Third-Party Submission Under 37 CFR 1.290

CourtUnited States Patent and Trademark Office, Patent Trial and Appeal Board
SectionUnited States Patent and Trademark Office
Third-Party Preissuance Submission under 37 CFR 1.290
Instructions for Paper Filing
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need not be published.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:
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;
A legible copy of each item identified in
the document list, other than U.S.
patents and U.S. patent application
(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.
U.S. Patent and Trademark Offic e; U.S. DEPARTMENT OF COMMERCE

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