Anonymous Third Party Submission
A third-party preissuance submission statutorily must be made in a patent application before the earlier of: (a) the date a notice of allowance under 35 U.S.C. 151 is given or mailed in the application; or (b) the later of (i) six months after the date on which the application is first published under 35 U.S.C. 122 by the Office, or (ii) the date of the first rejection under 35 U.S.C. 132 of any claim by the examiner during the examination of the application.
First, check Public PAIR to determine if a Notice of Allowance (NOA) has been issued in the application. If the NOA has been issued, you may not file a third-party submission. If the NOA has not been issued, determine if a first rejection has been issued by the examiner or if the application has been published for six months or longer. You may file as long as the first rejection has not been issued or the application has not been published for six months
If a third party files a preissuance submission on the same date the first rejection is mailed and the application has been published for more than six months, the submission would not be timely and would not be entered. All third-party submissions must be filed prior to, not on, the critical date. Where the application has been published for more than six months and no notice of allowance has been mailed, the critical date is the mailing date of the first rejection such that the third-party submission would need to be filed prior to the mailing date of the first rejection.
The holiday/weekend rule set forth in 37 CFR 1.7(a) applies to a preissuance submission.
For a compliant preissuance submission, submit the following: 1. Document list 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 concise description
While there is no requirement that each concise description of relevance be provided as a separate paper, the Office highly recommends this practice. Providing a separate paper for each concise description of relevance that prominently identifies printed publication to which the concise description pertains will help ensure that the screener and the examiner readily identify and consider it.
Concise descriptions may be entered as text in the provided text box on the “Application Data" screen. Alternatively, the concise description may be uploaded as a separate document on the “Attach Documents" screen. When entering a concise description of relevance in the provided text box, up to 250 characters may be entered. A concise description of relevance that exceeds 250 characters must be uploaded as a separate document on the “Attach Documents" screen. When filed as a separate paper, the concise description of relevance should clearly identify the document to which it pertains.
Example of a compliant concise description formatted as a narrative for a claim having only two elements:
“Publication X and publication Y both disclose machines that perform the same function as the machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X. Publication Y teaches a machine having element B of claim 1. See lines 1-3 on page 6 of publication Y. Publication Y teaches the benefits of using element B in this type of a machine."
Example of a non-compliant concise description formatted as a narrative for a claim having only two elements:
“Publication X and publication Y both disclose machines that perform the same function as the machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X. Publication Y teaches a machine having element B of claim 1. See lines 1-3 on page 6 of publication Y. Publication Y teaches the benefits of using element B in this type of a machine. Accordingly, claim 1 is obvious in view of publication X and publication Y."
A third party must submit the required fee for every ten documents listed or fraction thereof, unless the fee exemption applies to the submission. A third party is exempt from paying a fee for a submission of three or fewer documents, provided it is the party’s first such submission and the party files a “first and only" statement.
A second third party may take advantage of the fee exemption in the same application as long as the submission includes three or fewer items and is accompanied by the “first and only" statement. However, such statement could not be made where the third parties are in privity with each other.
The fee must accompany a preissuance submission at the time of filing. Registered e-Filers who authenticate can save “in-progress" submissions and return to edit them prior to completing filing. Payment, in this instance, will be due when the filing is complete. Unregistered users, by contrast, must complete the filing and pay the fee at the time the submission is initiated.
A fee is required for every ten items or fraction thereof identified in the document list. If the third party does not qualify for the small entity discount, the third party would have to pay a fee of $360 for twelve listed documents (i.e., $180 for the first ten documents and $180 for the remaining two documents). If filing electronically, the third party in this example would need to split the twelve documents into two separate submissions, paying $180 for each submission.
When filing in paper, payment may be made by check, money order, credit card, or deposit account. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. Credit Card Payment Form (PTO-2038) should be used when paying by credit card. Form PTO-2038 may be downloaded at http://www.uspto.gov/forms/index.jsp. To protect your credit card information, do not submit this form electronically through EFS-Web. Credit card information for electronic credit card payments should be entered exclusively on the USPTO Web site providing electronic payment capability
A third party must pay the required fee to make a re-submission of three or fewer documents in an application where the third party’s first submission of three or fewer documents in the application took advantage of the fee exemption and was found to be non-compliant. The fee exemption does not apply to a resubmission because the third party will not be able to make the “first and only" statement under 37 C.F.R. 1.290(g).
For any re-submission, a third party must pay the appropriate fee for the number of documents being submitted. In this instance, if the third party does not qualify for small entity status, a fee of $180 would be required for the re-submission of the five documents.
A third party is not eligible for the micro entity discount. A third party that qualifies as a small entity may take advantage of the small entity discount when making a third-party submission. When filing electronically, the submitter should select the “Small Entity" link on the “Calculate Fees" screen of the dedicated third-party submission EFS-Web interface and pay the applicable small entity fee. When filing in paper, the submitter should select the “small entity" box on the form PTO/SB/429 and pay the applicable small entity fee.
Third-party submissions that are not compliant with the statute will not be entered into the image file wrapper (IFW) record of an application or considered by the examiner. Instead, non-compliant preissuance submissions will be discarded. The Office will not refund the required fees or toll the statutory time period for making a third-party submission. Additionally, the Office will not accept amendments to a non-compliant submission, but the party may file another complete submission, provided the statutory time period for filing a submission has not closed.
If a third party provides an electronic mail message (email) address with a preissuance submission, whether filed electronically or in paper, the Office will notify the third party of such non-compliance at the email address provided and will include the reason(s) for non-compliance. No notification will be issued where a third party does not provide an email address with the submission.
Absent a request by the Office, an applicant has no duty to, and need not, reply to a preissuance submission.
© . Copyright © 2013 Cardinal Intellectual Property, Inc. All rights reserved.
Cardinal is not a law firm, does not practice law, and provides no legal opinions