Comments on: Q) TP Submissions

By: Bagelman

Bagelman — Fri, 20 Jan 2012 17:39:46 +0000

Got this 1/18/12.

By: maggie

maggie — Tue, 15 Nov 2011 22:42:13 +0000

Rule 1.99 Requirements
1. Third Party by any member of the public
2. Submit No more than 2 months after publication, Prior to Notice of allowance, which ever is EARLIER
2. Copy of No more than 10 references Patent or Publications
3. References listed with dates, No highlights or Marks, English translation of part relied on
4. No comments
5. Fee (37 CFR 1.17)
6. Served to applicant

By: sgw

sgw — Mon, 17 Oct 2011 19:34:32 +0000

Thank you, maggie. I agree to your opinion.

By: maggie

maggie — Sun, 16 Oct 2011 22:55:07 +0000

RULE 99 It is which ever is EARLIER Pub or notice of allowance.
(e) A submission under this section must be filed within two months from the date of publication of the application (§ 1.215(a)) or prior to the mailing of a notice of allowance (§ 1.311), whichever is earlier

So, if the q states 2 months after publication then I believe the answer would be: (4) It will not be entered.

By: sgw

sgw — Sun, 16 Oct 2011 21:39:57 +0000

I got the following Third party(TP) submission question on 10/15/2011.
third party submission.

(Q)A person submits the Rule 1.99 submission after 2month of publication of the application and before the notice of allowance.

options
1)TP submission need not be served by the applicant.
2)something
3)something
4)TP submisshin will not enter to the record so the examiner will not consider.(I selected)
5) It is good idea to confirm by IDS form filed by the examiner because the examiner will submit the IDS form when he/she consider the documents.

I also found a protest question, too(I don’t remember in detail but quite simple).
I felt the test questions may be updated after the new patent act is established.

By: BPY

BPY — Thu, 01 Sep 2011 13:03:54 +0000

35 U.S.C. 122(c) permits the filing of a protest in an application after the application has been published if there is express written consent of the applicant. In order to file protests after publication of patent applications, 37 CFR 1.291(b)(1) requires that the protest after publication of an application be accompanied by the written consent of the applicant.

But then in Sarah’s answer to the question, a fee was in place. Protest does not require a fee unless it is the second or subsequent protest by the same real party in interest. So I am not sure how to reconcile.

By: Bigbadvoododaddy

Bigbadvoododaddy — Sun, 03 Jul 2011 20:08:33 +0000

The answer is correct. For learning points, see below:
To point out here, choice D is incorrect only because it is a submission after publication. If it was before publication – it would be a valid protest, since a protest can disclose any of the following.
Information that the invention was “in public use or on sale in this country, more than 1 year prior to the date of the application for patent in the United States” (35 U.S.C. 102(b)).
(C)Information that the applicant “has abandoned the invention” (35 U.S.C. 102(c)) or “did not himself invent the subject matter sought to be patented” (35 U.S.C. 102(f)).
(D)Information relating to inventorship under 35 U.S.C. 102(g).
(E)Information relating to sufficiency of disclosure or failure to disclose best mode, under 35 U.S.C. 112.
(F)Any other information demonstrating that the application lacks compliance with the statutory requirements for patentability.
(G)Information indicating “fraud” or “violation of the duty of disclosure” under 37 CFR 1.56 may be the subject of a protest under 37 CFR 1.291*. Protests raising fraud or other inequitable conduct issues will be entered in the application file, generally without comment on those issues. 37 CFR 1.291(*>e<).

By: Bigbadvoododaddy

Bigbadvoododaddy — Sun, 03 Jul 2011 20:05:08 +0000

Freds is correct.
I dont believe Sarah’s answer was correct. Well give the lack of choices, its hard to tell.
The only thing where I know that an applicant may consent to a TP submission is in a protest. And that has to be before Notice of Allowance or publication

By: Freds

Freds — Thu, 02 Jun 2011 08:06:55 +0000

I don’t think that’s the right answer. 1.99 is a very restrictive procedure b/c patent prosecution in the US is ex parte. Therefore, there is the two month, no explaination, number of citation, service limitations on such submission. We just don’t want to be the French. In particular 1.99(e) says

(e) A submission under this section must be
filed within two months from the date of publication
of the application (§ 1.215(a)) or prior to the mailing
of a notice of allowance (§ 1.311), whichever is earlier.
[b] Any submission under this section not filed
within this period is permitted only when the patents
or publications could not have been submitted to the
Office earlier, and must also be accompanied by the
processing fee set forth in § 1.17(i) .[/b] A submission by
a member of the public to a pending published application
that does not comply with the requirements of
this section will not be entered.

By: Sarah

Sarah — Wed, 18 May 2011 20:36:08 +0000

Got this question today 5/18/11.

Phrased like Third Party has non-patent publication thought to be material to patent application published one month ago. What do they do?

Wrong answers included wait until patent issued and no need to pay fee until after 2 months post-publication.

Correct answer involved: “before notice of allowance is mailed (or with applicant permission), pay a fee and submit the information.”