Q) 3rd Party Submission – Japanese publication (10.03.10p)

by admin on April 3, 2010 · 7 comments

in Uncategorized

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
the application.
(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

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.

1 SNo Gravatar April 3, 2010 at 10:30 pm

The current version of MPEP tested does not have 610 in it. The way to really solve that question is to really look for 37 CFR 1.99

2 PeterNo Gravatar April 4, 2010 at 10:12 pm

Do a search under “submission” in the table of contents. You will get several hits–but keep going until you see “third party submissions”, which will direct you to 1134, 1134.01 (and indirectly to 37 CFR 1.99)

3 KerstinNo Gravatar February 20, 2012 at 7:10 pm

or ‘Third Party Submission’ as search term will take you right to 1134 on the first pass.

4 NeedsToPassNo Gravatar May 16, 2012 at 4:34 am

When you say in the table of contents what do you mean? I am in MPEP 8 rev 8 and the table of contents does not have any information other than the main headings?

5 FoojNo Gravatar September 17, 2012 at 2:34 am

I believe the reference is to Appendix R, Index I “Rules Relating to Patents”. Index I has become my favorite search “launch point”.

6 PeggyNo Gravatar October 28, 2012 at 12:39 am

Has this law changed or do the prior art submissions described in AIA sec 6 (g) only refer to submissions made during a request for reexam that has already been commenced? Because AIA sec 6 allows written descriptions of the prior art submitted:

(a) IN GENERAL.–Any person at any time may cite to the Office in writing–

“(1) prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent; or

“(2) statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.

“(b) OFFICIAL FILE.–If the person citing prior art or written statements pursuant to subsection (a) explains in writing the pertinence and manner of applying the prior art or written statements to at least 1 claim of the patent, the citation of the prior art or written statements and the explanation thereof shall become a part of the official file of the patent.

“(c) ADDITIONAL INFORMATION.–A party that submits a written statement pursuant to subsection (a)(2) shall include any other documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement.

7 PeggyNo Gravatar October 28, 2012 at 12:44 am

In reply to my own post: I believe 6(g) does apply only to submissions you want looked at during a re-exam. AIA does have some info about preissuance submissions.

1. Takes effect September 16, 2012
2. Can be made for non-provisional/continuing applications. Not for reexamination or reissue proceedings
3. Must contain:
a. A list of what’s being submitted
b. A description of the relevance of each item listed
c. A legible copy of each non-U.S. patent document listed
d. Translation of non-English documents
e. Statement that the submission complies with the statute and the rule
f. Fee
4. Documents permitted:
a. Patents
b. Published Patent Applications
c. Printed Publications
5. When:
a. Before the earliest of:
i. Notice of Allowance
ii. 6 months after application is published
iii. The first rejection
6. How?
a. First Class Mail/Express Mail, by Hand or Electronically
b. NOT by fax
7. Not compliant? No refund.
8. Service not required
9. 3rd party can’t respond to examiner’s treatment of documents

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