind a nonpublication request atany time. A request to rescind a nonpublication request underparagraph (a) of this section must:

(1) Identify the application to which it is directed;

Rev. 07.2015, October 20151100-13


(2) State in a conspicuous manner that the request thatthe application is not to be published under 35 U.S.C. 122(b) isrescinded; and

(3) Be signed in compliance with § 1.33(b).

*****

An applicant may rescind a previously-filednonpublication request at any time. See 35 U.S.C.122(b)(2)(B)(ii). Form PTO/SB/36 (revision April2001 or later) may be used to both rescind anonpublication request and provide notice of foreignfiling. The form is reproduced in MPEP § 1135. Ifapplicant makes a nonpublication request under 35U.S.C. 122(b)(2)(B)(i) and then rescinds thenonpublication request before or on the date aforeign or international application (hereinafter“foreign filing” or “counterpart application”) directedto the invention disclosed in the U.S. applicationfiled under 37 CFR 1.111(a)) in the USPTO is filedin a foreign country, or under a multilateralinternational agreement, that requires eighteen-monthpublication, the nonpublication request under 35U.S.C. 122(b)(2)(B)(i) will be treated as annulledand the application will be treated as if thenonpublication request was never made. Thus, ifapplicant filed a nonpublication request and thendecided to file a counterpart application, applicantmust file either: (1) a request to rescind thenonpublication request before filing the counterpartapplication; or (2) a notice of foreign filing no laterthan 45 days after the filing date of the counterpartapplication, to avoid abandonment of the application(35 U.S.C. 122(b)(2)(B)(iii) and 37 CFR 1.213(c)).

The mere filing of a request under 37 CFR 1.213(b)to rescind the previously filed nonpublication requestdoes not comply with the notice of foreign filingrequirement of 35 U.S.C. 122(b)(2)(B)(iii) and 37CFR 1.213(c) (for applicants who submitted anonpublication request but before filing the requestto rescind, also filed a counterpart application inanother country, or under a multilateral internationalagreement, that requires eighteen-month publicationof applications). Applicants are strongly encouragedto provide a notice of foreign filing wheneverrescinding a nonpublication request in anticipationof filing a counterpart application in aneighteen-month publication country. FormPTO/SB/36 (revision April 2001 or later) providesboth a rescission and notice of foreign filing. See

MPEP § 1135. No benefit can be given to acertificate of mailing or transmission under 37 CFR1.8 on a request to rescind a nonpublication requestin determining whether there has been a rescissionof a nonpublication request before or on the date acounterpart application is filed in an eighteen-monthpublication country. A rescission of a nonpublicationrequest is not a paper required to be filed in theUSPTO as provided for in 37 CFR 1.8(a). Thus, theprovisions of 37 CFR 1.8 by their terms do not applyin this situation, and the USPTO must use the actualdate of receipt in the USPTO as defined in 37 CFR1.6 as the date of the rescission to determine whetherthe nonpublication request has been rescinded beforeor on the date of the filing of a counterpartapplication such that the application may beconsidered an application in which no nonpublicationrequest under 35 U.S.C. 122(b)(2)(B)(i) was made.Since a notice of foreign filing is required by thestatute and 37 CFR 1.215(c), the benefit of acertificate of mailing or transmission under 37 CFR1.8 will be given to a notice of foreign filing.

After either a rescission of a nonpublication requestor a notice of foreign filing is received by the Office,the Office will enter the rescission or notice offoreign filing into the Office Pre-ExaminationSystem to schedule the application for publication.A notice (e.g., a “Notice Regarding Rescission OfNonpublication Request and Notice of ForeignFiling”) should be sent to inform the applicant ofthe projected publication date. The application willbe published promptly after the expiration of a periodof 18 months from the earliest filing date for whicha benefit is sought under title 35, United States Code,or as soon as practicable after mailing this notice.See 35 U.S.C. 122(b)(2)(B)(iv).

An applicant should not rescind a nonpublicationrequest or provide a notice of foreign filing unlessa nonpublication request was actually made, becausefiling a rescission when one is not needed leads toa waste of Office resources and may delayprosecution in the application. Furthermore, filinga rescission of a nonpublication request where anonpublication request was not originally made may

1100-14Rev. 07.2015, October 2015


result in a reduction to any patent term adjustmentunder 35 U.S.C. 154(b).

1124 Notice of Foreign Filing [R-07.2015]


*****

(b) PUBLICATION.—

*****

(2) EXCEPTIONS.—

*****

(B) *****

(iii) An applicant who has made a requestunder clause (i) but who subsequently files, in a foreign countryor under a multilateral international agreement specified inclause (i), an application directed to the invention disclosed inthe application filed in the Patent and Trademark Office, shallnotify the Director of such filing not later than 45 days after thedate of the filing of such foreign or international application. Afailure of the applicant to provide such notice within theprescribed period shall result in the application being regardedas abandoned.

(iv) If an applicant rescinds a request madeunder clause (i) or notifies the Director that an application wasfiled in a foreign country or under a multilateral internationalagreement specified in clause (i), the application shall bepublished in accordance with the provisions of paragraph (1)on or as soon as is practical after the date that is specified inclause (i).

*****

37 CFR 1.213 Nonpublication request.*****

(c) If an applicant who has submitted a nonpublicationrequest under paragraph (a) of this section subsequently filesan application directed to the invention disclosed in theapplication in which the nonpublication request was submittedin another country, or under a multilateral internationalagreement, that requires publication of applications eighteenmonths after filing, the applicant must notify the Office of suchfiling within forty-five days after the date of the filing of suchforeign or international application. The failure to timely notifythe Office of the filing of such foreign or internationalapplication shall result in abandonment of the application inwhich the nonpublication request was submitted (35 U.S.C.122(b)(2)(B)(iii)).

Applicants must timely file a notice of foreign filingto avoid abandonment of a U.S. application if:

(A) applicant filed a nonpublication request inthe U.S. application filed under 35 U.S.C. 111(a)(see MPEP § 1122);

(B) applicant subsequently filed a foreign orinternational application directed to the inventiondisclosed in the U.S. application in a foreign country,or under a multilateral international agreement, thatrequires publication of applications 18 months afterfiling (foreign filing or counterpart application); and

(C) applicant did not rescind the nonpublicationrequest before filing the foreign or internationalapplication (see MPEP § 1123).

I. NOTICE OF FOREIGN FILING REQUIREDWITHIN 45 DAYS

The notice of foreign filing must be filed not laterthan 45 days after the filing date of the counterpartapplication. The requirement for notice of foreignfiling is set forth in 35 U.S.C. 122(b)(2)(B)(iii) whichprovides that an applicant who has made anonpublication request under 35 U.S.C.122(b)(2)(B)(i) in a U.S. application filed under 35U.S.C. 111(a) , but who subsequently files anapplication in a foreign country or under amultilateral international agreement that requireseighteen-month publication, must notify the USPTOof the foreign filing not later than forty-five daysafter the date of such foreign filing. FormPTO/SB/36 (revision April 2001 or later) may beused to both rescind a nonpublication request andprovide notice of foreign filing. The form isreproduced in MPEP § 1135. 35 U.S.C.122(b)(2)(B)(iii) further provides that failure of theapplicant to provide the required notice within thisforty-five (45) day period shall result inabandonment of the application. Accordingly, if atthe time the foreign filing is made, the applicant stillhas an operative nonpublication request ( i.e., theapplicant has not rescinded the nonpublicationrequest), a notice of foreign filing must be madewithin 45 days of the foreign filing or the U.S.application with the nonpublication request willbecome abandoned.

Since the notice of foreign filing is required by thestatute, the benefit of a certificate of mailing ortransmission under 37 CFR 1.8 will be given to anotice of foreign filing. See 37 CFR 1.8(a). FormPTO/SB/36 includes a certificate of mailing. If the

Rev. 07.2015, October 20151100-15


end of the 45 day period falls on a Saturday, Sundayor Federal holiday within the District of Columbia,a notice of foreign filing filed on the next succeedingsecular or business day is timely. See 35 U.S.C.21(b).

After either a rescission of a nonpublication requestor a notice of foreign filing is received by the Office,the Office will enter the rescission or notice offoreign filing into the Office Pre-ExaminationSystem to schedule the application for publication.A notice (e.g., a “Notice Regarding Rescission OfNonpublication Request and Notice of ForeignFiling”) should be sent to inform the applicant ofthe projected publication date. The application willbe published promptly after the expiration of a periodof 18 months from the earliest filing date for whicha benefit is sought under title 35, United States Code,or as soon as practicable after mailing this notice.See 35 U.S.C. 122(b)(2)(B)(iv).

II. ABANDONMENT FOR FAILURE TO PROVIDETIMELY NOTICE

37 CFR 1.137 Revival of abandoned application, terminatedreexamination proceeding, or lapsed patent

(a) Revival on the basis of unintentional delay. If the delayin reply by applicant or patent owner was unintentional, apetition may be filed pursuant to this section to revive anabandoned application or a reexamination prosecution terminatedunder § 1.550(d) or § 1.957(b) or limited under § 1.957(c).

(b) Petition requirements. A grantable petition pursuantto this section must be accompanied by:

(1) The reply required to the outstanding Office actionor notice, unless previously filed;

(2) The petition fee as set forth in § 1.17(m);

(3) Any terminal disclaimer (and fee as set forth in §1.20(d)) required pursuant to paragraph (d) of this section; and

(4) A statement that the entire delay in filing therequired reply from the due date for the reply until the filing ofa grantable petition pursuant to this section was unintentional.The Director may require additional information where there isa question whether the delay was unintentional.

(c) Reply. In an application abandoned under § 1.57(a),the reply must include a copy of the specification and anydrawings of the previously filed application. In an applicationor patent abandoned for failure to pay the issue fee or any portionthereof, the required reply must include payment of the issuefee or any outstanding balance. In an application abandoned forfailure to pay the publication fee, the required reply must includepayment of the publication fee. In a nonprovisional applicationabandoned for failure to prosecute, the required reply may bemet by the filing of a continuing application. In a nonprovisional

utility or plant application filed on or after June 8, 1995,abandoned after the close of prosecution as defined in § 1.114(b),the required reply may also be met by the filing of a request forcontinued examination in compliance with § 1.114.

*****

(f) Abandonment for failure to notify the Office of a foreignfiling: A nonprovisional application abandoned pursuant to 35U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Officeof the filing of an application in a foreign country or under amultinational treaty that requires publication of applicationseighteen months after filing, may be revived only pursuant tothis section. The reply requirement of paragraph (c) of thissection is met by the notification of such filing in a foreigncountry or under a multinational treaty, but the filing of a petitionunder this section will not operate to stay any period for replythat may be running against the application.

*****

35 U.S.C. 122(b)(2)(B)(iii) provides that failure ofthe applicant to provide the required notice of foreignfiling within 45 days of the subsequent filing of acounterpart application shall result in abandonmentof the application. When an application is abandonedby the operation of 35 U.S.C. 122(b)(2)(B)(iii),applicant’s sole remedy to restore the application topending status is by filing a petition under 37 CFR1.137 to revive the abandoned application on thebasis of unintentional delay. See 37 CFR 1.137(f).By statute, such a petition to revive requires paymentof the petition fee specified in 37 CFR 1.17(m) (35U.S.C. 41(a)(7)), and that the delay in submittingthe notice of foreign filing was unintentional. FormPTO/SB/64a may be used for such a petition torevive. See also MPEP § 711.03(c). In addition, if,after filing a counterpart application, an applicantmerely rescinds a nonpublication request but doesnot file a notice of foreign filing within forty-fivedays of the subsequent filing of a counterpartapplication, applicant must file a petition under 37CFR 1.137 to revive the abandoned U.S. application(37 CFR 1.137(f)).

Abandonment occurs by operation of the statute, andthe Office is unlikely to recognize when applicanthas filed a counterpart application in a foreigncountry or under a multilateral agreement contraryto their certification to the Office. The Office wouldnot be able to change the status of the applicationfrom pending to abandoned in the PALM systemand send applicant a notice of abandonment. As aresult, if applicant failed to file a notice of foreignfiling when it was required, prosecution of the

1100-16Rev. 07.2015, October 2015


application will continue and the application mayissue as a patent, even though the application hasbecome abandoned by operation of the statute.Applicants who determine that a required notice offoreign filing was not timely provided shouldpromptly file a petition to revive under 37 CFR1.137. See 37 CFR 1.137(f). The reply requirementof 37 CFR 1.137(c) is met by the notification of thefiling in a foreign country or under a multinationaltreaty, but the filing of a petition to revive will notoperate to stay any period for reply that may berunning against the application.

1125 Express Abandonment to AvoidPublication [R-11.2013]

37 CFR 1.138 Express abandonment*****

(c) An applicant seeking to abandon an application to avoidpublication of the application (37 CFR 1.211(a)(1)) must submita declaration of express abandonment by way of a petition underthis paragraph including the fee set forth in § 1.17(h) in sufficienttime to permit the appropriate officials to recognize theabandonment and remove the application from the publicationprocess. Applicants should expect that the petition will not begranted and the application will be published in regular courseunless such declaration of express abandonment and petitionare received by the appropriate officials more than four weeksprior to the projected date of publication.

*****

Applicants seeking to abandon an application toavoid publication of the application are urged to doso by filing a petition under 37 CFR 1.138(c) andsubmitting a declaration of express abandonmentand the fee set forth in 37 CFR 1.17(h) in sufficienttime to permit the appropriate officials (Office ofData Management – Patent Publication Branch) torecognize the abandonment and remove theapplication from the publication process. Applicantsmay use form PTO/AIA/24A for applications filedon or after September 16, 2012 or form PTO/SB/24Afor applications filed before September 16, 2012 forfiling a petition for express abandonment to avoidpublication under 37 CFR 1.138(c).(see MPEP §1135) and file the petition electronically usingEFS-Web, or mail the petition to Mail Stop ExpressAbandonment, or transmit the petition via facsimileto the Office at (571) 273 8300 (see MPEP § 1730).Filing the petition via EFS-Web will increase thechances of such petition being received by the

appropriate officials in sufficient time to avoidpublication of an application.

