1134 Third Party Inquiries and Correspondence in a Published Application
|
Section Frequency Chart
| Key |
|
|||||
| 1134 |
35 U.S.C. 122 includes two provisions regarding submissions by third parties in patent applications.
*****
(c) PROTEST AND PRE-ISSUANCE OPPOSITION.— The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.
(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—
(1)_ IN GENERAL.— Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—
(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or
(B) the later of—(i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or
(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.
(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—
(A) set forth a concise description of the asserted relevance of each submitted document;
(B) be accompanied by such fee as the Director may prescribe; and
(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.
*****
No protest or other form or pre-issuance opposition may be initiated after publication of an application without the express written consent of the applicant.
35 U.S.C. 122(e), on the other hand, provides a mechanism for third parties to submit printed publications in another party’s patent application.
- Under 35 U.S.C. 122(e), any third party may submit printed publications of potential relevance to the examination of an application for consideration and inclusion in the record of the application.
- Such submissions must be timely made in writing and include a concise description of the asserted relevance of each publication submitted, any fee prescribed by the Director, and a statement of compliance.
Third-party submissions under 37 CFR 1.99 were eliminated as of September 16, 2012.
In contrast to protests, third-party submissions may be made in published patent applications where the timing provisions are satisfied.
- Additionally, third-party submissions have different content requirements than protests.
- While 37 CFR 1.290 limits third-party submissions to printed publications, 37 CFR 1.291 provides for the submission of information in a protest other than publications, including any facts or information adverse to patentability, and arguments to that effect.
A protest must include a “concise explanation of the relevance” of each item of information submitted. This is distinct from the concise description of relevance required for third-party submissions.
- Unlike the concise description of relevance for a third-party submission, which is limited to a description of a document’s relevance, the concise explanation for a protest under 37 CFR 1.291 allows for arguments against patentability.
