The following are examples of when a fee may or may 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 first third-party submission in an application by a third party:
For a second or subsequent third-party submission by the same third party:
35 U.S.C. 122(e)(1) and 37 CFR 1.290(a) limit the type of information that may be submitted in a third-party submission to patents, published patent applications, and other printed publications of potential relevance to the examination of a patent application. See MPEP § 2128 for guidance regarding printed publications. For example, a third-party submission may include U.S. patents and patent application publications, foreign patents and published foreign patent applications, as well as non-patent documents that qualify as publications, such as published articles, Office actions issued in published U.S. patent applications, and communications from foreign patent offices issued in published foreign patent applications. Documents that do not qualify as publications, such as materials that are subject to a court-imposed protective or secrecy order, trade secret information, unpublished internal documents of a corporation intended to be confidential, email correspondence not widely disseminated to the public, etc., must not be submitted for consideration under 37 CFR 1.290. Accordingly, third-party submissions cannot be submitted 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 in writing. Thus, published information, such as the visual output of a software program or a video, may be submitted only if reduced to writing, such as in the form of screen shots, and evidence of publication provided if the date of publication is not known. Additionally, physical samples must not be submitted for consideration. Any physical samples submitted with a third-party submission will not be entered and will be discarded.
Submissions filed pursuant to 37 CFR 1.290 will be reviewed for compliance before being forwarded to an examiner for consideration. During this review, the Office will determine if the documents submitted for consideration appear on their faces to be publications. If any of the submitted documents are found not to be a publication, the entire submission will be found non-compliant. In such a situation, the submission will not be entered into the patent application file or considered by the examiner and will be discarded. If a submission is determined to be compliant, the publications will be considered by the examiner and entered into the file as required by 35 U.S.C. 122(e). If the patent applicant, however, has evidence that a document filed by a third party is, in fact, not a publication, then the applicant can challenge the determination by the Office that the document is a publication, for example, in response to a rejection applying the document in question.
In order for a submission to be compliant under 35 U.S.C. 122(e) and 37 CFR 1.290, each item submitted for consideration and inclusion into the file of a patent application must be a publication. Thus, 37 CFR 1.290(e)(4) requires that, if no publication date is known, the third party must provide evidence of publication. As a result, a third-party submission must either include items that are prima facie publications, or evidence that establishes that they are publications. In such situations, the third party may submit evidence in the form of affidavits, declarations, or any other appropriate format. Each item of evidence submitted will be evaluated with respect to both its authenticity and its persuasiveness. Evidence of publication must be specific to the document(s) submitted for consideration.
Any affidavits or declarations submitted as evidence of publication must comply with the Office’s formal requirements. See MPEP § 715.04(II) (providing that "[a]n affidavit is a statement in writing made under oath before a notary public, magistrate, or officer authorized to administer oaths" and that a declaration "must include an acknowledgment by the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001 and must also "set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true." [Note that a third party need not state "may jeopardize the validity of the application or any patent issuing therefrom."]). Affidavits and declarations submitted as evidence of publication should explain how the affiant/declarant has personal knowledge of the facts described therein. Further, affidavits and declarations submitted as evidence of publication must be limited to facts establishing why a submitted document qualifies as a publication and must not to be used as a mechanism to place information that is not pertinent to establishing the document as a publication before the examiner.
For example, a third party might submit a company’s undated marketing brochure for consideration with a declaration from an employee of the company stating that the employee attended a trade show on a particular date and distributed copies of the brochure being submitted for consideration to trade show attendees. In another example, if the third party had emailed the company’s undated marketing brochure to the members of a trade organization without restriction, a copy of the email might be submitted as evidence of publication. In a further example, a third party might submit as evidence of publication a printout from a website showing that the content of the website was publicly available at least as of the date retrieved shown on the printout, or screenshots from a website that establish the content of the website on a particular date. See Subsection II.A.2.c. for information on listing a document obtained from a website that archives Web pages.