Any applicant seeking to abandon the applicationfor the purpose of avoiding publication must takeappropriate action well prior to the projectedpublication date. If the application is not recognizedas abandoned at least four weeks prior to theprojected publication date, the Office will not beable to avoid publication of the application. Thisdoes not imply that a request to expressly abandonan application to avoid publication filed prior to thisfour-week time frame will ensure that the Office willbe able to remove an application from publication.The Office simply cannot ensure that it can removean application from publication or avoid publicationof application information any time after thepublication process for the application is initiated(about 4 months prior to the projected publicationdate).

The petition for express abandonment to avoidpublication will be granted when it is recognized insufficient time to avoid publication and will bedenied when it is not recognized in sufficient timeto avoid publication of the application. This willavert the situation in which an applicant files a letterof express abandonment to avoid publication, theletter of express abandonment is not recognized insufficient time to avoid publication, upon publicationthe applicant wishes to rescind the letter of expressabandonment, and the Office cannot revive theapplication (once the letter of express abandonmentis recognized) because the application was expresslyand intentionally abandoned by the applicant.

1126 Publication Fees [R-11.2013]

37 CFR 1.211 Publication of applications.


The publication fee set forth in 37 CFR 1.18(d) mustbe paid in each application published (or scheduled

Rev. 07.2015, October 20151100-17


to be published) under 35 U.S.C. 122(b) before apatent will be granted on the application. Thepublication fee will be required with the Notice ofAllowance and Fee(s) Due, unless the publicationfee was previously paid. If an application becomesabandoned without being allowed, no publicationfee is required. The small entity discount is notavailable for the publication fee. The sum specifiedin the Notice of Allowance and Fee(s) Due will alsoinclude the publication fee which must be paidwithin three months from the date of mailing of theNotice of Allowance and Fee(s) Due to avoidabandonment of the application. This three-monthperiod is not extendable.

Applicant is required to pay the publication fee toavoid abandonment of the application even if theapplication has not yet been published at the timewhen the publication fee is due. The Office willcontinue with the pre-grant publication process untila patent actually issues. This is because there aremany instances in which the Office mails a noticeof allowance in an application but the applicationdoes not issue as a patent in regular course.Therefore, the Office will not discontinue thepre-grant publication process until a patent hasactually issued. Since the Office cannot discontinuethe pre-grant publication process during the last twoto four weeks of the publication process, this willresult in a few applications being issued as patentsand subsequently being published as patentapplication publications. The Office will refund thepublication fee (if paid) if the application is notpublished as a patent application publication, butwill not refund the publication fee if the applicationis published as a patent application publication, evenif it is published after the patent issues. EffectiveJanuary 1, 2014, the publication fee set forth in 37CFR 1.18(d) is $0.00.

Accordingly, applicant may file a request for arefund of the publication fee after 4 weeks from theissue date of the patent if the application did notpublish. A request for refund filed before 4 weeksfrom the issue date is premature and will bedisregarded. Requests for a refund of the publicationfee should be directed to the Office of DataManagement – Patent Publication Branch at MailStop PGPUB.

If applicant files a request for continued examination(RCE) under 37 CFR 1.114 after a Notice ofAllowance and Fee(s) Due is mailed (but before theexpiration of the three-month time period set forthin the Notice of Allowance and Fee(s) Due), theOffice will suspend the due date for the publicationfee until three months from the mail date of the newNotice of Allowance and Fee(s) Due for theapplication (if and when a new Notice is mailed).See Time Period for Paying Publication Fee if aRequest for Continued Examination is Filed After aNotice of Allowance is Mailed, 1249 Off. Gaz. Pat.Office 81 (Aug. 21, 2001). For more information onRCE practice, see MPEP § 706.07(h).

1127 Notice of Publication [R-08.2012]

Applicants will be informed of the projectedpublication date assigned to the application on thefiling receipt. The Office will not mail a paper copyof the patent application publication to the applicant,but will mail a “Notice of Publication” to theapplicant indicating that the application has beenpublished when the application is published. Copiesof patent application publications are available onthe USPTO website (www.uspto.gov).

A “Notice of New or Revised Publication Date” maybe mailed if the publication date changes by morethan six weeks due to processing delays, if a secrecyorder is removed, or subsequent to the revival of anabandoned application. If applicant timely adds ordeletes a benefit or priority claim and the Officerecognizes the correction and changes the projectedpublication date before the technical preparations ofthe application have begun, the Office will mail anotice (e.g., a corrected filing receipt), informingapplicant of the newly assigned projected publicationdate.

1128 Availability of Published Applications[R-07.2015]

37 CFR 1.14 Patent applications preserved in confidence.

(a) Confidentiality of patent application information. Patentapplications that have not been published under 35 U.S.C. 122(b)are generally preserved in confidence pursuant to 35 U.S.C.122(a). Information concerning the filing, pendency, or subjectmatter of an application for patent, including status information,and access to the application, will only be given to the publicas set forth in § 1.11 or in this section.

1100-18Rev. 07.2015, October 2015



(1) Records associated with patent applications (seeparagraph (g) for international applications and paragraph (j)for international design applications) may be available in thefollowing situations:

*****

(ii) Published abandoned applications. The fileof an abandoned published application is available to the publicas set forth in § 1.11(a). A copy of the application-as-filed, thefile contents of the published application, or a specific documentin the file of the published application may be provided to anyperson upon request, and payment of the appropriate fee setforth in § 1.19(b).

(iii) Published pending applications. A copy ofthe application-as-filed, the file contents of the application, ora specific document in the file of a pending published applicationmay be provided to any person upon request, and payment ofthe appropriate fee set forth in § 1.19(b). If a redacted copy ofthe application was used for the patent application publication,the copy of the specification, drawings, and papers may belimited to a redacted copy. The Office will not provide accessto the paper file of a pending application that has been published,except as provided in paragraph (c) or (i) of this section.

*****

(b) Electronic access to an application. Where a copy ofthe application file or access to the application may be madeavailable pursuant to this section, the Office may at its discretionprovide access to only an electronic copy of the specification,drawings, and file contents of the application.

I. ELECTRONIC ACCESS

Patent application publications are availableelectronically on the USPTO website(www.uspto.gov). Any member of the public mayobtain status information concerning any publishedapplication via the Office’s Patent ApplicationInformation Retrieval (PAIR) system. See MPEP §1730. Published applications that have been scannedinto the Image File Wrapper (IFW) system may beavailable electronically via PAIR. See 37 CFR1.14(b). Note that if a published patent applicationis pending and it is not maintained in the IFWsystem, the paper application file itself will not beavailable to the public for inspection. Only copiesof the application file may be obtained pursuant to37 CFR 1.14(a)(1)(iii). See MPEP § 103 foradditional information pertaining to access to patentapplication files.

II. COPIES OF PUBLISHED APPLICATIONS

Any member of the public may submit a requestunder 37 CFR 1.14(a)(1)(ii) or (iii) and the fee setforth in 37 CFR 1.19(b) to the Office of PublicRecords or electronically on the USPTO website(www.uspto.gov) for:

(A) a copy of the complete file wrapper andcontents of, or a copy of a specific paper in, anypublished application, provided that no redactedcopy was timely submitted for publication; or

(B) an appropriately redacted copy of the filewrapper and contents of, or a copy of a specific paperin, any published application for which a redactedcopy was timely submitted for publication.

III. STATUS INFORMATION

Any member of the public may obtain statusinformation concerning any published applicationvia the Office’s PAIR system or contact the FileInformation Unit (FIU). See MPEP § 1730. Statusinformation is defined to include identification ofwhether the application has been published under35 U.S.C. 122(b), as well as whether the applicationis pending, abandoned, or patented, and theapplication number. Status information may also beprovided when the application is referred to by itsapplication number in a U.S. patent applicationpublication as well as a U.S. patent, an internationalpublication of an international application underPCT Article 21(2), or a publication of aninternational registration under Hague AgreementArticle 10(3) of an international design applicationdesignating the United States. The public may obtaincontinuity data for applications that have beenpublished as a U.S. patent application publicationor as a U.S. patent. See also MPEP § 102.

1129 Request for Early Publication[R-11.2013]

37 CFR 1.219 Early publication.

Applications that will be published under § 1.211 may bepublished earlier than as set forth in § 1.211(a) at the requestof the applicant. Any request for early publication must beaccompanied by the publication fee set forth in § 1.18(d). If theapplicant does not submit a copy of the application incompliance with the Office electronic filing system requirementspursuant to § 1.215(c), the Office will publish the application

Rev. 07.2015, October 20151100-19




as provided in § 1.215(a). No consideration will be given torequests for publication on a certain date, and such requests willbe treated as a request for publication as soon as possible.

If an applicant wishes to have an applicationpublished earlier than the date that is eighteenmonths after the earliest filing date for which benefitis claimed, applicant may submit a request incompliance with 37 CFR 1.219 and the publicationfee set forth in 37 CFR 1.18(d). The Office willpublish the application as soon as possible if theapplication is otherwise ready for publication. Thepublication process takes approximately 14 weeksand does not begin until the application is completeand ready for publication (e.g., an executed oath ordeclaration has been filed and the filing fee has beenpaid). See MPEP § 1120. The Office will not giveany consideration to requests for publication on acertain date. Note that if early publication isrequested, and the publication fee paid, applicantwill not be required to pay the publication fee atallowance.

1130 Republication and Correction of PatentApplication Publications [R-07.2015]

37 CFR 1.221 Voluntary publication or republication ofpatent application publication

(a) Any request for publication of an application filedbefore, but pending on, November 29, 2000, and any requestfor republication of an application previously published under§ 1.211, must include a copy of the application in compliancewith the Office electronic filing system requirements and beaccompanied by the publication fee set forth in § 1.18(d) andthe processing fee set forth in § 1.17(i). If the request does notcomply with the requirements of this paragraph or the copy ofthe application does not comply with the Office electronic filingsystem requirements, the Office will not publish the applicationand will refund the publication fee.

(b) The Office will grant a request for a corrected or revisedpatent application publication other than as provided inparagraph (a) of this section only when the Office makes amaterial mistake which is apparent from Office records. Anyrequest for a corrected or revised patent application publicationother than as provided in paragraph (a) of this section must befiled within two months from the date of the patent applicationpublication. This period is not extendable.

I. REQUEST FOR REPUBLICATION

If an applicant wishes to correct errors in a patentapplication publication, or republish the applicationwith an amended specification (including amendedclaims) and/or replacement drawings, applicant may

file a request for republication pursuant to37 CFR1.221(a). The request for republication must include:

(A) a copy of the application in compliance withthe Office Electronic Filing System (EFS)requirements, e.g., set forth in the EFS-Web LegalFramework (for more information on EFS see MPEP§ 1730 and the USPTO website, www.uspto.gov);

(B) the publication fee set forth in 37 CFR1.18(d); and

(C) the processing fee set forth in 37 CFR1.17(i).

If the applicant submits a request that does not meetthe EFS requirements, the request will be dismissed.If the fees are not paid, the USPTO will send theapplicant a letter requiring the fees and republicationof the application will be delayed. While there is noset time limit for requesting republication, theapplication must still be pending.

If the application is recognized by the Office asabandoned, or has issued as a patent, the applicationmay be removed from the publication process andnot republished, even if the Office accepted therequest.

II. REQUEST FOR CORRECTED PUBLICATION- MATERIAL MISTAKE MADE BY THE OFFICE

If the Office made a material mistake in a patentapplication publication that is apparent from theOffice records and applicant wishes to correct thematerial mistake, applicant may file a request forcorrected publication pursuant to 37 CFR 1.221(b).Prior to submitting a request for a correctedpublication under 37 CFR 1.221(b), applicant mustcheck applicant’s records (or PAIR) to determinethat the application papers submitted to the Officedid not contain the alleged material error made bythe Office. If applicant submitted a specification thatincludes illegible text, the Office will not grant arequest for corrected publication under 37 CFR1.221(b) based on errors arising frommisinterpretation of such text.

The request for a corrected publication under 37CFR 1.221(b) must:

1100-20Rev. 07.2015, October 2015



(A) be filed within two months from the date ofthe patent application publication; and

(B) identify the Office’s material mistake in thepublication.

The two-month time period is not extendable. Arequest for corrected publication should include alisting of the alleged material errors made by theOffice, marked up copies of the relevant pages ofthe publication and an indication of where in thespecification as filed the relevant text appears. If theperiod has expired or the mistake is caused by theapplicants, applicants may correct the mistakes byfiling a request for republication under 37 CFR1.221(a), and should not file a request for correctedpublication under 37 CFR 1.221(b).

A. Material Mistake

The Office will grant a request for a correctedpublication under 37 CFR 1.221(b) only when theOffice makes a material mistake which is apparentfrom Office records. A material mistake means amistake that affects the public’s ability to appreciatethe technical disclosure of the patent applicationpublication or determine the scope of the provisionalrights that an applicant may seek to enforce uponissuance of a patent. An error in the claims, the(effective) filing date of the application, or a seriouserror in the written description or drawings that isnecessary to support the claims may be a materialerror. The following are examples of materialmistake:

(A) The publication did not include claims thatwere included in the originally-filed specificationand not canceled by a preliminary amendment.

(B) The publication did not include a part of thespecification that provides support for the publishedclaims.

(C) The publication did not include any of thedrawings originally filed.

