Statutory basis for citation of prior art patents or printed publications in patent files and ex parte reexamination of patents became available on July 1, 1981, as a result of new sections 301-307 of title 35, United States Code, which were added by Public Law 96-517, enacted on December 12, 1980. The rules of practice in patent cases relating to reexamination were initially promulgated on April 30, 1981, at 46 FR 24179-24180 and on May 29, 1981, at 46 FR 29176-29187.
The reexamination statute was amended on November 2, 2002, by Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002) to expand the scope of what qualifies for a substantial new question of patentability upon which an ex parte reexamination may be based (see MPEP § 2242, subsection II.A), and made technical corrections to the statute. See the 21st Century Department of Justice Appropriations Authorization Act, TITLE III- INTELLECTUAL PROPERTY, Subtitle A - Patent and Trademark Office, Section 13105, of the "Patent and Trademark Office Authorization Act of 2002" - Enacted as part of Public Law 107-273 on November 2, 2002.
On September 16, 2012, the Leahy-Smith America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, was enacted. The AIA expanded the scope of information that any party may cite in a patent file to include written statements of a patent owner filed in a proceeding before a federal court or the United States Patent and Trademark Office (Office) regarding the scope of any claim of the patent, and provides for how such information may be considered in ex parte reexamination, inter partes review, and post grant review. The AIA also provided for an estoppel that may attach with respect to the filing of an ex parte reexamination request subsequent to a final written decision in an inter partes review or post grant review proceeding.
The AIA also provided for a first-inventor-to-file prior art regime to replace the first-to-invent prior art regime, with respect to prior art available to be applied to claims. The prior art regime under which the application for the patent was examined (the first-inventor-to-file prior art regime, or the first-to-invent prior art regime) will generally be applied in the reexamination of the patent. However, there are rare exceptions. For example, a situation may arise in which a benefit claim to an application filed before March 16, 2013, is added in a reexamination proceeding based on an AIA patent. If all of the claims that have ever been presented in the reexamination proceeding and the underlying patent are fully supported by the prior application filed before March 16, 2013, and the application which resulted in the patent subject to the reexamination proceeding did not claim, directly or indirectly, the benefit of an application filed in the United States that presented at any time a claim that had an effective filing date on or after March 16, 2013, then the reexamination proceeding would be examined under the pre-AIA, first to invent, provisions.
This chapter is intended to primarily be a guide for U.S. Patent and Trademark Office (Office) personnel on the processing of prior art citations and ex parte reexamination requests under 35 U.S.C. 302, as well as handling ex parte reexamination proceedings. Second, it serves as a guide to the formal requirements for filing such documents in the Office. It is noted that all citations in this chapter to 35 U.S.C. discussing the first-to-invent prior art regime (as opposed to the first-inventor-to-file prior art regime) are to the relevant statute in effect prior to March 16, 2013.
Ex Parte Reexamination Proceedings Resulting from Supplemental Examination Proceedings: Section 12 of the AIA added new 35 U.S.C. 257, which provides for a proceeding titled "supplemental examination" that may be requested by the patent owner to consider, reconsider, or correct information believed to be relevant to the patent in accordance with requirements which have been established by the Office. The information that may be presented in a request for supplemental examination is not limited to patents and printed publications, and may include, for example, issues of patentability under 35 U.S.C. 101 and 35 U.S.C. 112. If the supplemental examination certificate, which is issued under 35 U.S.C. 257(a), states that a substantial new question of patentability is raised by one or more items of information in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. See MPEP Chapter 2800 for guidance on the procedures for supplemental examination proceedings, and for procedures regarding the order and first Office action mailed in any ex parte reexamination proceeding ordered as a result of a supplemental examination proceeding.
Inter Partes Reexamination Proceedings: On November 29, 1999, the American Inventors Protection Act of 1999 (the AIPA), Public Law 106-113 was enacted, and expanded reexamination by providing an "inter partes" option. The AIPA authorized the extension of reexamination proceedings via an optional inter partes reexamination procedure in addition to ex parte reexamination. 35 U.S.C. 311 - 318 (in effect for inter partes reexaminations filed prior to September 16, 2012) are directed to the optional inter partes reexamination procedures. The final rules to implement the optional inter partes reexamination were published in the Federal Register on December 7, 2000 at 65 FR 76756 and in the Official Gazette on January 2, 2001 at 1242 OG 12. Effective September 16, 2012, section 6(c) of the Leahy-Smith America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, replaced the inter partes reexamination process that was established by the AIPA with an inter partes review process, such that (on or after September 16, 2012) the Office no longer entertains requests for inter partes reexamination but instead accepts petitions to conduct inter partes review before the Board, where appropriate. For any inter partes reexamination filed prior to September 16, 2012, the provisions of 35 U.S.C. 311 - 318 as they were in effect prior to September 16, 2012, continue to apply to the inter partes reexamination proceedings. See MPEP Chapter 2600 for guidance on the procedures for inter partes reexamination proceedings, as well as with respect to an ex parte reexamination proceeding merged (consolidated) with an inter partes reexamination proceeding.
