ANSWER: (E) is the most correct answer. 37 CFR § 1.99; MPEP § 610. Rule 1.99 provides that a third party may submit in a published application a foreign-language publication and an English language translation of pertinent portions of the publication. The submission must “identify the application to which it is directed by application number,” . . “include the fee set forth in § 1.17(p);” include “a list of the patents or publications submitted for consideration by the Office, including the date of publication of each patent or publication;”. . . a “ copy of each listed patent or publication in written form or at least the pertinent portions;” and an “English language translation of all the necessary and pertinent parts of any non-English language patent or publication in written form relied upon.” (A) is incorrect. 37 CFR § 1.99 does not authorize a third-party submission of materials or things other than patents or publications. See 37 CFR § 1.99; MPEP § 610. Thus, submission of a videotape under §1.99 isnot authorized. (B) is incorrect. A third-party submission under 37 CFR 1.99 may not include explanations. See 37 CFR § 1.99(d); MPEP § 610. (C) is incorrect. A third-party submission under 37 CFR 1.99 may not include markings or highlights on the publications. See 37 CFR § 1.99(d); MPEP § 610. (D) is incorrect because a protest cannot be filed in a published application. See 37 CFR § 1.291(a)(1); MPEP 1901.06.
Q) 3rd Party Submission – Japanese publication (10.03.10p)
Recent test takers report question #10 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.
10. In accordance with the patent laws, rules and procedures as related in the MPEP, which
of the following can a third party submit in a pending published application within two months
from the publication date where the submission identifies the application to which it is directed
by application number and includes the appropriate fee?
(A) A list referencing a videotape and copy of the tape showing that the process
claimed in the application was in use more than one year before the filing date of
(B) A U.S. patent issued more than one year before the filing date of the application
and a written explanation of the patent made by the third party on the patent.
(C) A publication with a publication date more than one year before the filing date of
the application and including underlining made by the third party on the
(D) A protest raising fraud and inequitable conduct issues.
(E) A list of the sole Japanese language publication submitted for consideration,
including the publication date of the publication, a copy of the Japanese language
publication and a written English language translation of the pertinent parts of the