(D) For applications filed on or after September16, 2012, the publication did not include the benefitclaim to a prior-filed nonprovisional applicationwhere the specific reference was timely submittedin an application data sheet (ADS). For applicationsfiled before September 16, 2012, the publication didnot include the benefit claim to a prior-filednonprovisional application where the specific

reference was timely submitted in the first sentencesof the specification or ADS.

B. Non-Material Mistake

Applicants should not file requests for correctedpublication that include no material error made bythe Office. Errors in the correspondence address, theassignment information or missing assignmentinformation, minor typographical errors or missingsection headings are not material mistakes. A failureto include an amendment is not an Office error. SeeMPEP § 1121. For example, applicants should notfile a request for a corrected publication under 37CFR 1.221(b) for the following situations:

(A) The publication did not include assignmentinformation.

(B) The publication shows the wrong assigneeor the name of the assignee is misspelled.

(C) The publication did not include a benefit orpriority claim to a prior application. For example,where either the claim was not timely filed or thereference to the prior application under 37 CFR 1.78was not properly submitted in the first sentence ofthe specification or in an application data sheet(ADS) (for applications filed on or after September16, 2012) or the reference to the prior applicationunder 37 CFR 1.78 was not properly submitted inthe first sentences of the specification or in anapplication data sheet (ADS) (for applications filedbefore September 16, 2012). See MPEP §§ 211 etseq.

(D) The publication did not include claims orchanges submitted in an amendment.

(E) The publication includes typographical errorsthat do not affect the interpretation of the publishedclaims.

A request for corrected publication under 37 CFR1.221(b) may result in a patent term adjustment

Rev. 07.2015, October 20151100-21


reduction where the Office made only non-materialerrors (especially those listed above).

1131 [Reserved]

1132 Requests for Redacted Publication[R-08.2012]


*****

(b) PUBLICATION.—

*****

(2) EXCEPTIONS.—

*****

(B) *****

(v) If an applicant has filed applications in oneor more foreign countries, directly or through a multilateralinternational agreement, and such foreign filed applicationscorresponding to an application filed in the Patent andTrademark Office or the description of the invention in suchforeign filed applications is less extensive than the applicationor description of the invention in the application filed in thePatent and Trademark Office, the applicant may submit aredacted copy of the application filed in the Patent andTrademark Office eliminating any part or description of theinvention in such application that is not also contained in anyof the corresponding applications filed in a foreign country. TheDirector may only publish the redacted copy of the applicationunless the redacted copy of the application is not received within16 months after the earliest effective filing date for which abenefit is sought under this title. The provisions of section 154(d)shall not apply to a claim if the description of the inventionpublished in the redacted application filed under this clause withrespect to the claim does not enable a person skilled in the artto make and use the subject matter of the claim.

*****

37 CFR 1.217 Publication of a redacted copy of anapplication

(a) If an applicant has filed applications in one or moreforeign countries, directly or through a multilateral internationalagreement, and such foreign-filed applications or the descriptionof the invention in such foreign-filed applications is lessextensive than the application or description of the invention inthe application filed in the Office, the applicant may submit aredacted copy of the application filed in the Office forpublication, eliminating any part or description of the inventionthat is not also contained in any of the correspondingapplications filed in a foreign country. The Office will publishthe application as provided in § 1.215(a) unless the applicantfiles a redacted copy of the application in compliance with this

section within sixteen months after the earliest filing date forwhich a benefit is sought under title 35, United States Code.

(b) The redacted copy of the application must be submittedin compliance with the Office electronic filing systemrequirements. The title of the invention in the redacted copy ofthe application must correspond to the title of the application atthe time the redacted copy of the application is submitted to theOffice. If the redacted copy of the application does not complywith the Office electronic filing system requirements, the Officewill publish the application as provided in § 1.215(a).

(c) The applicant must also concurrently submit in paper(§ 1.52(a)) to be filed in the application:

(1) A certified copy of each foreign-filed applicationthat corresponds to the application for which a redacted copy issubmitted;

(2) A translation of each such foreign-filed applicationthat is in a language other than English, and a statement that thetranslation is accurate;

(3) A marked-up copy of the application showing theredactions in brackets; and

(4) A certification that the redacted copy of theapplication eliminates only the part or description of theinvention that is not contained in any application filed in aforeign country, directly or through a multilateral internationalagreement, that corresponds to the application filed in the Office.

(d) The Office will provide a copy of the complete filewrapper and contents of an application for which a redactedcopy was submitted under this section to any person upon writtenrequest pursuant to § 1.14(c)(2), unless applicant complies withthe requirements of paragraphs (d)(1), (d)(2), and (d)(3) of thissection.

(1) Applicant must accompany the submission requiredby paragraph (c) of this section with the following:

(i) A copy of any Office correspondence previouslyreceived by applicant including any desired redactions, and asecond copy of all Office correspondence previously receivedby applicant showing the redacted material in brackets; and

(ii) A copy of each submission previously filed bythe applicant including any desired redactions, and a secondcopy of each submission previously filed by the applicantshowing the redacted material in brackets.

(2) In addition to providing the submission requiredby paragraphs (c) and (d)(1) of this section, applicant must:

(i) Within one month of the date of mailing of anycorrespondence from the Office, file a copy of such Officecorrespondence including any desired redactions, and a secondcopy of such Office correspondence showing the redactedmaterial in brackets; and

(ii) With each submission by the applicant, includea copy of such submission including any desired redactions, anda second copy of such submission showing the redacted materialin brackets.

(3) Each submission under paragraph (d)(1) or (d)(2)of this paragraph must also be accompanied by the processing

1100-22Rev. 07.2015, October 2015


fee set forth in § 1.17(i) and a certification that the redactionsare limited to the elimination of material that is relevant onlyto the part or description of the invention that was not containedin the redacted copy of the application submitted for publication.

(e) The provisions of § 1.8 do not apply to the time periodsset forth in this section.

If an application filed in the USPTO and subject topublication under 35 U.S.C. 122(b) includesdescription that is more extensive than anypreviously filed corresponding foreign applications,applicant may request for redacted publication under37 CFR 1.217, eliminating any part or descriptionof the invention that is not also contained in any ofthe corresponding applications filed in a foreigncountry. The Office will publish the redacted (lessextensive) copy of the application instead of the fulldescription of the invention disclosed in the U.S.application (as provided in 37 CFR 1.215(a)) ifapplicant timely files a request for redactedpublication in compliance with 37 CFR 1.217 whichrequires the following:

(A) A redacted copy of the application incompliance with the Office electronic filing system(EFS) requirements, e.g., set forth in the EFS-WebLegal Framework within sixteen (16) months afterthe earliest filing date for which a benefit is soughtunder title 35, United States Code;

(B) A certified copy of each foreign-filedapplication that corresponds to the U.S. applicationfor which a redacted copy is submitted;

(C) A translation of each such foreign-filedapplication that is in a language other than English,and a statement that the translation is accurate;

(D) A marked-up copy of the applicationshowing the redactions in brackets; and

(E) A certification that the redacted copy of theapplication eliminates only the part or descriptionof the invention that is not contained in anyapplication filed in a foreign country, directly orthrough a multilateral international agreement, thatcorresponds to the application filed in the Office.

Items (B) – (E) above must be submitted in paper(which includes submitting via EFS-Web)concurrently with the EFS submission of the redactedcopy of the application.

The 16-month period is provided by statute (35U.S.C. 122(b)(2)(B)(v)), and as such, requests forwaiver of this 16-month period will be denied. Thetitle of the invention in the redacted copy of theapplication must correspond to the title of theapplication at the time the redacted copy of theapplication is submitted to the Office. If the redactedcopy of the application does not comply with theOffice electronic filing system requirements, theOffice will publish the full description of theinvention disclosed in the U.S. application asprovided in 37 CFR 1.215(a).

Once an application has been published, a memberof the public may request a copy of the complete filewrapper and contents of, or a copy of a specific paperin, the published application, provided that noredacted copy was timely submitted for publication.If a redacted copy of the application was used forpublication, the copy of the specification, drawings,and papers may be limited to a redacted copy,provided that the applicant submits the following:

(A) A copy of any Office correspondencepreviously received by applicant including anydesired redactions, and a second copy of all Officecorrespondence previously received by applicantshowing the redacted material in brackets, at thetime of filing the request for redacted publication;

(B) A copy of each submission previously filedby the applicant including any desired redactions,and a second copy of each submission previouslyfiled by the applicant showing the redacted materialin brackets, at the time of filing the request forredacted publication;

(C) Within one month of the date of mailing ofany correspondence from the Office, a copy of suchOffice correspondence including any desiredredactions, and a second copy of such Officecorrespondence showing the redacted material inbrackets;

(D) With each submission by the applicant, acopy of such submission including any desiredredactions, and a second copy of such submissionshowing the redacted material in brackets; and

(E) The processing fee set forth in 37 CFR1.17(i), and a certification that the redactions arelimited to the elimination of material that is relevantonly to the part or description of the invention that

Rev. 07.2015, October 20151100-23


was not contained in the redacted copy of theapplication submitted for publication for eachsubmission in (A)-(D).

Papers submitted for redaction are not entitled to thebenefit of the certificate of mailing practice under37 CFR 1.8. If applicant fails to provide the requiredredacted and marked up copies of the correspondencein compliance with 37 CFR 1.217(d), the Office willprovide a copy of the complete file wrapper andcontents of the application to any person uponwritten request pursuant to 37 CFR 1.14.

1133 Voluntary Publication [R-08.2012]

37 CFR 1.221 Voluntary publication or republication ofpatent application publication.

(a) Any request for publication of an application filedbefore, but pending on, November 29, 2000, and any requestfor republication of an application previously published under§ 1.211, must include a copy of the application in compliancewith the Office electronic filing system requirements and beaccompanied by the publication fee set forth in § 1.18(d) andthe processing fee set forth in § 1.17(i). If the request does notcomply with the requirements of this paragraph or the copy ofthe application does not comply with the Office electronic filingsystem requirements, the Office will not publish the applicationand will refund the publication fee.

*****

Utility and plant applications filed before November29, 2000 will not be published under 35 U.S.C.122(b). If an applicant wishes the Office to publisha utility or plant application filed before November29, 2000 under 35 U.S.C. 122(b), applicant may filea request for voluntary publication under 37 CFR1.221. The application must be pending and therequest for voluntary publication must include:

(A) a copy of the application in compliance withthe Office Electronic Filing System (EFS)requirements, e.g., set forth in the EFS-Web LegalFramework;

(B) the publication fee set forth in 37 CFR1.18(d); and

(C) the processing fee set forth in 37 CFR1.17(i).

If the applicant submits a request that does not meetthe EFS requirements, the request will be dismissed.Since the Office does not intend to publishabandoned applications, applications that arerecognized by the Office as abandoned will not be

published. Thus, if applicant submits a request fora voluntary publication of an application, but theapplication is later abandoned before the applicationpublishes, the application may not be published evenif the Office has accepted the request.

1134 Third Party Inquiries andCorrespondence in a Published Application[R-11.2013]


*****

(c) PROTEST AND PRE-ISSUANCE OPPOSITION.—The Director shall establish appropriate procedures to ensurethat no protest or other form of pre-issuance opposition to thegrant of a patent on an application may be initiated afterpublication of the application without the express written consentof the applicant.

(e) PREISSUANCE SUBMISSIONS BY THIRDPARTIES.—

(1)_ IN GENERAL.— Any third party may submit forconsideration and inclusion in the record of a patent application,any patent, published patent application, or other printedpublication of potential relevance to the examination of theapplication, if such submission is made in writing before theearlier of—

(A) the date a notice of allowance under section151 is given or mailed in the application for patent; or

(B) the later of—

(i) 6 months after the date on which theapplication for patent is first published under section 122 by theOffice, or

(ii) the date of the first rejection under section132 of any claim by the examiner during the examination of theapplication for patent.

(2) OTHER REQUIREMENTS.—Any submissionunder paragraph (1) shall—

(A) set forth a concise description of the assertedrelevance of each submitted document;

(B) be accompanied by such fee as the Directormay prescribe; and

(C) include a statement by the person making suchsubmission affirming that the submission was made incompliance with this section.

*****

1100-24Rev. 07.2015, October 2015


35 U.S.C. 122 includes two provisions regardingsubmissions by third parties in patent applications.Pursuant to 35 U.S.C. 122(c), no protest or otherform or pre-issuance opposition may be initiatedafter publication of an application without theexpress written consent of the applicant. 35 U.S.C.122(c) is implemented by 37 CFR 1.291. Forinformation on protests see MPEP § 1901. 35 U.S.C.122(e), on the other hand, provides a mechanism forthird parties to submit printed publications in anotherparty’s patent application. Under 35 U.S.C. 122(e),any third party may submit printed publications ofpotential relevance to the examination of anapplication for consideration and inclusion in therecord of the application. Such submissions must betimely made in writing and include a concisedescription of the asserted relevance of eachpublication submitted, any fee prescribed by theDirector, and a statement of compliance with 35U.S.C. 122(e). 35 U.S.C. 122(e) is implemented by37 CFR 1.290, which replaces 37 CFR 1.99. SeeChanges To Implement the Preissuance Submissionsby Third Parties Provision of the Leahy-SmithAmerica Invents Act, 77 Fed. Reg. 42150 (July 17,2012) (final rule). Third-party submissions under 37CFR 1.99 were eliminated as of September 16, 2012.

