Third-Party Submission Under 37 CFR 1.290

• Court: United States Patent and Trademark Office, Patent Trial and Appeal Board
• Section: United States Patent and Trademark Office

________________________________

Third-Party Preissuance Submission under 37 CFR 1.290

Instructions for Paper Filing

Contents

I. Introduction

II. Requirements

(1) Document List (PTO/SB/429)

(2) Concise Description of Relevance

(3) Copies

(4) Translations

(5) Statements

(6) Fees

III. Request for Notice of Non-Compliance

IV. Filing

WIPO ST.3 Table (Country/Organization Codes)

WIPO ST.16 Table (Kind Codes)

I. Introduction

Under 35 U.S.C. 122(e), a third party is permitted

to submit patents, published patent applications or

printed publications along with a concise

description of the relevance of each document to

the Office for consideration during the examination

of a patent application. This provision applies to

any patent application filed before, on, or after

September 16, 2012.

Third-Party Submissions must be made (1) before

the later of (i) 6 months after the date the

application is first published by the Office, or (ii) the

date of a first Office action on the merits rejecting

any claim, and (2) before the date a notice of

allowance is given or mailed.

A Third-Party Submission may be made in any

non-provisional utility, design, or plant application,

including any continuing application. The

application may be pending or abandoned and

need not be published. Third-Party Submissions

are not permitted in reissue applications and

reexamination proceedings.

The resource page for Third-Party Submissions is

located at:

http://www.uspto.gov/patent/initiatives/third-party-

preissuance-submissions.html.

II. Requirements

A Third-Party Submission must include:

(1) Form PTO/SB/429 (or equivalent

document list), identifying the

publications, or portions of

publications, being submitted in

accordance with § 1.290(e);

(2) A concise description of the asserted

relevance of each item identified in the

document list;

(3)

A legible copy of each item identified in

the document list, other than U.S.

patents and U.S. patent application

publications;

(4) An English language translation of any

non-English language item identified

in the document list;

(5) Statements by the party making the

submission that:

(i) The party is not an individual who

has a duty to disclose information with

respect to the application under

§ 1.56; and

(ii) The submission complies with the

requirements of 35 U.S.C. 122(e) and

§ 1.290; and

(6) Any required fee, or the § 1.290(g)

statement that the fee exemption

applies to the submission.

Third-Party Submissions will be reviewed

for compliance with 35 U.S.C. 122(e) and

§ 1.290 before being entered into the

image file wrapper (IFW) record of an

application. If a Third-Party Submission is

found to be non-compliant, no time period

will be set to file a corrected Third-Party

Submission and amendments to a non-

compliant submission previously filed will

not be accepted. Instead, the third party

may file another complete submission,

provided the time period for doing so has

not closed.

1

U.S. Patent and Trademark Offic e; U.S. DEPARTMENT OF COMMERCE