Such evidence will not be counted toward the item count for fee purposes, unless the evidence is in the form of a patent document or other printed publication and the evidence, itself, is listed and submitted for consideration by the examiner. In some instances, the copy of the document provided pursuant to 37 CFR 1.290(d)(3) may itself be the evidence, such as where a printout from the website showing the date the document was retrieved is provided to satisfy the copy requirement. See Subsection II.A.2.c. for information on listing a document where the actual publication date of the submitted document is not known.
There is no requirement in 37 CFR 1.290(a) that the information submitted be prior art documents in order to be considered by the examiner. Further, 37 CFR 1.290(a) does not require a third party to indicate whether a listed document is or is not asserted to be prior art. For those documents where the date of publication is not apparent from a review of the document, the third party may provide information regarding the publication date of the document in its accompanying concise description of relevance.
37 CFR 1.290(a) does not prohibit third-party submissions that include patents, published patent applications, or other printed publications that are already of record in an application, where the submission is otherwise compliant. While it would be a best practice for third parties not to submit documents that are cumulative of each other or that are cumulative of information already under consideration by the Office, 37 CFR 1.290(a) does not explicitly prohibit cumulative submissions because it has been the Office’s experience that identifying purely cumulative submissions is difficult where a submission includes both a publication and a description of the publication’s relevance.
A document submitted may appear on its face to be cumulative of information already of record, but its accompanying concise description of relevance may provide additional information with respect to the document, such that the submission of the document, together with the concise description of relevance of the document, is not cumulative of information already of record. For example, a submission would not be considered cumulative where it includes a document previously submitted by the applicant in an information disclosure statement and describes the document’s relevance to the examination of the application. In another example, a submission that includes documents cited in the background section of an application would not be considered cumulative if accompanied by concise descriptions of relevance that provide additional information regarding the documents.
The standard under 37 CFR 1.290(a) for the documents submitted to be of "potential relevance to the examination of the application" is imposed by 35 U.S.C. 122(e)(1). This standard requires the submitter to believe the documents being submitted are relevant to the extent that the submitter can provide the concise description of the asserted relevance of each document submitted as required by 35 U.S.C. 122(e) and 37 CFR 1.290(d)(2).
35 U.S.C. 122(e) provides that 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. A third-party submission may be directed to any non-provisional utility application, design application, or plant application filed before, on, or after September 16, 2012. Any continuations, divisionals, and continuations-in-part of such applications (as applicable) are also eligible to receive third-party submissions.
35 U.S.C. 122(e) and 37 CFR 1.290 do not require that the application to which a third-party submission is directed be pending or published. A third-party submission made within the statutory time period, and otherwise compliant, will be entered even if the application to which the submission is directed has been abandoned. An examiner will not consider such third-party submission unless the application resumes a pending status (e.g., the application is revived, the notice of abandonment is withdrawn, etc.). Additionally, a third-party submission made within the statutory time period, and otherwise compliant, will be entered even if the application to which the submission is directed has not been published, for example, due to a nonpublication request filed under 35 U.S.C. 122(b)(2)(B)(i) and 37 CFR 1.213.
35 U.S.C. 122(e) provides for consideration and inclusion of third-party submissions in the record of a patent application, and limits such submissions to publications that are of potential relevance to the examination of the application. Thus, third-party submissions may not be directed to: (1) provisional applications, (2) issued patents, (3) reissue applications, and (4) reexamination proceedings. The Office will not accept third-party submissions in provisional applications as provisional applications are not examined by the Office. Additionally, the Office will not accept third-party submissions in issued patents. The provisions of 35 U.S.C. 301 and 37 CFR 1.501 provide an avenue for third parties who have a need to submit information in an issued patent.
Further, third-party submissions are not permitted in post-issuance proceedings, including reexamination 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-issuance proceeding"). The protest provisions of 37 CFR 1.291 provide an avenue for third parties who have a need to submit information in a reissue application. See MPEP § 1441.01 ("the prohibition against the filing of a protest after publication of an application under 35 U.S.C. 122(c) is not applicable to a reissue application"). Further, where a third-party submission is directed to a reissue application and would otherwise be compliant under 37 CFR 1.290, the Office will enter the submission into the record of a reissue application as a protest under 37 CFR 1.291.