In contrast to protests under 37 CFR 1.291,third-party submissions under 37 CFR 1.290 maybe made in published patent applications where thetiming provisions set forth in 37 CFR 1.290(b) aresatisfied. Additionally, third-party submissions havedifferent content requirements than protests. While37 CFR 1.290 limits third-party submissions toprinted publications, 37 CFR 1.291 provides for thesubmission of information in a protest other thanpublications, including any facts or informationadverse to patentability, and arguments to that effect.See MPEP §§ 1901, 1901.02 and 1901.06subsectionVII. Moreover, 37 CFR 1.291(c)(2) requires a protestto include a “concise explanation of the relevance”of each item of information submitted. This isdistinct from the concise description of relevancerequired by 37 CFR 1.290(d)(3) for third-partysubmissions. Unlike the concise description ofrelevance for a third-party submission under 37 CFR1.290, which is limited to a description of adocument’s relevance, the concise explanation fora protest under 37 CFR 1.291 allows for argumentsagainst patentability.

Despite the provisions of 35 U.S.C. 122(c) and (e),the Office occasionally receives third-party inquiriesor submissions (other than under 37 CFR 1.290 and37 CFR 1.291) regarding patent applications. Forexample, third parties have inquired into the timingof future actions on an application, inventorship inan application, and some third parties have insistedthat the Office withdraw an application from issueunder 37 CFR 1.313 on the basis of unpatentabilityof a claim. The Office considers inappropriate anythird-party inquiry, or submission in an applicationthat is not provided for in 37 CFR 1.290 or 37 CFR1.291. Any submission filed by a third party in anapplication that does not comply with therequirements of 37 CFR 1.290 or 37 CFR 1.291 willnot be entered into the application file and will bediscarded.

Office personnel (including the Patent ExaminingCorps) are instructed to: (1) not reply to or act uponany third-party inquiry or other submission in anapplication, except those in compliance with 37 CFR1.290 or 37 CFR 1.291; and (2) decline to acceptoral or telephone comments or submissions aboutapplications from third parties. When refusingthird-party telephone or oral discussions, examinersmay call the party’s attention to the statutoryprohibition on initiating protests, or 37 CFR 1.2 (allOffice business should be transacted in writing), asappropriate. See Third Party Attempts to Protest orOtherwise Oppose the Grant of a PublishedApplication, 1269 Off. Gaz. Pat. Office 179 (April22, 2003). The Office may also refer third-partyinquiries, or submissions not provided for in 37 CFR1.290 or 37 CFR 1.291, by registered practitionersin applications to the Office of Enrollment andDiscipline for appropriate action.

The provisions of 35 U.S.C. 122(c) and (e) limit athird party’s ability to protest, oppose the grant of,or have information entered and considered in anapplication pending before the Office. However,these provisions do not limit the Office’s authorityto independently re-open the prosecution of apending application on the Office’s own initiativeand consider information deemed relevant to thepatentability of any claim in the application. See

Rev. 07.2015, October 20151100-25


Blacklight Power, Inc. v. Rogan, 295 F.3d 1269, 63USPQ2d 1534 (Fed. Cir. 2002).

1134.01 Third Party Submissions Under 37CFR 1.290 [R-07.2015]

37 CFR 1.290 Submissions by third parties in applications.

(a) A third party may submit, for consideration and entryin the record of a patent application, any patents, publishedpatent applications, or other printed publications of potentialrelevance to the examination of the application if the submissionis made in accordance with 35 U.S.C. 122(e) and this section.A third-party submission may not be entered or considered bythe Office if any part of the submission is not in compliancewith 35 U.S.C. 122(e) and this section.

(b) Any third-party submission under this section must befiled prior to the earlier of:

(1) The date a notice of allowance under § 1.311 isgiven or mailed in the application; or

(2) The later of:

(i) Six months after the date on which theapplication 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 ofany claim by the examiner is given or mailed during theexamination of the application.

(c) Any third-party submission under this section must bemade in writing.

(d) Any third-party submission under this section mustinclude:

(1) A document list identifying the documents, orportions of documents, being submitted in accordance withparagraph (e) of this section;

(2) A concise description of the asserted relevance ofeach item identified in the document list;

(3) A legible copy of each item identified in thedocument list, other than U.S. patents and U.S. patent applicationpublications;

(4) An English language translation of any non-Englishlanguage item identified in the document list; and

(5) A statement by the party making the submissionthat:

(i) The party is not an individual who has a dutyto disclose information with respect to the application under §1.56; and

(ii) The submission complies with the requirementsof 35 U.S.C. 122(e) and this section.

(e) The document list required by paragraph (d)(1) of thissection must include a heading that identifies the list as athird-party submission under § 1.290, identify on each page ofthe list the application number of the application in which thesubmission is being filed, list U.S. patents and U.S. patentapplication 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 patentapplication publication number, first named inventor, andpublication date;

(3) Foreign patent or published foreign patentapplication by the country or patent office that issued the patentor published the application; the applicant, patentee, or firstnamed inventor; an appropriate document number; and thepublication 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 isknown, the third party must provide evidence of publication.

(f) Any third-party submission under this section must beaccompanied by the fee set forth in § 1.17(o) for every ten itemsor fraction thereof identified in the document list.

(g) The fee otherwise required by paragraph (f) of thissection is not required for a submission listing three or fewertotal items that is accompanied by a statement by the partymaking the submission that, to the knowledge of the personsigning the statement after making reasonable inquiry, thesubmission is the first and only submission under 35 U.S.C.122(e) filed in the application by the party or a party in privitywith the party.

(h) In the absence of a request by the Office, an applicantneed not reply to a submission under this section.

(i) The provisions of § 1.8 do not apply to the time periodsset forth in this section.

Section 8 of the America Invents Act (AIA) amends35 U.S.C. 122 by adding 35 U.S.C. 122(e), whichprovides a mechanism for third parties to submitprinted publications in another party’s patentapplication. 35 U.S.C. 122(e) is implemented by 37CFR 1.290, which replaces 37 CFR 1.99. SeeChanges To Implement the Preissuance Submissionsby Third Parties Provision of the Leahy-SmithAmerica Invents Act, 77 Fed. Reg. 42150 (July 17,2012) (final rule). Third-party submissions under 37CFR 1.99 were eliminated as of September 16, 2012.

1100-26Rev. 07.2015, October 2015

MANUAL OF PATENT EXAMINING PROCEDURE§ 1134.01

I. TIMELINESS REQUIREMENT

37 CFR 1.290(b) sets forth the time periods in whicha third party may file a third-party submission. Whilethere is no limit on the number of submissions thatone third party may make in an application, athird-party submission must be filed prior to theearlier of:

(1) The date a notice of allowance under 37 CFR1.311 is given or mailed in the application; or

(2) The later of:

(i) Six months after the date on which theapplication is first published by the Office under 35U.S.C. 122(b) and 37 CFR 1.211, or

(ii) The date the first rejection under 37 CFR1.104 of any claim by the examiner is given ormailed during the examination of the application.

Thus, a third-party submission cannot be filed in anapplication where a notice of allowance has beenissued in the application, regardless of whether thatnotice of allowance is subsequently withdrawn. If anotice of allowance has not been issued in anapplication, a third-party submission may be filedprior to the date that is six months after the date ofpublication by the Office or prior to the date of thefirst rejection of any claim by the examiner,whichever is later.

The 37 CFR 1.290(b)(2)(i) time period will beinitiated only by publications “by the Office” under35 U.S.C. 122 and 37 CFR 1.211, and will not beinitiated by a publication by the World IntellectualProperty Organization (WIPO). Thus, an earlierpublication by WIPO of an international applicationdesignating the United States will not be considereda publication that will initiate the 37 CFR1.290(b)(2)(i) time period for an application whichentered the national stage from the internationalapplication after compliance with 35 U.S.C. 371.Additionally, the first publication of the applicationby the Office will trigger the 37 CFR 1.290(b)(2)(i)time period where appropriate. The republication ofan application under 37 CFR 1.221(b) is not the“first” publication by the Office under 35U.S.C.122(b) for purposes of 35 U.S.C. 122(e).Where the Office does not publish an application,the date that is six months after the publication datewould not occur and, therefore, by default would be

considered later than both the date of a first rejectionof any claim and the date the notice of allowance isgiven or mailed in the application. Accordingly, thedate that a notice of allowance is given or mailed inthe application would control the timing of athird-party submission in an application which hasnot been published, not the date of the first rejectionof any claim.

The 37 CFR 1.290(b)(2)(ii) time period will beinitiated by the date the first rejection under 37 CFR1.104 of any claim by the examiner is given ormailed during the examination of the application.“Given” refers to the electronic notification of anOffice action that replaces postal mailing of anOffice action for applicants participating in theElectronic Office Action Notification (e-OfficeAction) program. The 37 CFR 1.290(b)(2)(ii) timeperiod will not be initiated, for example, by a firstOffice action that only contains a restrictionrequirement or where the first Office action is anaction under Ex parte Quayle, 1935 Dec. Comm’rPat. 11 (1935).

The filing of an RCE does not reset the 37 CFR(b)(2)(ii) time period for filing a third-partysubmission. Additionally, the filing of an RCE in anapplication does not preclude a third party frommaking a third-party submission in the application,if the third-party submission is made within the timeperiods set forth in 37 CFR 1.290(b)(2).

All third-party submissions must be filed prior to,not on, the dates identified in 37 CFR 1.290(b)(1)and (b)(2). For example, assuming no notice ofallowance has been issued in an application, if athird-party submission is filed on the same date thefirst rejection is mailed and the application has beenpublished for more than six months, the submissionwould not be timely and would not be entered. Inanother example, assuming no notice of allowancehas been issued in an application, if a third-partysubmission is filed on the date that is six monthsafter the date the Office published the applicationand a first rejection has already been mailed, thesubmission would not be timely and would not beentered (i.e., if the Office published the applicationon May 21, a third-party submission filed onNovember 21, which is the date that is six monthsafter the date the Office published the application,

Rev. 07.2015, October 20151100-27

§ 1134.01STATUTORY INVENTION REGISTRATION (SIR); PRE-GRANT PUBLICATION (PGPUB) AND PREISSUANCESUBMISSIONS

would not be timely as, according to the rule, thesubmission would need to have been made onNovember 20 or earlier).

A. Time Periods Are Statutory and Cannot Be Waived

The time periods provided for in 37 CFR 1.290(b)are statutory and cannot be waived. See 35 U.S.C.122(e)(1). Thus, the Office cannot grant any requestfor extension of the 37 CFR 1.290(b) time periods.Third-party submissions that are not timely filed willnot be entered or considered and will be discarded.

The statutory time period for making a third-partysubmission will not be tolled by a non-compliantsubmission. Accordingly, making a third-partysubmission at the earliest opportunity increases thelikelihood there will be sufficient time to make aresubmission should the initial submission be foundnon-compliant. A third party who previously fileda non-compliant submission may file anothercomplete submission, provided the statutory timeperiod for filing a third-party submission has notclosed.

The abandonment of an application will not toll thestatutory time period for making a third-partysubmission. For example, if prior to publication anapplication goes abandoned because the applicantfails to timely respond to a first rejection of anyclaim, and the application is later revived, athird-party submission would be timely if made priorto the earlier of: the date a notice of allowance isgiven or mailed or the date that is six months afterthe date the application is published by the Office.

B. A Third-Party Submission Is Filed On Its Date ofReceipt in the Office

A third-party submission under 37 CFR 1.290 isfiled on its date of receipt in the Office as set forthin 37 CFR 1.6. The holiday/weekend rule set forthin 37 CFR 1.7(a) applies to a third-party submissionunder 37 CFR 1.290. For example, if the day priorto the date that is six months after publication of anapplication which has not been allowed but whichapplication was subject to a first Office actionincluding a rejection of at least one claim more thansix month previously is a Saturday, the submissionmay be timely filed on the next business day, e.g.,

the following Monday via Priority Mail Express®

service pursuant to 37 CFR 1.10, hand delivery orpreferably via the Office’s dedicated Web-basedinterface for preissuance submissions. See also Subsection IV.D. below (providing that thecertificate of mailing and transmission provisionsof 37 CFR 1.8 do not apply, but the United States

Postal Service (USPS) Priority Mail Express®

service provisions of 37 CFR 1.10 do apply to athird-party submission under 37 CFR 1.290.

II. CONTENT REQUIREMENTS FOR ATHIRD-PARTY SUBMISSION

37 CFR 1.290(d) identifies the required content ofa third-party submission as follows:

(A) a document list, identifying the publications,or portions of publications, submitted (formPTO/SB/429 or an equivalent document list for papersubmissions only; a completed form PTO/SB/429is automatically generated for electronicsubmissions);

(B) a concise description of the assertedrelevance of each item identified in the documentlist;

(C) a legible copy of each item identified in thedocument list, other than U.S. patents and U.S. patentapplication publications;

(D) an English language translation of anynon-English language item identified in thedocument list;

(E) statements by the party making thesubmission that:

a) the party is not an individual who has aduty to disclose information with respect to theapplication under 37 CFR 1.56; and

b) the submission complies with therequirements of 35 U.S.C. 122(e) and 37 CFR 1.290;and

(F) any required fee or the 37 CFR 1.290(g)statement that the fee exemption applies to thesubmission.

1100-28Rev. 07.2015, October 2015


A. Document List

37 CFR 1.290(d)(1) provides that any third-partysubmission under 37 CFR 1.290 must include adocument list identifying the documents, or portionsof documents, being submitted in accordance with37 CFR 1.290(e). 37 CFR 1.290(e) sets forth therequirements for identifying the items in the 37 CFR1.290(d)(1) document list. Because 37 CFR1.290(d)(1) provides for an item identified in thedocument list to be either an entire document or aportion of a document, in the case where a lengthydocument contains both information of potentialrelevance to the examination of the application andother information that is not of potential relevance,a third party may choose to identify only the relevantportion of the document (e.g., one chapter of atextbook) in lieu of the entire document where it ispractical to do so. Otherwise, the third party shouldidentify the entire document.

