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Third-Party Submissions: Providing Relevant References to the USPTO, Part II

Posted in Practice Commentary by Mike Dockins on April 20, 2009

We continue our discussion of how patent practitioners may submit art to the USPTO that may invalidate a patent or result in §102 or §103 rejections of pending applications. Many are aware, of course, of the methods of bringing new art to the USPTO’s attention with respect to issued patents, for example:  Ex Parte Reexaminations (see MPEP 2200 et seq.); and Inter Partes Reexaminations (see MPEP 2600 et seq.).  We described Protests (see 37 CFR 1.291; MPEP 1900 et seq.) with the USPTO here.  Now we will address Third Party Submissions (see 37 CFR 1.99; MPEP 1134-1134.01) with the USPTO.

While statistical data regarding the frequency of Third Party Submission filings was not readily located, the following is some general information concerning these strategies.

Third Party Submissions under 37 CFR 1.99

A Third Party Submission may be filed by any member of the public against a pending application. The Third Party Submission should include a listing of up to ten (10) patents and publications, including the publication date of the patents and publications. Unlike Protests, “other information” that is relevant and may prove useful during the prosecution of the pending application may not be submitted. Also unlike Protests, a concise explanation of the relevance of each piece of art should not be provided. A copy of each listed patent and publication should be provided with the Third Party Submission. If the art cited in the Third Party Submission is not in English, an English language translation should be provided.

MPEP 1143.01 lists a number of things that should not be submitted with a Third Party Submission: