2206 Submission and Handling of Prior Art or Section 301 Written Statements
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A submission of prior art patents, or printed publications and/or written statements may be submitted to the Office via mail, hand-delivery, or via the Office’s Electronic Filing System (EFS, currently EFS-Web) if the submission is properly filed as a prior art submission under 37 CFR 1.501 and not as a follow-on document or other paper.
- A submission under 37 CFR 1.501 cannot be filed via EFS for design or plant patents.
All submissions under 37 CFR 1.501 are reviewed for compliance prior to entry into the patent file.
- A submission submitted via EFS may not be submitted as a follow-on paper into the patent (similar to Third Party Preissuane submissions) because the submission would be directly entered into the patent file without review.
I. SUBMISSION QUALIFIES FOR ENTRY UNDER 37 CFR 1.501
A. Submission by Third Party
1. Prior to Order in Any Pending Reexamination Proceeding
If the 37 CFR 1.501 submission is proper (i.e., is limited to patents, printed publications, and/or patent owner written claim scope statements and additional information and includes the requisite citation description and information and proof of service on the patent owner), it should be entered into the patent file.
2. After the Order in Any Pending Reexamination Proceeding
If the 37 CFR 1.501 submission is filed after an order for reexamination in a pending reexamination proceeding, the submission must include proof of service of a copy of the submission on the patent owner.
- If the submission satisfies the conditions set forth in subsection I.A.1. above, and includes proof of service on the patent owner, the submission will be deemed to be proper.
- A proper submission is not entered after an order for reexamination in a pending reexamination because of the ongoing reexamination. It will be stored until the conclusion of the reexamination proceeding, after which the submission will be entered into the patent file.
B. Submission Filed by Patent Owner
If a proper 37 CFR 1.501 submission is filed by the patent owner, it should be entered in the file.
- This is true whether the submission is filed prior to or after an order for reexamination has been mailed.
- No notification to the patent owner is necessary.
II. SUBMISSION DOES NOT QUALIFY FOR ENTRY UNDER 37 CFR 1.501
A. Submission by Third Party
If the 37 CFR 1.501 submission is not proper because it is not limited to patents, printed publications, and/or patent owner written claim scope statements and additional information or it fails to include the requisite description and information or proof of service, it will not be entered into the patent file.
If the 37 CFR 1.501 submission is filed via the electronic filing system, the third party submitter or the patent owner may request to be notified if the submission is improper.
- The handling of the submission will vary depending on the particular following situations:
1. Service of Copy Included
Where the submission includes an indication of service of copy on the patent owner and the identity of the third party sender is known, the original submission should be returned to the third party sender, discarded, or closed if inadvertently entered into the file, and the third party submitter will be notified.
- Patent owner should be notified of non-entry.
2. Service of Copy Not Included; Identity of Third Party Sender Known
Where the submission does not include an indication of service on the patent owner and the identity of the third party submitter is known, the submission should be returned to the third party submitter, discarded, or closed if inadvertently entered into the file, and the third party submitter will be notified.
- Patent owner will not be notified.
3. Service of Copy Not Included; Identity of Third Party Sender Not Known
Where the submission does not include an indication of service on the patent owner and the identity of the third party submitter is not known, the original submission papers will be discarded.
- Patent owner will not be notified.
B. Citation Filed by the Patent Owner
If an improper submission under 37 CFR 1.501 is filed by the patent owner prior to an order for reexamination, it should not be entered in the file.