1. Form PTO/SB/429

When filing in paper, third parties may use formPTO/SB/429 (or equivalent) to prepare the document

list in accordance with 37 CFR 1.290(d)(1) and 37CFR 1.290(e). Electronic filing via the Office’sdedicated Web-based interface for preissuancesubmissions in EFS-Web is an alternative to paperfiling using form PTO/SB/429 (or equivalent). Useof this form will not be necessary for third-partysubmissions filed electronically via the Office’sdedicated Web-based interface for preissuancesubmissions, as this interface will prompt the thirdparty to complete the fields that are provided on theform and will automatically format the enteredinformation into an electronic version of the formPTO/SB/429 for electronic submission. While useof form PTO/SB/429 is not required for papersubmissions, form PTO/SB/429 is designed to helpensure that important requirements are notoverlooked, such as the document listingrequirements pursuant to 37 CFR 1.290(e) and therequired statements pursuant to 37 CFR 1.290(d)(5).The form PTO/SB/429 also enables the third partyto indicate whether a fee is due or to select the “firstand only” statement pursuant to 37 CFR 1.290(g)where the fee exemption applies. Form PTO/SB/429and instructions for completion are available on theUSPTO website at www.uspto.gov/forms.

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http://www.uspto.gov/forms

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Rev. 07.2015, October 20151100-31


1100-32Rev. 07.2015, October 2015


2. Listing Requirements

37 CFR 1.290(e) sets forth the requirements foridentifying the items in the document list pursuantto 37 CFR 1.290(d)(1). Section 1.290(e) requires thedocument list include a heading that identifies thelist as a third-party submission under 37 CFR 1.290.37 CFR 1.290(e) also requires that the document listidentify on each page of the list, the applicationnumber (i.e., the series code and serial number) ofthe application in which the submission is beingfiled. This requirement is consistent with therequirement set forth in 37 CFR 1.98(a)(1)(i) forapplicant information disclosure statement listings.37 CFR 1.290(e) further requires that U.S. patentsand U.S. patent application publications be listed ina separate section from other items in the documentlist. Separating the listing of U.S. patents and U.S.patent application publications from the listing ofother items in the document list will facilitateprinting the U.S. patents and U.S. patent applicationpublications considered by the examiner in athird-party submission on the face of the patent. Thededicated Web-based interface for electronicallyfiling preissuance submissions will automaticallygenerate a document list in accordance with theserequirements of 37 CFR 1.290(e).

Sections 1.290(e)(1) through (e)(4) set forth therequirements for identifying the items in the 37 CFR1.290(d)(1) document list.

(a) U.S. Patents and U.S. Patent ApplicationPublications

37 CFR 1.290(e)(1) requires that each U.S. patentbe identified by patent number, first named inventor,and issue date. 37 CFR 1.290(e)(2) requires that eachU.S. patent application publication be identified bypatent application publication number, first namedinventor, and publication date.

(b) Foreign Patents and Published Foreign PatentApplications

37 CFR 1.290(e)(3) requires that each foreign patentor published foreign patent application be identifiedby the country or patent office that issued the patentor published the application; the applicant, patentee,or first named inventor; an appropriate document

number; and the publication date indicated on thepatent or published application. The requirement forU.S. patents and patent application publications tobe identified by first named inventor, and for foreignpatents and published patent applications to beidentified by the applicant, patentee, or first namedinventor, is intended to aid in identifying the itemsin the document list in the event the applicationnumber, publication number, or other appropriatedocument number data is in error, for example,inadvertently transposed. Further, 37 CFR1.290(e)(3) offers flexibility in permittingidentification of foreign patents and publishedforeign patent applications by expanding theidentification to also include the applicant orpatentee, in addition to the first named inventor.

(c) Non-Patent Publications

All non-patent publications, such as Office actions,journal articles, communications from foreign patentoffices, court documents, etc. that qualify aspublications should be listed under the “Non-PatentPublications” section of the form PTO/SB/429 (orequivalent) or entered in the “Non-PatentPublications” section of the Office’s dedicatedWeb-based interface for preissuance submissionswhen filing electronically.

37 CFR 1.290(e)(4) requires that each non-patentpublication be identified by author (if any), title,pages being submitted, publication date, and whereavailable, publisher and place of publication.However, 37 CFR 1.290(e)(4) does not preclude athird party from providing additional informationnot specified in 37 CFR 1.290(e)(4) (e.g., journaltitle and volume/issue information for a journalarticle). Because publisher and place of publicationinformation may not be available in some instances,37 CFR 1.290(e)(4) emphasizes that suchinformation need only be provided where it isavailable. For publications obtained from theInternet, the uniform resource locator (URL) of theWeb page that is the source of the publication mustbe provided for the place of publication ( e.g.,“www.uspto.gov”). Further, for an Internetpublication obtained from a website that archivesWeb pages, both the URL of the archived Web pagesubmitted for consideration and the URL of thewebsite from which the archived copy of the Web

Rev. 07.2015, October 20151100-33


page was obtained should be provided on thedocument listing (e.g., “Hand Tools,” Web page<http://www.farmshopstore.com/handtools.html>,1 page, August 18, 2009, retrieved from InternetA r c h i v e Wa y b a c k M a c h i n e<http://web.archive.org/web/20090818144217/http://www.farmshopstore.com/handtools.html> onDecember 20, 2012).

37 CFR 1.290(e)(4) further requires that, if nopublication date is known, the third party mustprovide evidence of publication. This requirementrecognizes that some documents may not indicate adate of publication. Where the actual publicationdate of a non-patent document is not known, a thirdparty must, at a minimum, provide a date of retrieval(e.g., the date a Web page was retrieved) or a timeframe (e.g., a year, a month and year, a certainperiod of time) when the document was available asa publication for purposes of identifying thedocument by publication date pursuant to 37 CFR1.290(e)(4), in addition to including evidence thatestablishes the document as a publication. SeeSubsection III.A. below for additional discussionregarding evidence of publication.

B. Concise description of relevance

37 CFR 1.290(d)(2) requires a concise descriptionof the asserted relevance of each item identified inthe document list in view of the statutoryrequirement of 35 U.S.C. 122(e)(2)(A) that eachthird-party preissuance submission be accompaniedby a “concise description of the asserted relevanceof each submitted document.” A concise descriptionof relevance for an item is a statement of factsregarding the submitted evidence ( i.e., the patent,published patent application, or other publication)and will not, itself, be treated as evidence. Theconcise description should set forth facts, explaininghow an item listed is of potential relevance to theexamination of the application in which thethird-party submission has been filed.

1. Format

The concise description of relevance for a listedpublication can be presented in any format thatwould best explain to the examiner the relevance ofthe accompanying document, such as in a narrative

description or a claim chart. A concise descriptionof relevance is most effective when it draws theexaminer’s attention to the potential relevance of asubmitted document to the examination of anapplication. A concise description that points out therelevant pages or lines of the respective documentmay be an effective way to draw the examiner’sattention to the potential relevance of the document,particularly where the document is lengthy andcomplex and the third party can identify a highlyrelevant section, such as a particular figure orparagraph.

A third party using the Office’s dedicated Web-basedinterface to electronically file a third-partysubmission may fill in the concise description ofrelevance field for an item or upload a separate paperwith the concise description for the item in lieu ofentering the concise description in the field. SeeSubsection IV.E. below for more informationregarding electronic filing. When filing in paper, athird party should provide the concise descriptionof relevance for an item as a separate paper (asopposed to combining the concise descriptions ofrelevance for all items into a single paper).Providing, for each concise description of relevance,a separate paper that prominently identifies the itemin the document list to which the concise descriptionpertains will help ensure that the screener and theexaminer can readily identify it. See SubsectionIV.F below for more information regarding paperfiling.

2. Content

At a minimum, a concise description of relevancemust be more than a bare statement that thedocument is relevant because such a statement doesnot amount to a meaningful concise description. Forexample, the following statements, presented alone,would not be considered anything more than barestatements of relevance that do not rise to the levelof meaningful concise descriptions: “Document 1 isrelevant,” “See Document 1,” “Document 1discloses/may disclose the invention,” and“Document 1 teaches the invention in Claim 1.”Additionally, a copy of the listed document that ismerely annotated or highlighted will not be deemeda proper concise description of relevance. Further,concise descriptions of relevance that appear to be

1100-34Rev. 07.2015, October 2015


mere form paragraphs/letters in opposition to ageneral class of invention or technology will not bedeemed proper concise descriptions of relevance.

While there is no page limit on a concise descriptionof relevance, third parties should refrain fromsubmitting a verbose description of relevance, notonly because the statute calls for a “concise”description, but also because a focused descriptionis more effective in drawing the examiner’s attentionto the relevant issues. For example, a descriptionthat includes an introductory paragraph describingthe field of technology of a document and a claimchart that maps portions of the document to differentclaim elements would likely be considered “concise.”On the other hand, descriptions that merely repeatin narrative format the same information that is alsodepicted in a claim chart or that approach the lengthof the documents themselves will not likely beconsidered “concise.”

Third-party submissions that include unpublishedmaterials as attachments to or inserted into the textof a concise description of relevance of a listedpublication will be found to be non-compliant. Forexample, where a third party submits a publicationfor consideration, describes how a feature shown inan image from the publication is relevant, and insertsan image from a different source into the concisedescription to show details that are not visible orotherwise apparent in the published image, suchsubmission would be deemed non-compliant unlessthe image from the different source was alsopublished and separately listed for consideration.

3. Not an invitation to participate in the prosecutionof the application

The statutory requirement for a concise descriptionof relevance should not be interpreted as permittinga third party to participate in the prosecution of anapplication, as 35 U.S.C. 122(c) prohibits theinitiation of a protest or other form of pre-issuanceopposition for published applications without theconsent of the applicant. Therefore, while a concisedescription of relevance may include claim charts(i.e., mapping various portions of a submitteddocument to different claim elements), the concisedescription of relevance is not an invitation to a thirdparty to propose rejections of the claims or set forth

arguments relating to an Office action in theapplication or to an applicant’s reply to an Officeaction in the application. Unlike the conciseexplanation for a protest under 37 CFR 1.291, whichallows for arguments against patentability, theconcise description of relevance required by 35U.S.C. 122(e) is limited to a factual description ofa document’s relevance. The concise description ofrelevance, therefore, does not permit third parties tosubmit arguments against patentability or set forthconclusions regarding whether one or more claimsare patentable. In other words, the concisedescription of relevance must not rise to the level ofa protest under 37 CFR 1.291.

Examples of compliant concise descriptionsformatted as a narrative:

“Claim 1 recites a refrigeration system comprisingelements A, B, and C. Publication X discloses therefrigeration system recited in claim 1, except thatthe refrigeration system disclosed in publication Xuses element D instead of element C. See Figure 1on page 2 of publication X. Publication Y disclosesthe specific element C recited in claim 1, but not inthe context of refrigeration systems. See pages 1-3of publication Y. Publication Z teaches that elementC is frequently used in refrigeration systems. Seelines 2-10 on page 6 of publication Z.”

“Claim 1 recites a chemical composition comprisingchemicals A, B, C, and D. Patent publication Xteaches a chemical composition comprisingchemicals A, B, C, and E. See claim 4 of patentpublication X. Publication Y teaches chemical Dand discusses why chemical D is an art-recognizedequivalent of chemical E. See page 4 of publicationY.”

Examples of non-compliant concise descriptionsformatted as a narrative (the non-compliant portionis shown in bold):

“Claim 1 recites a refrigeration system comprisingelements A, B, and C. Publication X discloses therefrigeration system recited in claim 1, except thatthe refrigeration system disclosed in publication Xuses element D instead of element C. See Figure 1on page 2 of publication X. Publication Y disclosesthe specific element C recited in claim 1, but not in

Rev. 07.2015, October 20151100-35


the context of refrigeration systems. See pages 1-3of publication Y. Publication Z teaches that elementC is frequently used in refrigeration systems. Seelines 2-10 on page 6 of publication Z. It would havebeen obvious to one of ordinary skill in the art tocombine the teachings of publication X andpublication Y to obtain the refrigeration systemrecited in claim 1.”

“Claim 1 recites a chemical composition comprisingchemicals A, B, C, and D. Patent publication Xteaches a chemical composition comprising

chemicals A, B, C, and E. See claim 4 of patentpublication X. Publication Y teaches chemical Dand discusses why chemical D is an art-recognizedequivalent of chemical E. See pages 3-4 ofpublication Y. The composition of claim 1 isunpatentable in view of publication X andpublication Y.”

Examples of compliant concise descriptionsformatted as a claim chart for a claim having onlytwo elements:

Publication XClaim 1As discussed on page 1, publication X discloses amachine that performs the same function as the

Preamble

machine recited in claim 1. The machine set forth inpublication X includes many of the same partsdiscussed in the specification of this application.For example, in the first embodiment depicted inFigure 2 and discussed on page 5, the machine of

Element A

publication X expressly includes element A of claim1. See lines 7-14 on page 5 of publication X.The first embodiment also includes element B of claim1. See lines 1-3 on page 6 of publication X.

Element B

Publication YPublication XClaim 1Publication Y discloses a machinethat performs the same function asthe machine recited in claim 1.

Publication X discloses a machinethat performs the same function asthe machine recited in claim 1. The

Preamble

machine set forth in publication Xincludes many of the same partsdiscussed in the specification ofthis application.For example, in the firstembodiment depicted in Figure 2

Element A

and discussed on page 5, themachine of publication X expresslyincludes element A of claim 1. Seelines 7-14 on page 5 of publicationX.

Publication Y teaches a machinehaving element B of claim 1. See

Element B

lines 1-3 on page 6 of publicationY. Publication Y teaches thebenefits of using element B in thistype of a machine.