35 U.S.C. 122(e)(1) provides for "[a]ny third party" to file a preissuance submission. Thus, a third-party submission may be filed by any member of the public, including, for example, private persons and corporate entities. However, the third party must not be the applicant or any individual who has a duty to disclose information with respect to the application under 37 CFR 1.56. See 37 CFR 1.290(d)(5)(i).
A third party does not need to be a registered practitioner to file a third-party submission. However, a registered practitioner may file a third-party submission on behalf of an unnamed real party in interest. If a third party wishes to remain anonymous, an attorney or other representative may submit a third-party submission on the third party’s behalf, but the submitter will need to be identified. See Subsection II.E above.
Third parties are not required to serve the applicant with a copy of the third-party submission. By not requiring service of third-party submissions on the applicant, the Office is underscoring that such third-party submissions will not create a requirement on the part of the applicant to independently file the submitted documents with the Office in an information disclosure statement (IDS). Additionally, not requiring service of third-party submissions on the applicants will prevent challenges regarding whether service of a third-party submission was proper from negatively impacting the pendency of an application.
37 CFR 1.290(i) provides that the provisions of 37 CFR 1.8 do not apply to the time periods set forth in 37 CFR 1.290. See also 37 CFR 1.8(a)(2)(i)(A). Thus, third parties may not use a certificate of mailing or transmission in filing a third-party submission under 37 CFR 1.290. By not according a third-party submission filed by first class mail the benefit of its date of deposit with the USPS pursuant to a 37 CFR 1.8 certificate of mailing, the Office reduces 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 was permitted to rely on a certificate of mailing to be timely, would not be identified and entered until after an Office action is mailed. The requirement of 37 CFR 1.290(i) also encourages third parties to file third-party submissions at their earliest opportunity.
The United States Postal Service (USPS) Priority Mail Express® service provisions of 37 CFR 1.10 do apply to a third-party submission under 37 CFR 1.290. See MPEP § 513 for guidance on the Priority Mail Express® service provisions of 37 CFR 1.10.
The Office has developed a dedicated Web-based interface to permit third-party submissions under 37 CFR 1.290 to be filed electronically. Third parties can access the Web-based interface by using the USPTO patent electronic filing system available at www.uspto.gov/learning- and-resources/portal-applications. Registered and unregistered eFilers are able to select the "Third-Party Preissuance Submission under 37 CFR 1.290" option upon clicking the "Existing application/patent" radio button. See also the EFS-Web quick start guide for third party preissuance submissions (available at www.uspto.gov/sites/default/files/QSG_ Third_Party_Preissuance.pdf ) for detailed instructions on filing third-party submissions electronically. Filing via EFS-Web is an electronic alternative to paper filing using form PTO/SB/429 (or equivalent). Instead of uploading the form, EFS-Web will automatically generate and complete the form after a third party enters all of the necessary information.
Filing via the dedicated Web-based interface is the most efficient means of making compliant third-party submissions available to an examiner for consideration. Additionally, the Web-based interface will warn a third party if a submission appears to be untimely, as well as verify some of the content of a submission (e.g., U.S. patent data). Also, when filing a third-party submission electronically, a third party will receive immediate, electronic acknowledgment of the Office’s receipt of the submission. The electronic acknowledgment is not an indication that the third-party submission is compliant or has been entered; rather, it merely shows Office receipt of the submission. Note that a third party cannot electronically file a third-party submission without a Confirmation Number for the application, which can be obtained by looking up the application number in the Patent Center located at www.uspto.gov/PatentCenter and viewing the Bibliographic Data. If the Confirmation Number is not available or not known, the third-party submission cannot be filed electronically and instead must be filed in paper.