Flowcharts: The flowcharts show the general provisions of both the citation of prior art and ex parte reexamination proceedings, including reference to the pertinent rule sections.
Citations by the patent owner under § 1.555 and by an ex parte reexamination requester under either § 1.510 or § 1.535 will be entered in the reexamination file during a reexamination proceeding. The entry in the patent file of citations submitted after the date of an order to reexamine pursuant to § 1.525 by persons other than the patent owner, or an ex parte reexamination requester under either § 1.510 or § 1.535, will be delayed until the reexamination proceeding has been concluded by the issuance and publication of a reexamination certificate. See § 1.902 for processing of prior art citations in patent and reexamination files during an inter partes reexamination proceeding filed under § 1.913.
Citations by the patent owner in accordance with § 1.933 and by an inter partes reexamination third party requester under § 1.915 or § 1.948 will be entered in the inter partes reexamination file. The entry in the patent file of other citations submitted after the date of an order for reexamination pursuant to § 1.931 by persons other than the patent owner, or the third party requester under either § 1.913 or § 1.948, will be delayed until the inter partes reexamination proceeding has been concluded by the issuance and publication of a reexamination certificate. See § 1.502 for processing of prior art citations in patent and reexamination files during an ex parte reexamination proceeding filed under § 1.510.
Prior art in the form of patents or printed publications may be cited to the Office for placement into the patent files. Written statements made by the patent owner concerning the scope of the claims can also be cited to the Office for placement into the patent files. Submission may be made without payment of a fee. These citations may be made separate from and without a request for reexamination.
The basic purpose for citing prior art in patent files is to inform the patent owner and the public in general that such patents or printed publications are in existence and should be considered when evaluating the validity of the patent claims. The basic purpose for citing written claim scope statements is to ensure that the patent owner takes consistent positions regarding the scope of the claims of a particular patent in the courts and the before the Office. Placement in the patent file also ensures consideration thereof during any subsequent reissue application, reexamination proceeding, or other post-patent proceeding.
The citation of prior art and written statement provisions of 35 U.S.C. 301 and 37 CFR 1.501 do not apply to citations or protests filed in pending applications.
The patent owner, or any member of the public, may submit prior art patents or printed publications and/or written statements and additional information to the Office. 35 U.S.C. 301 states that "[a]ny person at any time may cite to the Office. . . ."
"Any person" may be a corporate or governmental entity as well as an individual.
"Any person" includes patentees, licensees, reexamination requesters, real parties in interest to the patent owner or requester, persons without a real interest, and persons acting for real parties in interest without a need to identify the real party of interest.
If a person citing prior art or written statements desires his or her identity to be kept confidential, such a person need not identify himself or herself. Persons other than reexamination requesters who desire to remain confidential are therefore advised to not identify themselves anywhere in their papers.
For reexamination requesters, the certification requirement of 37 CFR 1.510(b)(6), coupled with a party’s 37 CFR 11.18 certification obligations when transacting business before the Office, are considered sufficient to ensure compliance with the inter partes review and post grant statutory estoppel requirements. A real party in interest that wishes to remain anonymous when filing a request for reexamination under 37 CFR 1.510 can do so by utilizing the services of a registered practitioner. In such an instance, the registered practitioner submitting a request for reexamination on behalf of the real party in interest would be certifying that the real party in interest was not estopped from filing the request. Conversely, an individual filing a request for reexamination under 37 CFR 1.510 on behalf of himself cannot remain anonymous, as he is required to sign the document that includes the 37 CFR 1.510(b)(6) certification.
Confidential submissions should include proper proof of service as required by 37 CFR 1.248(b) that the patent owner has been sent a copy of the submission; otherwise the submission will not be entered into the patent file.
Patent examiners should not, at their own initiative, create a submission under 35 U.S.C. 301 and place it in a patent file or forward it for placement in the patent file. Patent examiners are delegated by the Director with the responsibility of making decisions as to patentability. Any activity by examiners which would appear to indicate that patent claims are not patentable, outside of those cases pending before them, is inappropriate.