1100-36Rev. 07.2015, October 2015


Examples of non-compliant concise descriptionsformatted as a claim chart for a claim having only

two elements (the non-compliant portion is shownin bold):

Publication XClaim 1As discussed on page 1, publication X discloses amachine that performs the same function as the

Preamble

machine recited in claim 1. The machine set forth inpublication X includes many of the same partsdiscussed in the specification of this application.For example, in the first embodiment depicted inFigure 2 and discussed on page 5, the machine of

Element A

publication X expressly includes element A of claim1. See lines 7-14 on page 5 of publication X.The first embodiment also includes element B of claim1. See lines 1-3 on page 6 of publication X. Thus,

Element B

publication X anticipates claim 1 because it teachesall of the elements of claim 1.

Publication YPublication XClaim 1Publication Y discloses a machinethat performs the same function asthe machine recited in claim 1.

Publication X discloses a machinethat performs the same function asthe machine recited in claim 1. The

Preamble

machine set forth in publication Xincludes many of the same partsdiscussed in the specification ofthis application.For example, in the firstembodiment depicted in Figure 2

Element A

and discussed on page 5, themachine of publication X expresslyincludes element A of claim 1. Seelines 7-14 on page 5 of publicationX.Publication Y teaches a machinehaving element B of claim 1. See

Element B

lines 1-3 on page 6 of publicationY. Publication Y teaches thebenefits of using element B in thistype of a machine. Accordingly,claim 1 is unpatentable in viewof the combination of publicationX and publication Y.

A concise description of relevance for a submitteddocument is not considered evidence but, rather, astatement of facts regarding the submitted evidence.Accordingly, the Office will not consider adeclaration as evidence, where such declaration issubmitted as a concise description of relevance for

a document. Where a third party submits adeclaration for the concise description of relevance,the concise description of relevance must not amountto an attempt at third-party participation in theexamination of the application.

Rev. 07.2015, October 20151100-37


C. Copies

37 CFR 1.290(d)(3) requires submission of a legiblecopy of each item identified in the document list,other than U.S. patents and U.S. patent applicationpublications. See 37 CFR 1.98(a)(2)(ii) and MPEP§ 609.04(a). Any copies of documents that aresubmitted in color will be scanned into black andwhite prior to entry of a compliant submission in therecord of an application. There is no provision forthe submission of copies of documents via compactdisc or other electronic data storage medium.However, a third party may upload electronic copiesof documents when using the Office’s dedicatedWeb-based interface to electronically file athird-party submission. See Subsection IV.E. below.

37 CFR 1.290(d)(1) provides for the listing of eitherentire documents or portions of documents. Thus,where only a portion of a document is listed as anitem in the document list, a copy of that portion andnot a copy of the entire document (e.g., where aparticular chapter of a book is listed and not theentire book) must be submitted. Further, when acopy of only a portion of a document is submitted,copies of pages of the document that provideidentifying information (e.g., a copy of the cover,the title page, the copyright information page, etc.)should also be submitted. Under 37 CFR 1.290(d)(3),copies of U.S. patents and U.S. patent applicationpublications need not be submitted because suchdocuments are readily accessible to examiners.

Whether filing a third-party submission under 37CFR 1.290 in paper or electronically, it would be abest practice for third parties to include anidentifying label for each item in the document listand place the identifying label on the accompanyingconcise description of relevance for the item, on thecopy of the item (if submitted), and on the translationof the item (if submitted) so that screeners andexaminers can more quickly identify the descriptionsof relevance, copies, and translations that correspondto each item in the document list.

Images of non-patent literature (NPL) cited in acompliant third-party submission will not beavailable for either viewing or downloading throughPublic PAIR. However, when entering a compliantthird-party submission into an application file, the

Office will separate the document list from thecopies of the documents so that the identifyingbibliographical information for the documents citedin the third-party submission will be visible in PublicPAIR. The Office currently employs such a practicewhen entering IDS submissions under 37 CFR 1.98.

D. Translations

37 CFR 1.290(d)(4) requires an English languagetranslation of any non-English language itemidentified in the document list. A translationsubmitted pursuant to 37 CFR 1.290(d)(4) may bea reliable machine translation and need not becertified. 37 CFR 1.290(d)(1) provides for the listingof either entire documents or portions of documents.Thus, where only a portion of a non-Englishlanguage document is listed, a translation of theentire non-English language document must not besubmitted. Rather, a copy of the listed portion of thenon-English language document and a translationof only this portion must be submitted.

E. Statements

37 CFR 1.290(d)(5)(i) requires a statement by theparty making the submission that the party is not anindividual who has a duty to disclose informationwith respect to the application (i.e., each individualassociated with the filing and prosecution of thepatent application) under 37 CFR 1.56. Suchstatement is intended to avoid potential misuse ofthird-party submissions by applicants (e.g., byemploying a third-party “straw man”) to attempt tocircumvent the IDS rules. 37 CFR 1.290(d)(5)(ii)requires a statement by the party making thesubmission that the submission complies with therequirements of 35 U.S.C. 122(e) and 37 CFR 1.290.Additionally, to take advantage of the fee exemption,a third-party submission must be accompanied bythe statement under 37 CFR 1.290(g). See SubsectionIV.F. below for more information regarding the feeexemption.

To facilitate compliance by third parties, formPTO/SB/429 and the dedicated Web-based interfacefor preissuance submissions include the statementsrequired by 37 CFR 1.290(d)(5)(i) and (ii), as wellas the statement under 37 CFR 1.290(g) (which canbe selected if applicable). The Office will not

1100-38Rev. 07.2015, October 2015


entertain challenges to the accuracy of suchstatements because, pursuant to 37 CFR 11.18(b),whoever knowingly and willfully makes any false,fictitious, or fraudulent statements or representationsto the Office shall be subject to the penalties set forthunder 18 U.S.C. 1001. 37 CFR 11.18(b) applies toany paper presented to the Office, whether by apractitioner or non-practitioner.

The Office cannot permit a third-party submissionto be presented unsigned by the submitter in viewof the signature requirement set forth in 37 CFR 1.4for papers filed in a patent application, which requirea person’s signature. Third-party submissions arerequired to be signed because 37 CFR 1.290(d)(5)and 37 CFR 1.290(g) (if applicable) requirestatements by the party making the submission. Thus,a third-party submission must be signed by thesubmitter, but there is no requirement to identify areal party in interest. A real party in interest canremain anonymous by having someone else makethe third-party submission for them, but the submittercannot remain anonymous.

F. Fee (if necessary)

37 CFR 1.290(f) requires payment of the fee set forthin 37 CFR 1.17(o) for every ten items or fractionthereof listed in the document list, except where thesubmission is accompanied by the statement set forthin 37 CFR 1.290(g). The Office will determine theitem count based on the 37 CFR 1.290(d)(1)document list. Thus, if a U.S. patent or a U.S. patentapplication publication is identified in the documentlist, but a copy of the item is not submitted (i.e.,because a copy is not required), the listed U.S. patentor U.S. patent application publication will be countedtoward the document count. If a copy of an item issubmitted but the item is not identified in thedocument list, the item will not be counted orconsidered and will be discarded. Additionally, if athird party identifies an item in the 37 CFR1.290(d)(1) document list that is only a portion of apublication, the portion of the publication will becounted as one item. Further, while a third party ispermitted to cite different publications that are allavailable from the same electronic source, such asa website, each such publication listed will becounted as a separate item. See Changes ToImplement the Preissuance Submissions by Third

Parties Provision of the Leahy-Smith AmericaInvents Act, 77 Fed. Reg. 42150, 42163 (July 17,2012) (final rule) for guidance on what constitutesa separate document on a website.

When filing electronically, payment may be madeby credit card, USPTO deposit account, or electronicfunds transfer and the fee must accompany thesubmission at the time of filing. Credit cardinformation for electronic credit card paymentsshould be entered exclusively on the USPTO websiteproviding electronic payment capability. When filingin paper, payment may be made by check, moneyorder, credit card, or deposit account. Checks andmoney orders must be made payable to the Directorof the United States Patent and Trademark Office.Credit Card Payment Form (PTO-2038) is availablefor making payment by credit card for papersubmission. See www.uspto.gov/forms. To protectcredit card information, form PTO-2038 must notbe submitted electronically through EFS-Web.

1. Fee exemption

37 CFR 1.290(g) provides an exemption from the37 CFR 1.290(f) fee requirement where a third-partysubmission listing three or fewer total items is thefirst third-party submission by a third party, or aparty in privity with the third party, in a givenapplication. Where one third party takes advantageof the fee exemption in an application, another thirdparty is not precluded from also taking advantageof the fee exemption in the same application as longas the third parties are not in privity with each other.

Third parties are not required to avail themselves ofthe fee exemption. Thus, a third party can make afirst submission of three or fewer documents in anapplication and choose to pay the fee instead ofmaking the statement under 37 CFR 1.290(g) (e.g.,where a third party is uncertain whether it isappropriate to make the “privity” statement pursuantto 37 CFR 1.290(g).)

To implement the fee exemption in 37 CFR 1.290(g)and avoid potential misuse of such exemption,exemption-eligible third-party submissions must beaccompanied by a statement of the third party (i.e.,“the party making the submission”) that, to theknowledge of the person signing the statement after

Rev. 07.2015, October 20151100-39


http://www.uspto.gov/forms/index.jsp

making reasonable inquiry, the submission is thefirst and only third-party submission in theapplication by the third party or a party in privitywith the third party. To preclude a third party frommaking multiple third-party submissions in the sameapplication on the same day and asserting that eachsuch submission is the first third-party submissionin the application by the third party, the 37 CFR1.290(g) statement requires that the submission bethe “first and only” third-party submission. Thisstatement will not, however, preclude the third partyfrom making more than one third-party submissionin an application, where the need for the subsequentsubmissions was not known at the time the thirdparty filed the earlier submission that included the37 CFR 1.290(g) statement. The third party wouldnot be required to state in any such subsequentsubmission that the need for the subsequentsubmission was not known at the time the third partyfiled the earlier submission that included the 37 CFR1.290(g) statement. Any such subsequentsubmission, however, would not be exempt from the37 CFR 1.290(f) fee requirement.

2. Fee is required for a resubmission after a findingof non-compliance

Where a third party receives a notification ofnon-compliance for a third-party submission, thethird party may make necessary revisions to itssubmission, limited to addressing thenon-compliance, and resubmit the now correctedsubmission provided the statutory time period forfiling a third-party submission has not closed. Theresubmission must be another complete submission,as the Office will not accept amendments to thenon-compliant submission. See Subsection II. forcontent requirements for a third-party submission.To be complete, the appropriate fee for the numberof documents being submitted (e.g., $180 for 1-10documents) must accompany any resubmission madein response to a notification of non-compliance.However, to satisfy the fee requirement for aresubmission after a finding of non-compliancewhere the proper fee set forth in 37 CFR 1.290(f)accompanied the non-compliant submission, thethird party may request that the Office apply thepreviously-paid fee to the resubmission. Similarly,to satisfy the fee requirement for a resubmissionafter a finding of non-compliance where the third

party’s non-compliant submission of three or fewerdocuments was accompanied by the fee exemptionstatement set forth in 37 CFR 1.290(g), the thirdparty may state that the fee exemption applies to theresubmission. The determination of whether the feerequirement for a resubmission is satisfied will bemade at the sole discretion of the Office.

3. Small entity discount

A small entity discount is available for third-partysubmissions where applicable. To assert small entitystatus when filing in paper, a third party should selectthe “small entity” box on form PTO/SB/429 and paythe applicable small entity fee. By selecting the“small entity” box on form PTO/SB/429 (orequivalent) or the “small entity” link on theEFS-Web payment screen and paying the applicablesmall entity fee, the party making the submissionasserts that the party qualifies as a small entity. Amicro entity discount is not available forthird-party submissions because a third party isnot eligible for the micro entity discount.

4. Fee Examples

The following are examples of when a fee may ormay not be required for a third-party submission.

If the regular undiscounted and small entity fees are$180.00 and $90.00, respectively, then for the firstthird-party submission in an application by a thirdparty:

(1) no fee would be required where the firstsubmission contains three or fewer total items andis accompanied by the 37 CFR 1.290(g) feeexemption statement;

(2) a $180/$90 fee would be required where thefirst submission contains three or fewer total itemsand is not accompanied by the 37 CFR 1.290(g) feeexemption statement;

(3) a $180/$90 fee would be required where thefirst submission contains more than three, but ten orfewer total items; and

(4) a $360/$180 fee would be required wherethe first submission contains more than ten, buttwenty or fewer total items, and so on (e.g., wherethe first submission contains twelve documents and

1100-40Rev. 07.2015, October 2015


the third party does not qualify for the small entitydiscount, a fee of $180 would be required for thefirst ten documents and a fee of $180 would berequired for the remaining two documents, for a totalfee of $360).

For a second or subsequent third-party submissionby the same third party:

(1) a $180/$90 fee would be required where thesecond or subsequent submission contains ten orfewer total items; and

(2) a $360/$180 fee would be required wherethe second or subsequent submission contains morethan ten, but twenty or fewer total items, and so on.

III. “PRINTED PUBLICATIONS”

35 U.S.C. 122(e)(1) and 37 CFR 1.290(a) limit thetype of information that may be submitted in athird-party submission to patents, published patentapplications, and other printed publications ofpotential relevance to the examination of a patentapplication. See MPEP § 2128 for guidanceregarding printed publications. For example, athird-party submission may include U.S. patents andpatent application publications, foreign patents andpublished foreign patent applications, as well asnon-patent documents that qualify as publications,such as published articles, Office actions issued inpublished U.S. patent applications, andcommunications from foreign patent offices issuedin published foreign patent applications. Documentsthat do not qualify as publications, such as materialsthat are subject to a court-imposed protective orsecrecy order, trade secret information, unpublishedinternal documents of a corporation intended to beconfidential, email correspondence not widelydisseminated to the public, etc., must not besubmitted for consideration under 37 CFR 1.290.Accordingly, third-party submissions cannot besubmitted under MPEP § 724.02.

