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

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:

1) More than ten (10) total references;

2) Explanations of the patents or publications;

3) Documents other than patents or publications (e.g., the submission cannot include any affidavits or declarations); or

4) Markings or highlights on the patents or publications.

How much does a Third Party Submission cost?

A Third Party Submission for a pending application requires the payment of a fee of $180.00 pursuant to 37 CFR 1.17(p).

As many Third Party Submission as desired may be filed, subject to a few provisions. A Third Party Submission must be filed within two months from the date of publication of the application (see 37 CFR 1.215(a)) or prior to the mailing of a notice of allowance (see 37 CFR 1.311).

Is a Third Party Submission Ex Parte or Inter Partes?

The submitter of a Third Party Submission receives no communication from the USPTO relating to the Third Party Submission, other than the return of a self-addressed postcard included with the Third Party Submission. Absent a subsequently filed Third Party Submission, no further submission by the Protestor will be considered.

The Third Party Submission must be served upon the Applicant in accordance with 37 CFR 1.248 or filed with the USPTO in duplicate in the event service is not possible. 37 CFR 1.248 requires that service must be made on the attorney or agent of the Applicant, or the Applicant if there is no attorney or agent.

What happens if a Third Party Submission does not comply with the Patent Rules?

If a Third Party Submission fails to comply with the Patent Rules, improper information in the Third Party Submission may be removed prior to the Examiner receiving the submission and application file. The Patent Office will screen Third Party Submission to determine whether they are limited to patents and publications, and to remove any explanations or information from the submission. If the explanations cannot be separated from the list of patents and publications, such patents and publications will be discarded. 

When must a Third Party Submission be filed?

The Third Party Submission must be submitted within two months from the date of publication of the application (see 37 CFR 1.215(a)) or prior to the mailing of a notice of allowance (see 37 CFR 1.311). Republication of an application under 37 CFR 1.221 does not restart the two-month period specified in the Third Party Submission rules.

In determining the timeliness of the Third Party Submission, the publication date of an application filed under 35 USC 111(a) is the date that the application published less than 35 USC 122(b). However, the publication date of an application which entered the national state of an international application after compliance with 35 USC 371 is the publication date by WIPO, if filed on or after November 29, 2000.

What happens if the Third Party Submission deadlines have passed?

Any submission not filed with the time periods specified in the Third Party Submission rules is permitted. However, the submitter must show that the patents and publications could not have been submitted to the Patent Office earlier. MPEP 1134.01 noted that an amendment submitted in the application after publication that chances the scope of the claims is a justifiable reason for a “late” Third Party Submission. What if the international application was filed in a language other than English and was not published in English until it was published by the Patent Office? That seems like a reasonable justification for allowing a “late” submission. To find otherwise would suggest that submitters must diligently review all WIPO publications and pay for the translation of any and all publications that may be relevant. The Patent Office surely cannot expect such a high and costly standard.

Third Party Submissions filed “late” must be accompanied by:

1) A statement that the patents or publications submitted could not have been submitted earlier; and

2) The processing fee set forth in 37 CFR 1.17(i).

What happens once Third Party Submission gets to the Examiner?

Once the Third Party Submission has been forwarded to the Examiner, the Examiner is to act on the Third Party Submission immediately. If an Office Action is outstanding, the Examiner may treat the submission when preparing the Office Action. If an Office Action is not outstanding, the Examiner should treat the submission immediately on a separate Office communication.