Submissions may be filed "at any time" under 35 U.S.C. 301. However, this period has been defined by rule (37 CFR 1.501(a) ) to be "any time during the period of enforceability of a patent." The period of enforceability is generally the length of the term of the patent plus the 6 years under the statute of limitations for bringing an infringement action (35 U.S.C. 286 ). In addition, if litigation is instituted within the period of the statute of limitations, submissions may be filed after the statute of limitations has expired, as long as the patent is still enforceable against someone. While submission under 35 U.S.C. 301 may be filed at any time during the period of enforceability of the patent, submissions filed after the date of any order to reexamine will not be entered into the patent file until the pending reexamination proceeding has been concluded (37 CFR 1.501(c) ), unless the submissions are submitted (A) by the patent owner, (B) by an ex parte reexamination requester who also submits the appropriate fee and other documents required under 37 CFR 1.510, (C) in an ex parte third party requester’s reply under 37 CFR 1.535, or (D) as an enterable submission pursuant to 37 CFR 1.948 in an inter partes reexamination proceeding.
The purpose of this rule is to prevent harassment of the patent owner due to frequent submissions of prior art citations during reexamination proceedings.
Information that may be submitted under 35 U.S.C. 301 is limited to prior art consisting of patents or printed publications or written statements of the patent owner filed in a proceeding before a federal court or the Office by the patent owner in which the patent owner took a position on the scope of any claim of the patent.
Pursuant to 35 U.S.C. 301, an explanation is required of how the person submitting the prior art or written statement considers it to be pertinent and applicable to the patent. The submission must, at a minimum, contain some broad statement of the pertinence and manner of applying the prior art or written statement submitted as to the patentability of the claims of the patent. The explanation of how the person submitting the prior art or written statement considers it to be pertinent and applicable to the patent would set forth, for at least one of the patent claims, how each item cited shows or teaches at least one limitation of the claim. Submissions by patent owners may also include an explanation of how the claims of the patent differ from the submitted prior art or written statement.
Copies of all the submitted prior art patents, printed publications or section 301 written statements and any necessary English translation must be included so that the value of the information may be readily determined by persons inspecting the patent files and by the examiner during any subsequent reissue, reexamination proceeding, or other post patent proceeding.
All submissions filed by persons other than the patent owner must include proper proof of service as required by 37 CFR 1.248(b) reflecting that a copy of the submission has been mailed to, or otherwise served upon, the patent owner at the correspondence address as defined under 37 CFR 1.33(c).
All submissions filed should identify the patent to which the citation pertains by identifying the patent number, issue date, and patentee using a cover sheet. The documents themselves should also contain, or have placed thereon, an identification of the patent for which they are intended.
A submission that includes written statements must also include any other additional information, e.g. documents, pleadings, or evidence from the proceeding, in which the statement was filed that address the written statement, and such statement and accompanying information under this paragraph must be submitted in redacted form to exclude information subject to any applicable protective order.
A submission that includes section 301 written statements must, pursuant to 37 CFR 1.501(a)(3), further include the identification of: (1) The forum and proceeding in which patent owner filed each statement; (2) The specific papers and portions of the papers submitted that contain the statement; and (3) How each statement submitted is a statement in which patent owner took a position on the scope of any claim in the patent. Identification of the portions of the papers required by 37 CFR 1.501(a)(3)(ii) can be satisfied, for example, by citing to the documents and specific pages of those documents where the patent owner claim scope statements are found. The requirement of 37 CFR 1.501(a)(3)(iii) ensures that the statement is one in which patent owner has taken a position on claim scope in a proceeding and not merely a restatement of a position asserted by another party. Other information can be provided by the submitter to assist the Office in readily identifying the patent owner claim scope statement, such as (1) information regarding the status of the proceeding and (2) the relationship of the proceeding to the patent.
Affidavits or declarations or other written evidence relating to the submitted documents may accompany the 37 CFR 1.501 submission to explain the contents or pertinent dates in more detail. A commercial success affidavit tied in with a particular document may also be acceptable. For example, the patent owner may wish to cite a patent or printed publication which raises the issue of obviousness of at least one patent claim. Together with the cited art, the patent owner may file (A) an affidavit of commercial success or other evidence of nonobviousness, or (B) an affidavit which questions the enablement of the teachings of the cited prior art.
No fee is required for the submission under 37 CFR 1.501.
A submission under 37 CFR 1.501 is limited to patents, printed publications, or patent owner written claim scope statements, additional information and an explanation of the pertinency and applicability of them. This may include an explanation by the patent owner as to how the claims differ from the prior art patents or printed publications or written claim scope statement and additional information. It may also include affidavits and declarations. The submission cannot include any issue which is not directed to patents, printed publications or written claim scope statements and additional information. Thus, for example, a submission cannot include a statement as to the claims violating 35 U.S.C. 112, a statement as to the public use of the claimed invention, or a statement as to the conduct of the patent owner. The submission must be directed to patents, printed publications and/or written claim scope statements and additional information and cannot discuss what the patent owner did, or failed to do, with respect to submitting and/or describing patents and printed publications during examination, because that would be a statement as to the conduct of the patent owner. The submission also should not contain argument and discussion of references previously treated in the prosecution of the application which matured into the patent or references previously treated in a reexamination proceeding as to the patent.
If the submission contains any issue not directed to patents, printed publications or patent owner written claim scope statements, it should not be entered into the patent file, despite the fact that it may otherwise contain a complete submission of patents, printed publications and/or written statements and additional information with an explanation of the pertinency and applicability. Rather, the submission should be returned to the sender, discarded, or closed as described in MPEP § 2206.
Examples of letters submitting prior art under 37 CFR 1.501 follow.
Submission by a third party:
| IN THE UNITED STATES PATENT AND TRADEMARK OFFICE |
| In re patent of Joseph Smith Patent No. 9,999,999 Issued: July 7, 2000 For: Cutting Tool |
| Submission of Prior Art Under 37 CFR 1.501 |
| Hon. Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 |
| Sir: |
| The undersigned herewith submits in the above-identified patent the following prior art (including copies thereof) which is pertinent and applicable to the patent and is believed to have a bearing on the patentability of at least claims 1 – 3 thereof: |
| Weid et al. U.S. 2,585,416 April 15, 1933; McGee U.S. 2,722,794 May 1, 1934; Paulk et al. U.S. 3,625,291 June 16, 1936 |
| Each of the references discloses a cutting tool strikingly similar to the device of Smith in having pivotal handles with cutting blades and a pair of dies. It is believed that each of the references has a bearing on the patentability of claims 1 – 3 of the Smith patent. |
| Insofar as claims 1 and 2 are concerned, each of the references anticipates the claimed subject matter under 35 U.S.C. 102. See Figure 2 and column 2 lines 20-45 of Weid et al., Figure 4 and column 3 lines 10-35 of Paulk et al., and Figure 2 and column 2 lines 12-25 of McGee. |
| As to claim 3, only Weid et al. is a relevant primary reference, and the differences between the subject matter of this claim and the cutting tool of Weid et al are shown in the device of Paulk et al. Further, Weid et al suggests that different cutting blades can be used in their device. A person of ordinary skill in the art at the time the invention was made would have been led by the suggestion of Weid et al to the cutting blades of Paulk et al. as obvious substitutes for the blades of Weid et al. |
| Respectfully submitted, (Signed) |
| Certificate of Service |
| I hereby certify on this first day of June 1982, that a true and correct copy of the foregoing "Submission of Prior Art" was mailed by first-class mail, postage paid, to: |
| John Roe, 555 Any Lane Anytown,VA 22202 |
| (Signed) |
| /John Jones/ |
Submission by the patent owner:
| IN THE UNITED STATES PATENT AND TRADEMARK OFFICE |
| In re patent of Joseph Smith Patent No. 9,999,999 Issued: July 7, 2000 For: Cutting Tool |
| Submission of Prior Art Under 37 CFR 1.501 |
| Hon. Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 |
| Sir: The undersigned herewith submits in the above identified patent the following prior art (including copies thereof) which is pertinent and applicable to the patent and is believed to have a bearing on the patentability of at least claims 1-3 thereof: |
| Weid et al. U.S. 2,585,416 April 15, 1933; McGee U.S. 2,722,794 May 1, 1934; Paulk et al. U.S. 3,625,291 June 16, 1936 |
| Each of the references discloses a cutting tool strikingly similar to the device of Smith in having pivotal handles with cutting blades and a pair of dies. See Figure 2 and column 2 lines 20-45 of Weid et al., Figure 4 and column 3 lines 10-35 of Paulk et al., and Figure 2 and column 2 lines 12-25 of McGee; limitations (a) – (c) and (e) of Smith claim 1 are visible in the figures, and are described in the disclosures. While it is believed that each of the references has a bearing on the patentability of claims 1 – 3 of the Smith patent, the subject matter claimed differs from the references and is believed patentable thereover. |
| Insofar as claims 1 and 2 are concerned, none of the references show the particular die (limitation (d) of Smith claim 1) claimed and the structure of these claimed dies would not have been obvious to a person of ordinary skill in the art at the time the invention was made. |
| As to claim 3, only Weid et al is a relevant primary reference, and the cutting blades required by claim 3 are shown in Paulk et al.; however, the remainder of the claimed structure is found only in Weid et al. A person of ordinary skill in the art at the time the invention was made would not have found it obvious to substitute the cutting blades of Paulk et al. for those of Weid et al. In fact, the disclosure of Weid et al. would lead a person of ordinary skill in the art away from the use of cutting blades such as shown in Paulk et al. |
| Respectfully submitted, |
| (Signed) John Doe Attorney for Patent Owner Reg. No. 29760 |
A submission of prior art patents, or printed publications and/or written statements under 37 CFR 1.501 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. Both registered and unregistered eFilers may make a submission for a patent under 37 CFR 1.501 via EFS. 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 Preissuance submissions) because the submission would be directly entered into the patent file without review. The limitations on the method of submission allow staff to review the papers to determine if they are compliant before they are entered into the patent file. Submitting papers or documents via EFS directly into the patent by someone other than patent owner’s representative is a violation of the Office's electronic filing agreement (e.g., the Patent Electronic System Subscriber Agreement) and may lead to revocation of the account used for the submission.