The EFS-Web Legal Framework prohibited third-party submissions under former 37 CFR 1.99 from being filed electronically in patent applications because documents filed electronically via EFS-Web were instantly loaded into the Image File Wrapper (IFW). See Legal Framework for Electronic Filing System—Web (EFS-Web), 74 FR 55200, 55202, 55206-7 (October 27, 2009). Third-party submissions under 37 CFR 1.290 that are filed electronically via the dedicated Web-based interface for preissuance submissions in EFS-Web, however, will not be instantly loaded into the IFW. Thus, third-party submissions under 37 CFR 1.290 are permitted to be filed electronically via the dedicated Web-based interface for preissuance submissions because such submissions will be screened for compliance with the requirements of 35 U.S.C. 122(e) and 37 CFR 1.290 before being entered into the IFW of an application. Note that protests under 37 CFR 1.291 are still prohibited from being filed electronically in patent applications.
Electronically-filed third-party submissions not made via the dedicated Web-based interface for preissuance submissions are prohibited and will be discarded (i.e., a third party must select the "Third-Party Preissuance Submission under 37 CFR 1.290" option in EFS-Web when filing electronically and not the "Document/Fees for an existing application/proceeding" option, which is only available for the applicant or applicant’s representative). Further, applicants must not file follow-on papers in their applications via the dedicated option for third-party submissions.
Additionally, third-party submissions may be filed in paper via first-class mail, United States Postal Service (USPS) Priority Mail Express® service pursuant to 37 CFR 1.10, or delivery by hand. Instructions for filing a third-party submission in paper using form PTO/SB/429 (or equivalent) are located at www.uspto.gov/sites/default/ files/documents/3prsubmission_instructions.pdf.
Pursuant to 37 CFR 1.6(d)(3), third-party submissions may not be filed by facsimile. Facsimile transmissions, although not subject to the delay associated with first class mail, are often received in poor quality, which may result in illegible content and cause the submission to be found non-compliant. Because facsimile transmission of third-party submissions under 37 CFR 1.290 is not permitted, the use of a certificate of transmission pursuant to 37 CFR 1.8 is not applicable to third-party submissions.
When filing a third-party submission in paper, a third party may include a self-addressed postcard with the submission to receive an acknowledgment by return receipt postcard that a third-party submission has been received. The return receipt postcard is not an indication that the third-party submission is compliant or has been entered; rather, it merely shows Office receipt of the submission. Where a third-party submission is filed in an unpublished application, a returned postcard acknowledging receipt will not indicate whether such application in fact exists or the status of any such application because, pursuant to 35 U.S.C. 122, original applications are kept in confidence unless published under 35 U.S.C. 122(b) or available to the public pursuant to 37 CFR 1.14(a)(1)(iv), (v), or (vi). Thus, unless a third party has been granted access to an original application, the third party is not entitled to obtain from the Office any information concerning the same, including the mere fact that such an application exists.
Electronic filing via the dedicated Web-based interface is the most efficient means of making compliant third-party submissions available to an examiner for consideration, as compliant third-party submissions filed in paper will experience a delay in entry due to the additional processing required for scanning and indexing of paper submissions into electronic form. Additionally, third parties filing third-party submissions electronically via the dedicated Web-based interface will receive immediate, electronic acknowledgment of the Office’s receipt of the submission, instead of waiting for the Office to mail a return receipt postcard when provided with a paper submission.
The involvement of a third party in filing a submission under 37 CFR 1.290 ends with the filing of the submission. The third party filing the submission will not receive any communications from the Office relating to the submission other than the electronic acknowledgement receipt (see Subsection IV.E.), the return of the self-addressed postcard (see Subsection IV.F.), or a notification to the third party regarding its third-party submission (see Subsection VI.A.1.). A third party is not permitted to contact the examiner. Questions regarding a third-party submission may be directed to the AIA help telephone (1-855-HELPAIA) or AIA email (HelpAIA@uspto.gov), or to the point of contact listed on a notification to the third party regarding its third-party submission. Further, because the prosecution of a patent application is an ex parte proceeding, a third party is not permitted to respond to an examiner’s treatment of the third-party submission in the application (see Subsection VI.B.).
Third-party submissions, whether submitted in paper or electronically via the dedicated Web-based interface, will not be automatically entered into the electronic image file wrapper (IFW) of an application, i.e., will not be made of record in the application. Instead, third-party submissions submitted by third parties will be reviewed by the Office 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 to complete its compliance determination, for both paper and electronic submissions, promptly following receipt of the submission so that compliant third-party submissions will be quickly entered into the IFW and made available to the examiner for consideration. Third-party submissions filed in paper, however, will incur more processing delay than submissions filed electronically via the dedicated Web-based interface for preissuance submissions due to the scanning and indexing process. Each Technology Center (TC) has designated points of contact for screening third-party submissions made in applications docketed to the respective TCs.
37 CFR 1.290(a) provides that a third-party submission may not be entered or considered by the Office if any part of the submission is not in compliance with 35 U.S.C. 122(e) and 37 CFR 1.290. The Office will enter a third-party submission that is compliant with both 35 U.S.C. 122(e) and 37 CFR 1.290; however, any part of a third-party submission that is non-compliant with respect to the requirements of 35 U.S.C. 122(e), whether or not the third-party submission is otherwise compliant with 37 CFR 1.290, will prevent entry of the entire third-party submission into the record. By contrast, a third-party submission that is compliant with 35 U.S.C. 122(e), but non-compliant with some requirement of 37 CFR 1.290, may be entered into the record if the error is of such a minor character that, in the opinion of the Office, it does not raise an ambiguity as to the content of the submission. For example, if an error with respect to a requirement of 37 CFR 1.290 is of such a nature that the content of the third-party submission can still be readily ascertained (e.g., a U.S. patent is identified by the correct patent number and issue date but the name of the first named inventor is clearly misspelled), the Office may have enough information to be able to enter the third-party submission into the record despite the error. However, the determination of whether to enter or not to enter a submission that partially complies with a requirement of 37 CFR 1.290 will be made on a case-by-case basis and at the sole discretion of the Office (e.g., the Office may decline to enter a third-party submission listing a U.S. patent whose patent number does not match Office records with respect to that patent number’s issue date and/or first named inventor). In any event, the Office will either enter or not enter the entire submission and will not attempt to enter portions of partially compliant submissions.
Non-compliant third-party submissions, except those submissions having a non-compliance of minor character noted above, will not be entered into the IFW of an application or considered, and will be discarded. Also, the Office will not refund the required fees in the event a third-party submission is determined to be non-compliant. The statutory time period for making a third-party submission will not be tolled by an initial non-compliant submission. The Office will not set a time period for a third party to file a corrected third-party submission. Additionally, the Office will not accept amendments to a non-compliant submission that was previously filed. Instead, a third party who previously filed a non-compliant submission may file another complete submission, provided the statutory time period for filing a submission has not closed. See also Subsection II.F.2. (fee is required for a resubmission after a finding of non-compliance).
A third-party may request a courtesy electronic mail message (email) notification in the event their third-party submission is found to be compliant or non-compliant. Such request may be made when filing electronically by selecting the appropriate check box and entering an email address to which the notification should be directed in the "Request for Notification Regarding Third-Party Preissuance Submission" section of the Office’s dedicated Web-based interface for preissuance submissions. Such request may be made when filing in paper by including a separate paper with the third-party submission clearly titled "REQUEST FOR NOTIFICATION REGARDING THIRD-PARTY PREISSUANCE SUBMISSION" and clearly indicating the email address to which the notification should be directed.
A notification of non-compliance will include the reason(s) for non-compliance (e.g., no concise description of relevance was provided for a listed document, the concise description of relevance for a listed document was improper, the submission was not timely, etc.). The non-compliant third-party submission will not be made of record in the application.
No notification will be issued where a third party does not provide an email address with the submission. Further, no notification will be issued where the third-party submission is directed to an unpublished application. See Subsection IV.F. (unpublished patent applications preserved in confidence).
The notification to the third party will not be made of record in the application. Further, the Office does not intend to enter the email address provided for notification into the record of the patent application.