Pursuant to 35 USC 122(e)(1) and 37 CFR 1.290(c),a third-party submission is required to be made inwriting. Thus, published information, such as a thevisual output of a software program or a video, maybe submitted only if reduced to writing, such as inthe form of screen shots, and evidence of publicationprovided if the date of publication is not known.Additionally, physical samples must not be submitted

for consideration. Any physical samples submittedwith a third-party submission will not be entered andwill be discarded.

Submissions filed pursuant to 37 CFR 1.290 will bereviewed for compliance before being forwarded toan examiner for consideration. During this review,the Office will determine if the documents submittedfor consideration appear on their faces to bepublications. If any of the submitted documents arefound not to be a publication, the entire submissionwill be found non-compliant. In such a situation, thesubmission will not be entered into the patentapplication file or considered by the examiner andwill be discarded. If a submission is determined tobe compliant, the publications will be considered bythe examiner and entered into the file as required by35 U.S.C. 122(e). If the patent applicant, however,has evidence that a document filed by a third partyis, in fact, not a publication, then the applicant canchallenge the determination by the Office that thedocument is a publication, for example, in responseto a rejection applying the document in question.

A. Evidence of Publication

In order for a submission to be compliant under 35U.S.C. 122(e) and 37 CFR 1.290, each itemsubmitted for consideration and inclusion into thefile of a patent application must be a publication.Thus, 37 CFR 1.290(e)(4) requires that, if nopublication date is known, the third party mustprovide evidence of publication. As a result, athird-party submission must either include items thatare prima facie publications, or evidence thatestablishes that they are publications. In suchsituations, the third party may submit evidence inthe form of affidavits, declarations, or any otherappropriate format. Each item of evidence submittedwill be evaluated with respect to both its authenticityand its persuasiveness. Evidence of publication mustbe specific to the document(s) submitted forconsideration.

Any affidavits or declarations submitted as evidenceof publication must comply with the Office’s formalrequirements. See MPEP § 715.04(II) (providingthat “[a]n affidavit is a statement in writing madeunder oath before a notary public, magistrate, orofficer authorized to administer oaths” and that a

Rev. 07.2015, October 20151100-41


declaration “must include an acknowledgment bythe declarant that willful false statements and thelike are punishable by fine or imprisonment, or both(18 U.S.C. 1001 and must also “set forth in the bodyof the declaration that all statements made of thedeclarant’s own knowledge are true and that allstatements made on information and belief arebelieved to be true.” [Note that a third party neednot state “may jeopardize the validity of theapplication or any patent issuing therefrom.”]).Affidavits and declarations submitted as evidenceof publication should explain how theaffiant/declarant has personal knowledge of the factsdescribed therein. Further, affidavits and declarationssubmitted as evidence of publication must be limitedto facts establishing why a submitted documentqualifies as a publication and must not to be used asa mechanism to place information that is notpertinent to establishing the document as apublication before the examiner.

For example, a third party might submit a company’sundated marketing brochure for consideration witha declaration from an employee of the companystating that the employee attended a trade show ona particular date and distributed copies of thebrochure being submitted for consideration to tradeshow attendees. In another example, if the third partyhad emailed the company’s undated marketingbrochure to the members of a trade organizationwithout restriction, a copy of the email might besubmitted as evidence of publication. In a furtherexample, a third party might submit as evidence ofpublication a printout from a website showing thatthe content of the website was publicly available atleast as of the date retrieved shown on the printout,or screenshots from a website that establish thecontent of the website on a particular date. SeeSubsection II.A.2.c. for information on listing adocument obtained from a website that archives Webpages.

Such evidence will not be counted toward the itemcount for fee purposes, unless the evidence is in theform of a patent document or other printedpublication and the evidence, itself, is listed andsubmitted for consideration by the examiner. In someinstances, the copy of the document providedpursuant to 37 CFR 1.290(d)(3) may itself be theevidence, such as where a printout from the website

showing the date the document was retrieved isprovided to satisfy the copy requirement. SeeSubsection II.A.2.c. for information on listing adocument where the actual publication date of thesubmitted document is not known.

B. Need Not Be Prior Art

There is no requirement in 37 CFR 1.290(a) that theinformation submitted be prior art documents inorder to be considered by the examiner. Further, 37CFR 1.290(a) does not require a third party toindicate whether a listed document is or is notasserted to be prior art. For those documents wherethe date of publication is not apparent from a reviewof the document, the third party may provideinformation regarding the publication date of thedocument in its accompanying concise descriptionof relevance.

C. Cumulative Information/Information Already ofRecord

37 CFR 1.290(a) does not prohibit third-partysubmissions that include patents, published patentapplications, or other printed publications that arealready of record in an application, where thesubmission is otherwise compliant. While it wouldbe a best practice for third parties not to submitdocuments that are cumulative of each other or thatare cumulative of information already underconsideration by the Office, 37 CFR 1.290(a) doesnot explicitly prohibit cumulative submissionsbecause it has been the Office’s experience thatidentifying purely cumulative submissions is difficultwhere a submission includes both a publication anda description of the publication’s relevance.

A document submitted may appear on its face to becumulative of information already of record, but itsaccompanying concise description of relevance mayprovide additional information with respect to thedocument, such that the submission of the document,together with the concise description of relevanceof the document, is not cumulative of informationalready of record. For example, a submission wouldnot be considered cumulative where it includes adocument previously submitted by the applicant inan information disclosure statement and describesthe document’s relevance to the examination of the

1100-42Rev. 07.2015, October 2015


application. In another example, a submission thatincludes documents cited in the background sectionof an application would not be considered cumulativeif accompanied by concise descriptions of relevancethat provide additional information regarding thedocuments.

D. Of “Potential Relevance to the Examination of theApplication”

The standard under 37 CFR 1.290(a) for thedocuments submitted to be of “potential relevanceto the examination of the application” is imposed by35 U.S.C. 122(e)(1). This standard requires thesubmitter to believe the documents being submittedare relevant to the extent that the submitter canprovide the concise description of the assertedrelevance of each document submitted as requiredby 35 U.S.C. 122(e) and 37 CFR 1.290(d)(2).

IV. FILING A THIRD-PARTY SUBMISSION

A. For Consideration and Inclusion in a “PatentApplication”

35 U.S.C. 122(e) provides that any third party maysubmit for consideration and inclusion in the recordof a patent application, any patent, published patentapplication, or other printed publication of potentialrelevance to the examination of the application. Athird-party submission may be directed to anynon-provisional utility application, designapplication, or plant application filed before, on, orafter September 16, 2012. Any continuations,divisionals, and continuations-in-part of suchapplications (as applicable) are also eligible toreceive third-party submissions.

1. Applies to Abandoned and UnpublishedApplications

35 U.S.C. 122(e) and 37 CFR 1.290 do not requirethat the application to which a third-party submissionis directed be pending or published. A third-partysubmission made within the statutory time period,and otherwise compliant, will be entered even if theapplication to which the submission is directed hasbeen abandoned. An examiner will not consider suchthird-party submission unless the application resumes

a pending status (e.g., the application is revived, thenotice of abandonment is withdrawn, etc.).Additionally, a third-party submission made withinthe statutory time period, and otherwise compliant,will be entered even if the application to which thesubmission is directed has not been published, forexample, due to a nonpublication request filed under35 U.S.C. 122(b)(2)(B)(i) and 37 CFR 1.213.

2. Cannot Be Filed In Provisional Applications orPost-Issuance Proceedings

35 U.S.C. 122(e) provides for consideration andinclusion of third-party submissions in the record ofa patent application, and limits such submissions topublications that are of potential relevance to theexamination of the application. Thus, third-partysubmissions may not be directed to: (1) provisionalapplications, (2) issued patents, (3) reissueapplications, and (4) reexamination proceedings.The Office will not accept third-party submissionsin provisional applications as provisionalapplications are not examined by the Office.Additionally, the Office will not accept third-partysubmissions in issued patents. The provisions of 35U.S.C. 301 and 37 CFR 1.501 provide an avenue forthird parties who have a need to submit informationin an issued patent.

Further, third-party submissions are not permittedin post-issuance proceedings, includingreexamination proceedings and reissue applications.See 35 U.S.C. 302 and 35 U.S.C. 311 and MPEP §1441.01 (“a reissue application is a post-issuanceproceeding”). The protest provisions of 37 CFR1.291 provide an avenue for third parties who havea need to submit information in a reissue application.See MPEP § 1441.01 (“the prohibition against thefiling of a protest after publication of an applicationunder 35 U.S.C. 122(c) is not applicable to a reissueapplication”). Further, where a third-partysubmission is directed to a reissue application andwould otherwise be compliant under 37 CFR 1.290,the Office will enter the submission into the recordof a reissue application as a protest under 37 CFR1.291.

Rev. 07.2015, October 20151100-43


B. “Any Third Party”

35 U.S.C. 122(e)(1) provides for “[a]ny third party”to file a preissuance submission. Thus, a third-partysubmission may be filed by any member of thepublic, including, for example, private persons andcorporate entities. However, the third party must notbe the applicant or any individual who has a duty todisclose information with respect to the applicationunder 37 CFR 1.56. See 37 CFR 1.290(d)(5)(i).

A third party does not need to be a registeredpractitioner to file a third-party submission.However, a registered practitioner may file athird-party submission on behalf of an unnamed realparty in interest. If a third party wishes to remainanonymous, an attorney or other representative maysubmit a third-party submission on the third party’sbehalf, but the submitter will need to be identified.See Subsection II.E above.

C. No Service on Applicant Required

Third parties are not required to serve the applicantwith a copy of the third-party submission. By notrequiring service of third-party submissions on theapplicant, the Office is underscoring that suchthird-party submissions will not create a requirementon the part of the applicant to independently file thesubmitted documents with the Office in aninformation disclosure statement (IDS). Additionally,not requiring service of third-party submissions onthe applicants will prevent challenges regardingwhether service of a third-party submission wasproper from negatively impacting the pendency ofan application.

D. Certificate of Mailing/Transmission Does Not Apply

37 CFR 1.290(i) provides that the provisions of 37CFR 1.8 do not apply to the time periods set forthin 37 CFR 1.290. See also 37 CFR 1.8(a)(2)(i)(A).Thus, third parties may not use a certificate ofmailing or transmission in filing a third-partysubmission under 37 CFR 1.290. By not accordinga third-party submission filed by first class mail thebenefit of its date of deposit with the USPS pursuantto a 37 CFR 1.8 certificate of mailing, the Officereduces the potential for papers crossing in the mail.That is, the requirement of 37 CFR 1.290(i) reduces

the risk that a third-party submission, if it waspermitted to rely on a certificate of mailing to betimely, would not be identified and entered untilafter an Office action is mailed. The requirement of37 CFR 1.290(i) also encourages third parties to filethird-party submissions at their earliest opportunity.

The United States Postal Service (USPS) Priority

Mail Express® service provisions of 37 CFR 1.10do apply to a third-party submission under 37 CFR1.290. See MPEP § 513 for guidance on the Priority

Mail Express® service provisions of 37 CFR 1.10.

E. Electronic Filing

The Office has developed a dedicated Web-basedinterface to permit third-party submissions under 37CFR 1.290 to be filed electronically. Third partiescan access the Web-based interface by using theOffice's electronic filing system (EFS-Web)ava i l a b l e a t w w w. u s p t o . g o v /learning-and-resources/portal-applications.Registered and unregistered eFilers are able to selectthe “Third-Party Preissuance Submission under 37CFR 1.290” option upon clicking the "Existingapplication/patent" radio button. See also theEFS-Web quick start guide for third partypreissuance submissions (available atw w w . u s p t o . g o v / s i t e s /default/files/QSG_Third_Party_Preissuance.pdf)for detailed instructions on filing third-partysubmissions electronically. Filing via EFS-Web isan electronic alternative to paper filing using formPTO/SB/429 (or equivalent). Instead of uploadingthe form, EFS-Web will automatically generate andcomplete the form after a third party enters all of thenecessary information.

Filing via the dedicated Web-based interface is themost efficient means of making compliant third-partysubmissions available to an examiner forconsideration. Additionally, the Web-based interfacewill warn a third party if a submission appears to beuntimely, as well as verify some of the content of asubmission (e.g., U.S. patent data). Also, when filinga third-party submission electronically, a third partywill receive immediate, electronic acknowledgmentof the Office’s receipt of the submission. Theelectronic acknowledgment is not an indication that

1100-44Rev. 07.2015, October 2015


http://www.uspto.gov/learning-and-resources/portal-applications

http://www.uspto.gov/learning-and-resources/portal-applications

http://www.uspto.gov/sites/default/files/QSG_Third_Party_Preissuance.pdf

http://www.uspto.gov/sites/default/files/QSG_Third_Party_Preissuance.pdf

the third-party submission is compliant or has beenentered; rather, it merely shows Office receipt of thesubmission. Note that a third party cannotelectronically file a third-party submission withouta Confirmation Number for the application, whichcan be obtained by looking up the applicationnumber in the Public Patent Application InformationRetrieval (PAIR) System located athttp://portal.uspto.gov/pair/PublicPair andviewing the Bibliographic Data. If the ConfirmationNumber is not available or not known, the third-partysubmission cannot be filed electronically and insteadmust be filed in paper.