Submissions under 37 CFR 1.501 received in the Office will be forwarded to the Technology Center (TC) that currently examines the class and subclass of the patent to which the submission is directed.
It is the responsibility of the TC to promptly determine whether the submission meets the requirements of the statute and the rules and to enter it into the patent file at the appropriate time if proper.
If a proper submission is filed after the date of an order for reexamination, the submission will be stored until the reexamination is concluded. Note 37 CFR 1.502 and 1.902. After the reexamination proceeding is concluded, the submission is entered in the patent file. Submissions filed after the date of an order for reexamination will not be considered by the examiner during the reexamination.
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.
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. The patent owner and third party submitter (if known) should be alerted of this by a letter providing notification. If there is a third party requester, the third party requester should also be sent a copy of the notification letter pursuant to 37 CFR 1.550(f). Such notification is important to enable the patent owner to consider submitting the prior art under 37 CFR 1.555 or 1.933 during the reexamination. Such notification will also enable the third party submitter to consider the desirability of filing a separate request for reexamination.
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.
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. The third party submitter (if known) and the patent owner may, as described below, be notified that the citation submission is improper and that it is not being entered in the patent file. If the 37 CFR 1.501 submission is submitted via the EFS interface, the third party submitter or the patent owner may request to be notified that the citation submission is improper by requesting notification and entry of an email or postal address in the appropriate field provided in the interface.
The handling of the submission will vary depending on the particular following situations:
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.
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.
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.
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.
The patent owner should be notified of the non-entry, and the submission should be returned to the patent owner, discarded, or closed if inadvertently entered in the file. Proper submissions filed by the patent owner in a reexamination proceeding after an order for reexamination should be entered in the file under 37 CFR 1.555 (for ex parte reexamination) or under 37 CFR 1.933 (for inter partes reexamination).
The Solicitor’s Office processes notices required by 35 U.S.C. 290, received from the clerks of the various courts in the United States, and has them entered in the patent file. However, it is considered desirable that the entire court decision be supplied to the Office for entry into the patent file. Accordingly, the Office will accept at any time from any party for placement in the patent file, submissions of the following: copies of notices of suits, copies of notices regarding other proceedings involving the patent and copies of decisions from litigation or other proceedings involving the patent. The Office will accept for entry into the patent file other court papers, or papers filed in the court, from litigation or other proceedings involving the patent. The decisions from litigation or other proceedings include final court decisions (even if the decision is still appealable), decisions to vacate, decisions to remand, and decisions as to the merits of the patent claims. Non-merit decisions (e.g., on motions for a new venue, a new trial/discovery date, or sanctions) will not be entered and will be expunged from the patent file by closing the appropriate paper if they were entered before recognizing their nature. Further, papers filed in the court from litigation or other proceedings involving the patent will not be entered into the patent file (and will be expunged if already entered) if they provide a party’s arguments (e.g., a memorandum in support of summary judgment). If the argument has an entry right in the reexamination proceeding, it must be submitted via the proper procedural vehicle (provision(s) of the rules) that provides for their entry. It is not required nor is it permitted that parties submit copies of copending reexamination proceedings and applications (which copies can be mistaken for a new request/filing); rather, submitters may provide a notice identifying the application/proceeding number and its status. Any submission that is not permitted entry will be returned, expunged, or discarded, at the sole discretion of the Office.
It is noted that if the Office, in its sole discretion, deems the volume of the papers