An applicant will be notified upon entry of a compliant third-party submission in their application file where the applicant participates in the Office’s e-Office Action program, and the contents of a compliant third-party submission will be made available to the applicant after it has been entered in the IFW of the application. An applicant may view non-patent documents identified in a third-party submission document list via the Office’s private Patent Application Information Retrieval (PAIR) system. The applicant will not be notified of a non-compliant submission.
37 CFR 1.290(h) provides that in the absence of a request by the Office, an applicant need not reply to a third-party submission under 37 CFR 1.290. Where the Office believes information from applicant is needed, the Office may issue a requirement for information pursuant to37 CFR 1.105.
Once a third-party submission has been screened and found compliant, the submission will be entered into the IFW for examiner consideration. The examiner should consider the listed publications and accompanying concise descriptions in the third-party submission in the same manner as information in an information disclosure statement (IDS), generally before issuing the next Office action. Entry of a third-party submission does not expedite the application.
During examination, the examiner should sign form PTO/SB/429 (or equivalent) in the same manner as an IDS to indicate all the items and their concise descriptions have been considered. The examiner’s signature does not indicate the examiner agrees with the third party’s position regarding the publication, but only that the examiner considered the submission. Further, the examiner should clear the submission’s IDS flag in Patent Data Portal and provide a signed copy of the PTO/SB/429 with the next Office action. There is no need for the examiner to comment on the submitted documents or the concise descriptions of relevance in the Office action. However, the examiner should apply the information as deemed necessary (i.e., in a rejection of a claim). Also, the applicant need not respond to the third-party submission in the absence of a request by the Office to do so. See 37 CFR 1.290(h). Where the examiner believes information from the applicant is needed, the examiner may issue a requirement for information pursuant to 37 CFR 1.105. In no circumstance may an examiner direct a requirement for information to the third party that submitted the paper under 37 CFR 1.290. Further, because the prosecution of a patent application is an ex parte proceeding, no response from a third party with respect to an examiner’s treatment of the third-party submission will be permitted or considered.
Documents from a third-party submission that were considered by the examiner will be printed on the patent, similar to the way documents from an IDS that were considered by the examiner are printed on the patent. Documents cited by third-parties under 37 CFR 1.290 will be distinguished on an issued patent from documents cited by the applicant and by the examiner.
In the unlikely event an examiner believes a submission is non-compliant (e.g., the examiner believes a submitted document is not a publication), the examiner should immediately consult the screener or other appropriate TC point of contact. If as a result of such consultation it is determined that the examiner should not consider a listed document, the examiner should strike through the document to indicate that the examiner did not consider either the document or its accompanying concise description. In some instances, the stricken document may be cited by the examiner on a form PTO-892
The following PGPub forms are available on the USPTO website (www.uspto.gov) and are reproduced at the end of this section:
Form PTO/AIA/24A, "Petition for Express Abandonment to Avoid Publication Under 37 CFR 1.138(c)," may be used by applicant in an application filed on or after September 16, 2012 for filing a petition for express abandonment to avoid publication under 37 CFR 1.138(c). Form PTO/SB/24A, "Petition for Express Abandonment to Avoid Publication Under 37 CFR 1.138(c)," may be used by applicant in an application filed before September 16, 2012 for filing a petition for express abandonment to avoid publication under 37 CFR 1.138(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 filing a request for nonpublication and the certification under 35 U.S.C. 122(b)(2)(B)(i) upon the filing of an application. See MPEP § 1122. Form PTO/SB/36 (revision April 2001 or later), "Rescission of Previous Nonpublication Request (35 U.S.C. 122(b)(2)(B)(ii) )) and, if Applicable, Notice of Foreign Filing (35 U.S.C. 122(b)(2)(B)(iii) )," may be used by applicant for filing a request for rescinding a previously filed nonpublication request and/or for filing a notice of foreign filing. The certificate of mailing or transmission only applies when applicant is filing a notice of foreign filing. See MPEP §§ 1123 and 1124. Form PTO/SB/64a, "Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f)," may be used by applicant for filing a petition to revive an application abandoned for failure to notify the Office of a foreign filing. See MPEP § 1124.