The EFS-Web Legal Framework prohibitedthird-party submissions under former 37 CFR 1.99from being filed electronically in patent applicationsbecause documents filed electronically via EFS-Webwere instantly loaded into the Image File Wrapper(IFW). See Legal Framework for Electronic FilingSystem—Web (EFS-Web), 74 FR 55200, 55202,55206-7 (October 27, 2009). Third-party submissionsunder 37 CFR 1.290 that are filed electronically viathe dedicated Web-based interface for preissuancesubmissions in EFS-Web, however, will not beinstantly loaded into the IFW. Thus, third-partysubmissions under 37 CFR 1.290 are permitted tobe filed electronically via the dedicated Web-basedinterface for preissuance submissions because suchsubmissions will be screened for compliance withthe requirements of 35 U.S.C. 122(e) and 37 CFR1.290 before being entered into the IFW of anapplication. Note that protests under 37 CFR 1.291are still prohibited from being filed electronically inpatent applications.

Electronically-filed third-party submissions not madevia the dedicated Web-based interface forpreissuance submissions are prohibited and will bediscarded ( i.e., a third party must select the“Third-Party Preissuance Submission under 37 CFR1.290” option in EFS-Web when filing electronicallyand not the “Document/Fees for an existingapplication/proceeding” option, which is onlyavailable for the applicant or applicant’srepresentative). Further, applicants must not filefollow-on papers in their applications via thededicated option for third-party submissions.

F. Paper Filing

Additionally, third-party submissions may be filedin paper via first-class mail, United States Postal

Service (USPS) Priority Mail Express® servicepursuant to 37 CFR 1.10, or delivery by hand.Instructions for filing a third-party submission inpaper using form PTO/SB/429 (or equivalent) arelocated at www.uspto.gov/sites/default/files/documents/3prsubmission_instructions.pdf.

Pursuant to 37 CFR 1.6(d)(3), third-partysubmissions may not be filed by facsimile. Facsimiletransmissions, although not subject to the delayassociated with first class mail, are often receivedin poor quality, which may result in illegible contentand cause the submission to be found non-compliant.Because facsimile transmission of third-partysubmissions under 37 CFR 1.290 is not permitted,the use of a certificate of transmission pursuant to37 CFR 1.8 is not applicable to third-partysubmissions.

When filing a third-party submission in paper, a thirdparty may include a self-addressed postcard with thesubmission to receive an acknowledgment by returnreceipt postcard that a third-party submission hasbeen received. The return receipt postcard is not anindication that the third-party submission iscompliant or has been entered; rather, it merelyshows Office receipt of the submission. Where athird-party submission is filed in an unpublishedapplication, a returned postcard acknowledgingreceipt will not indicate whether such application infact exists or the status of any such applicationbecause, pursuant to 35 U.S.C. 122, originalapplications are kept in confidence unless publishedunder 35 U.S.C. 122(b) or available to the publicpursuant to 37 CFR 1.14(a)(1)(iv), (v), or (vi). Thus,unless a third party has been granted access to anoriginal application, the third party is not entitled toobtain from the Office any information concerningthe same, including the mere fact that such anapplication exists.

Electronic filing via the dedicated Web-basedinterface is the most efficient means of makingcompliant third-party submissions available to anexaminer for consideration, as compliant third-partysubmissions filed in paper will experience a delay

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in entry due to the additional processing requiredfor scanning and indexing of paper submissions intoelectronic form. Additionally, third parties filingthird-party submissions electronically via thededicated Web-based interface will receiveimmediate, electronic acknowledgment of theOffice’s receipt of the submission, instead of waitingfor the Office to mail a return receipt postcard whenprovided with a paper submission.

V. NO THIRD-PARTY PARTICIPATION

The involvement of a third party in filing asubmission under 37 CFR 1.290 ends with the filingof the submission. The third party filing thesubmission will not receive any communicationsfrom the Office relating to the submission other thanthe electronic acknowledgement receipt ( seeSubsection IV.E.), the return of the self-addressedpostcard ( see Subsection IV.F.), or a notification tothe third party regarding its third-party submission( see Subsection VI.A.1.). A third party is notpermitted to contact the examiner. Questionsregarding a third-party submission may be directedto the AIA help telephone (1-855-HELPAIA) orAIA email ([email protected]), or to the pointof contact listed on a notification to the third partyregarding its third-party submission. Further, becausethe prosecution of a patent application is an ex parteproceeding, a third party is not permitted to respondto an examiner’s treatment of the third-partysubmission in the application ( see SubsectionVI.B.).

VI. TREATMENT OF A THIRD-PARTYSUBMISSION

A. Submissions Screened for Compliance Prior to Entryin an Application

Third-party submissions, whether submitted in paperor electronically via the dedicated Web-basedinterface, will not be automatically entered into theelectronic image file wrapper (IFW) of anapplication, i.e., will not be made of record in theapplication. Instead, third-party submissionssubmitted by third parties will be reviewed by theOffice to determine compliance with 35 U.S.C.122(e) and 37 CFR 1.290 before being entered into

the IFW. The Office has established procedures tocomplete its compliance determination, for bothpaper and electronic submissions, promptlyfollowing receipt of the submission so that compliantthird-party submissions will be quickly entered intothe IFW and made available to the examiner forconsideration. Third-party submissions filed in paper,however, will incur more processing delay thansubmissions filed electronically via the dedicatedWeb-based interface for preissuance submissionsdue to the scanning and indexing process. EachTechnology Center (TC) has designated points ofcontact for screening third-party submissions madein applications docketed to the respective TCs.

37 CFR 1.290(a) provides that a third-partysubmission may not be entered or considered by theOffice if any part of the submission is not incompliance with 35 U.S.C. 122(e) and 37 CFR1.290. The Office will enter a third-party submissionthat is compliant with both 35 U.S.C. 122(e) and 37CFR 1.290; however, any part of a third-partysubmission that is non-compliant with respect to therequirements of 35 U.S.C. 122(e), whether or notthe third-party submission is otherwise compliantwith 37 CFR 1.290, will prevent entry of the entirethird-party submission into the record. By contrast,a third-party submission that is compliant with 35U.S.C. 122(e), but non-compliant with somerequirement of 37 CFR 1.290, may be entered intothe record if the error is of such a minor characterthat, in the opinion of the Office, it does not raise anambiguity as to the content of the submission. Forexample, if an error with respect to a requirementof 37 CFR 1.290 is of such a nature that the contentof the third-party submission can still be readilyascertained (e.g., a U.S. patent is identified by thecorrect patent number and issue date but the nameof the first named inventor is clearly misspelled),the Office may have enough information to be ableto enter the third-party submission into the recorddespite the error. However, the determination ofwhether to enter or not to enter a submission thatpartially complies with a requirement of 37 CFR1.290 will be made on a case-by-case basis and atthe sole discretion of the Office ( e.g., the Officemay decline to enter a third-party submission listinga U.S. patent whose patent number does not matchOffice records with respect to that patent number’sissue date and/or first named inventor). In any event,

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the Office will either enter or not enter the entiresubmission and will not attempt to enter portions ofpartially compliant submissions.

Non-compliant third-party submissions, except thosesubmissions having a non-compliance of minorcharacter noted above, will not be entered into theIFW of an application or considered, and will bediscarded. Also, the Office will not refund therequired fees in the event a third-party submissionis determined to be non-compliant. The statutorytime period for making a third-party submission willnot be tolled by an initial non-compliant submission.The Office will not set a time period for a third partyto file a corrected third-party submission.Additionally, the Office will not accept amendmentsto a non-compliant submission that was previouslyfiled. Instead, a third party who previously filed anon-compliant submission may file another completesubmission, provided the statutory time period forfiling a submission has not closed. See alsoSubsection II.F.2. (fee is required for a resubmissionafter a finding of non-compliance).

1. Notification to Third Party Regarding Third-PartySubmission

A third-party may request a courtesy electronic mailmessage (email) notification in the event theirthird-party submission is found to be compliant ornon-compliant. Such request may be made whenfiling electronically by selecting the appropriatecheck box and entering an email address to whichthe notification should be directed in the “Requestfor Notification Regarding Third-Party PreissuanceSubmission” section of the Office’s dedicatedWeb-based interface for preissuance submissions.Such request may be made when filing in paper byincluding a separate paper with the third-partysubmission clearly titled “REQUEST FORNOTIFICATION REGARDING THIRD-PARTYPREISSUANCE SUBMISSION” and clearlyindicating the email address to which the notificationshould be directed.

A notification of non-compliance will include thereason(s) for non-compliance ( e.g., no concisedescription of relevance was provided for a listeddocument, the concise description of relevance fora listed document was improper, the submission was

not timely, etc.). The non-compliant third-partysubmission will not be made of record in theapplication.

No notification will be issued where a third partydoes not provide an email address with thesubmission. Further, no notification will be issuedwhere the third-party submission is directed to anunpublished application. See Subsection IV.F.(unpublished patent applications preserved inconfidence).

The notification to the third party will not be madeof record in the application. Further, the Office doesnot intend to enter the email address provided fornotification into the record of the patent application.

2. Notification to Applicant of Compliant Third-PartySubmission

An applicant will be notified upon entry of acompliant third-party submission in their applicationfile where the applicant participates in the Office’se-Office Action program, and the contents of acompliant third-party submission will be madeavailable to the applicant after it has been enteredin the IFW of the application. An applicant may viewnon-patent documents identified in a third-partysubmission document list via the Office’s privatePatent Application Information Retrieval (PAIR)system. The applicant will not be notified of anon-compliant submission.

3. Applicant Need Not Reply To a Third-PartySubmission

37 CFR 1.290(h) provides that in the absence of arequest by the Office, an applicant need not reply toa third-party submission under 37 CFR 1.290. Wherethe Office believes information from applicant isneeded, the Office may issue a requirement forinformation pursuant to37 CFR 1.105.

B. Examiner Consideration of Third-Party Submissions

Once a third-party submission has been screenedand found compliant, the submission will be enteredinto the IFW for examiner consideration. Theexaminer should consider the listed publications andaccompanying concise descriptions in the third-party

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submission in the same manner as information in aninformation disclosure statement (IDS), generallybefore issuing the next Office action. Entry of athird-party submission does not expedite theapplication.

During examination, the examiner should sign formPTO/SB/429 (or equivalent) in the same manner asan IDS to indicate all the items and their concisedescriptions have been considered. The examiner’ssignature does not indicate the examiner agrees withthe third party’s position regarding the publication,but only that the examiner considered thesubmission. Further, the examiner should clear thesubmission’s IDS flag in PALM and provide asigned copy of the PTO/SB/429 with the next Officeaction. There is no need for the examiner to commenton the submitted documents or the concisedescriptions of relevance in the Office action.However, the examiner should apply the informationas deemed necessary (i.e., in a rejection of a claim).Also, the applicant need not respond to thethird-party submission in the absence of a requestby the Office to do so. See 37 CFR 1.290(h). Wherethe examiner believes information from the applicantis needed, the examiner may issue a requirement forinformation pursuant to 37 CFR 1.105. In nocircumstance may an examiner direct a requirementfor information to the third party that submitted thepaper under 37 CFR 1.290. Further, because theprosecution of a patent application is an ex parteproceeding, no response from a third party withrespect to an examiner’s treatment of the third-partysubmission will be permitted or considered.

Documents from a third-party submission that wereconsidered by the examiner will be printed on thepatent, similar to the way documents from an IDSthat were considered by the examiner are printed onthe patent. Documents cited by third-parties under37 CFR 1.290 will be distinguished on an issuedpatent from documents cited by the applicant andby the examiner.

In the unlikely event an examiner believes asubmission is non-compliant ( e.g., the examinerbelieves a submitted document is not a publication),the examiner should immediately consult the

screener or other appropriate TC point of contact. Ifas a result of such consultation it is determined thatthe examiner should not consider a listed document,the examiner should strike through the document toindicate that the examiner did not consider either thedocument or its accompanying concise description.In some instances, the stricken document may becited by the examiner on a form PTO-892

1135 PGPub Forms [R-11.2013]

The following PGPub forms are available on theUSPTO website (www.uspto.gov) and arereproduced at the end of this section:

Form PTO/AIA/24A, “Petition for ExpressAbandonment to Avoid Publication Under 37 CFR1.138(c),” may be used by applicant in an applicationfiled on or after September 16, 2012 for filing apetition for express abandonment to avoidpublication under 37 CFR 1.138(c). FormPTO/SB/24A, “Petition for Express Abandonmentto Avoid Publication Under 37 CFR 1.138(c),” maybe used by applicant in an application filed beforeSeptember 16, 2012 for filing a petition for expressabandonment to avoid publication under 37 CFR1.138(c). See MPEP § 1125. Form PTO/SB/35,“Nonpublication Request Under 35 U.S.C.122(b)(2)(B)(i),” may be used by applicant for filinga request for nonpublication and the certificationunder 35 U.S.C. 122(b)(2)(B)(i) upon the filing ofan application. See MPEP § 1122. Form PTO/SB/36(revision April 2001 or later), “Rescission ofPrevious Nonpublication Request (35 U.S.C.122(b)(2)(B)(ii))) and, if Applicable, Notice ofForeign Filing (35 U.S.C. 122(b)(2)(B)(iii)),” maybe used by applicant for filing a request forrescinding a previously filed nonpublication requestand/or for filing a notice of foreign filing. Thecertificate of mailing or transmission only applieswhen applicant is filing a notice of foreign filing.See MPEP §§ 1123 and 1124. Form PTO/SB/64a,“Petition for Revival of an Application for PatentAbandoned for Failure to Notify the Office of aForeign or International Filing (37 CFR 1.137(f),”may be used by applicant for filing a petition torevive an application abandoned for failure to notifythe Office of a foreign filing. See MPEP § 1124.

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MPEP - Chapter 1100 - Statutory Invention …Edition of the MPEP published August 2012. The material...

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Transcript of MPEP - Chapter 1100 - Statutory Invention …Edition of the MPEP published August 2012. The material...